Paper 40
`Entered: November 18, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`BLD SERVICES, LLC.,
`Petitioner,
`
`v.
`
`LMK TECHNOLOGIES, LLC.,
`Patent Owner,
`_______________
`
`Case IPR2014-00770
`Patent 8,667,991
`_______________
`
`
`
`Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
`and ZHENYU YANG, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Entered: November 18, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`BLD SERVICES, LLC.,
`Petitioner,
`
`v.
`
`LMK TECHNOLOGIES, LLC.,
`Patent Owner,
`_______________
`
`Case IPR2014-00770
`Patent 8,667,991
`_______________
`
`
`
`Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
`and ZHENYU YANG, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
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`I. INTRODUCTION
`
`1, 5–26, 28, 30–35, 37 § 103(a)
`
`1
`
`2
`
`BLD Services, LLC (“BLD”) filed a petition to institute an inter partes review
`of claims 1–37 (Paper 2; “Pet.”) of US 8,667,991 B2 (Ex. 1001; “the ’991 patent”).
`LMK Technologies, LLC (“LMK”) filed a patent owner preliminary response.
`Paper 7 (“Prelim. Resp.”). We instituted trial for challenged claims 1 and 5–37 on
`the following grounds of unpatentability asserted by Petitioner:
`Ground Challenged Claims
`Basis
`References
`Kiest ’118,1 Kiest ’597, 2 De Neef
`Instructions, 3 and De Neef
`Brochure4
`Kiest ’118, Kiest ’597, De Neef
`Instructions, De Neef Brochure,
`and Kempenaers5
`
`27, 29, 36
`
`§ 103(a)
`
`Decision to Institute (Paper 13, “Dec.”).
`After institution of trial, the Patent Owner filed a Patent Owner Response
`(Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper 28, “Reply”).
`Petitioner relies upon the Declarations of Christopher W. Adams (Ex. 1008)
`(“Adams Decl.”) and David Fletcher (Ex. 1013) (“Fletcher Decl.”) in support of its
`
`1 U.S. Patent No. 6,994,118 to Kiest et al., issued February 7, 2006 (“Kiest ’118”
`or “the ’118 patent”) (Ex. 1002).
`2 U.S. Patent No. 5,765,597 to Kiest et al., issued June 16, 1998 (“Kiest ’597” or
`“the ’597 patent”) (Ex. 1003).
`3 Installation Instructions, SWELLSEAL® WA, De Neef Construction Chemicals,
`Inc. (Rev. 3/2006) (“De Neef Instructions”) (Ex. 1004).
`4 “Swellseal® Hydrophilic Waterstop Solutions,” De Neef Construction
`Chemicals, Inc. (“De Neef Brochure”) (Ex. 1005).
`5 Kempenaers, P, “The pressure resistance of SWELLSEAL Sealant WA,” De
`Neef Conhem (September 5, 2005). (“Kempenaers”) (Ex. 1006).
`
` 2
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`Petition. Patent Owner relies upon the Declarations of Norman E. Kampbell (Ex.
`2005) (“Kampbell Decl.”) and Larry W. Kiest, Jr. (Ex. 2006) (“Kiest Decl.”) to
`support its Patent Owner Response.
`Oral argument was conducted on July 15, 2015. A transcript is entered as
`Paper 39 (“Tr.”).
`In this Final Written Decision, we determine Petitioner has shown by a
`preponderance of the evidence that claims 1 and 5–37 of the ’991 patent are
`unpatentable for the reasons discussed below.
`
`A. Related Proceedings
`
`According to the parties, the ’991 patent is involved in the following
`lawsuit: LMK Technologies, LLC v. BLD Services, LLC, Case No. 1:14-cv-00956
`(N.D. Ill. 2013, filed February 11, 2014). Pet. 2; Paper 6.
`The following inter partes review proceedings also constitute related
`matters: Case No. IPR 2014-00768 (US 7,975,726) and Case No. IPR 2014-00772
`(US 8,667,992).
`
`B. The ’991 patent (Ex. 1001)
`
`The ’991 patent discloses devices and methods for repairing the juncture
`between a main pipeline and a lateral pipeline in an underground sewer pipe.
`Ex. 1001, Abstract; 1:64–2:26. The disclosed devices include a liner tube
`assemblies that fit the juncture between a main pipe line and a lateral pipe line and
`a hydrophilic gasket or band that seals against entry of ground water at the juncture
`between the pipe lines. Id. at 2:9–26.
`Figure 4 of the ’991 patent is provided below.
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`Figure 4 is a perspective view of repair assembly 10 for repairing a lateral
`pipe line and a main pipe line. Id. at 3:12–14. Repair assembly 10 includes
`launcher device 12 having mounted thereto liner assembly 14. Id. at 3:29–61,
`5:1829. Main liner tube 38 is comprised of what is initially a flat sheet of
`material that is wrapped around the outside of the main bladder tube and launcher
`device 12. Id. Main liner tube 38 includes overlapping edges 42, 44. Id.
`Repair assembly 10 also houses bladder tube assembly 16 (not shown in
`Figure 1). Id. Bladder tube assembly 16 is shown in Figure 5, provided below.
`
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`Figure 5 is a sectional view of repair assembly 10 placed at the juncture of
`main pipe line 50 and lateral pipe line 52 in order to repair damaged portion 54.
`Id. at 3:15–16. Bladder tube assembly 16 includes main bladder tube 34 and
`lateral bladder tube 36. Id. at 3:47–62. Bladder tube assembly 16 is fitted on the
`interior of the liner assembly 14, which includes main liner tube 38 and lateral liner
`tube 40. Id. Lateral bladder tube 36 and lateral liner tube 40 are contained within
`launcher device cavity 48. Id.
`Figure 6 of the ’991 patent is provided below.
`
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`Figure 6 shows the repair assembly 10 in the inflated position. Id. at 3:17–
`18. Lateral bladder tube 36 and the lateral liner tube 40 are launched outwardly
`into lateral pipe line 52 by increasing the air pressure in launcher device cavity 48.
`Id. at 4:29–48.
`Figure 6 also shows a band positioned on the main liner tube 38. Id. at
`5:18–46. In order to prevent seepage of ground water, a gasket 56 is positioned
`about a portion of liner assembly 14. Id. The band extends around the juncture
`between main liner tube 38 and lateral liner tube 40. Id. The band may be made of
`a hydrophilic material and swells in response to being exposed to water or other
`liquid. Id. Upon exposure to liquid, the band expands in a radial direction to
`effectively seal the area between the liner assembly and the juncture between main
`pipe line 50 and lateral pipe line 52. Id.
`
` 6
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`C. Illustrative Claims
`
`Independent claims 1, 11, 17, 23, and 31 are representative of the challenged
`claims, and are reproduced below (emphases added):
`1. An apparatus for repairing a main pipe line and a lateral pipe
`line connected thereto and in communication therewith to form a pipe
`joint, comprising:
`a bladder assembly comprising a main bladder tube and a lateral
`bladder tube extending from the main bladder tube;
`a liner assembly comprising a main liner member at least
`partially surrounding the main bladder tube and a lateral liner tube
`extending from the main liner member;
`the lateral liner tube and lateral bladder tube extendable to a position
`within the lateral pipe line with the lateral liner tube between the
`lateral pipe line and the lateral bladder tube; and
`a gasket comprising a hydrophilic rubber, the gasket positioned
`at least partially surrounding the main liner member and the lateral
`liner member between the main liner member and the pipe joint, the
`gasket capable of swelling in reaction to contact with a liquid.
`
`
`11. An apparatus for repairing a main pipe line and a lateral
`pipe line connected thereto and in communication therewith to form a
`pipe joint, comprising:
`a bladder assembly comprising a main bladder tube and a lateral
`bladder tube extending from the main bladder tube;
`a liner assembly comprising a main liner member at least
`partially surrounding the main bladder tube and a lateral liner tube
`extending from the main liner member;
`the lateral liner tube and lateral bladder tube extendable to a position
`within the lateral pipe line with the lateral liner tube between the
`lateral pipe line and the lateral bladder tube; and
`a band of hydrophilic paste disposed on the main liner member
`around the lateral liner member and between the main liner member
`and the main pipe line at the pipe joint.
`
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`17. A method of repairing a main pipe line and a lateral pipe
`line connected thereto and in communication therewith to form a pipe
`joint, comprising:
`taking a bladder assembly including a main bladder tube and a
`lateral bladder tube;
`taking a liner assembly including a main liner member and a
`lateral liner tube in communication with one another at a liner
`juncture;
`impregnating the liner assembly with a material capable of curing and
`hardening;
`applying a band of hydrophilic paste on the outside of the main
`liner member and around the lateral liner tube at the liner juncture;
`expanding the bladder assembly to position the lateral liner tube
`against the lateral pipe line and the main liner member against the
`main pipe line, with the band of hydrophilic paste between the main
`liner member and the main pipe line at the pipe joint.
`
`
`23. A method of repairing a main pipe line and a lateral pipe
`line connected thereto and in communication therewith to form a pipe
`joint, comprising:
`taking a bladder assembly comprising a main bladder tube and
`a lateral bladder tube;
`taking a liner assembly comprising a main liner member and a
`lateral liner tube in communication with one another at a liner
`juncture;
`impregnating the liner assembly with a material capable of curing and
`hardening;
`applying a hydrophilic paste to the liner assembly and around
`at least a portion of the liner juncture; and
`expanding the bladder assembly to position the lateral liner tube
`against the lateral pipe line and the main liner member against the
`main pipe line;
`wherein the hydrophilic paste is between the main liner member
`and the main pipe.
`
`
`31. An apparatus for repairing a main pipe line and a lateral
`pipe line connected thereto and in communication therewith to form a
`pipe joint, comprising:
`
` 8
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`IPR2014-00770
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`a bladder assembly comprising a main bladder tube and a lateral
`bladder tube extending from the main bladder tube;
`a liner assembly comprising a main liner member at least partially
`surrounding the main bladder tube and a lateral liner tube extending
`from the main liner member and in communication with the main
`liner member at a liner juncture;
`the lateral liner tube and lateral bladder tube extendable to a
`position within the lateral pipe line with the lateral liner tube between
`the lateral pipe line and the lateral bladder tube; and
`a hydrophilic paste disposed on the liner assembly and at least
`partially around the liner juncture when the lateral liner tube is
`extended into the lateral pipe line.
`
`Claims 5–10 depend directly or indirectly from claim 1. Claims 12–16
`depend directly or indirectly from claim 11. Claims 18–22 depend directly or
`indirectly from claim 17. Claims 24–30 depend directly or indirectly from claim
`23. Claims 32–37 depend directly or indirectly from claim 31.
`
`II. ANALYSIS
`
`A. Expert Testimony
`
`As an initial matter, we note that the Petition was not accompanied by any
`expert declaration. “The Board expects that most petitions and motions will rely
`upon affidavits of experts.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,763 (Aug. 14, 2012). Especially in complex cases where obviousness is
`asserted as a ground of unpatentability, “expert testimony may be critical, for
`example, to establish the existence of certain features in the prior art or the
`existence (or lack thereof) of a motivation to combine references.” Wyers v.
`Master Lock Co., 616 F.3d 1231, 1240 n.5 (Fed. Cir. 2010) (citations omitted).
`But expert testimony is not a per se requirement—where the technology is simple,
`where the references are easily understandable without the need for expert
`
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`explanatory testimony, or where the factual inquiries underlying the obviousness
`determination are not in material dispute, expert testimony, though it might be
`helpful, may not be indispensable. Allergan, Inc. v. Barr Labs., Inc., 501 F. App’x
`965, 972 (Fed. Cir. 2013). In addition, a reason to combine prior art teachings may
`exist “in the content of the public prior art, in the nature of the problem addressed
`by the invention, or even in the knowledge of one of ordinary skill in the art.”
`Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d 1332, 133839
`(Fed. Cir. 2005). And in some cases, “the legal determination of obviousness may
`include recourse to logic, judgment, and common sense, in lieu of expert
`testimony.” Wyers, 616 F.3d at 1239.
`Patent Owner challenges the credibility and qualification of Mr. Fletcher, an
`expert who submitted a declaration in support of Petitioner’s Reply. See, e.g.,
`Paper 31, 1–2, 4. Petitioner, on the other hand, urges that we ignore the
`declaration of Mr. Kampbell, an expert for Patent Owner, due to his alleged bias
`and lack of qualification. Reply 13 & nn.5–6. Neither party, however, seeks to
`disqualify the expert for the other side. We, thus, consider the declarations from
`both Mr. Fletcher and Mr. Kampbell, according proper weight to the testimonies,
`taking account of the credibility challenges raised by each party.
`
`B. Claim Interpretation
`
`We interpret claims using the “broadest reasonable construction in light of
`the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b);
`see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015)
`(“Congress implicitly approved the broadest reasonable interpretation standard in
`
`
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`enacting the AIA,” 6 and “the standard was properly adopted by PTO regulation.”).
`Under the broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary skill
`in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). “Absent claim language carrying a narrow meaning, the
`PTO should only limit the claim based on the specification . . . when [it] expressly
`disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir.
`2004). “Although an inventor is indeed free to define the specific terms used to
`describe his or her invention, this must be done with reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Neither Petitioner nor Patent Owner set forth an explicit construction of any
`claim term. Pet. 8; PO Resp. 7–8. A question arises, however, regarding the
`ordinary and customary meaning of “gasket” as understood in the art at the time of
`the invention. On that point, Patent Owner attempts to distinguish the “gasket”
`disclosed in Kiest ’597 from the “hydrophilic band” or “hydrophilic seal” disclosed
`in Kiest ’118. Specifically, Patent Owner argues that
`The “gasket” 192 described in the ’597 patent is not a gasket in the
`conventional sense of the term. See, e.g., Kampbell Decl. at ¶ 56 and
`Ex. D thereto. It does not provide any sort of compression seal
`between the liner and host pipe, but rather serves merely as a carrier
`for hydrophilic chemical grout (a liquid having a viscosity similar to
`that of milk) that will be dispersed from the open cell foam of the
`“gasket” upon inflation of the liner/bladder assembly. Kiest Decl. at ¶
`28; Kampbell Decl. at ¶ 56.
`
`
`6 The Leahy-Smith America Invents Act, Pub. L. No. 11229, 125 Stat. 284
`(2011) (“AIA”).
`
`
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`PO Resp. 14. Thus, Patent Owner appears to argue that the ordinary and
`customary meaning of the term “gasket” requires the capability to form a
`compression seal and that Kiest ’597 does not disclose such a “gasket.” We are
`not persuaded, however. Even if we were to agree with Patent Owner and
`expressly construe the term “gasket” to require a compression seal capability,
`which we do not, Patent Owner fails to provide persuasive evidence to demonstrate
`that the gasket described in Kiest ’597 does not operate under the principles of
`compression. See Reply 13 (citing Fletcher Decl. ¶¶ 2324) (indicating why the
`“gasket” in Kiest ’597, comprising open cell foam filled with rubber-like material,
`would have an element of compressibility and resiliency).
`We further conclude that our explicit construction of the term “gasket” is not
`necessary. It is sufficient to say that Kiest ’597, a reference disclosing a device in
`the exact field of invention as the ’911 patent, and by the same inventor, expressly
`uses the term “gasket” to describe an object relied upon by Petitioner to meet the
`“gasket” element of the challenged claims.
`We determine that no explicit construction of any specific claim term is
`necessary to render our decision on patentability of the challenged claims. See,
`e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`(“[C]laim terms need only be construed ‘to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999)).
`
`C. Prior Art Status of De Neef Instructions (Ex. 1004), De Neef Brochure
`(Ex 1005), and Kempenaers (Ex. 1006)
`
`Section § 311(b) states that “[a] petitioner . . . may request to cancel as
`unpatentable 1 or more claims only on a ground raised under section 102 or 103
`
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`and only on the basis of prior art consisting of patents or printed publications.”
`The determination of whether a given reference qualifies as a prior art “printed
`publication” involves a case-by-case inquiry into the facts and circumstances
`surrounding the reference’s disclosure to members of the public. In re
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document must
`have been “‘sufficiently accessible to the public interested in the art’” before the
`critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (citation
`omitted). “A reference is publicly accessible ‘upon a satisfactory showing that
`such document has been disseminated or otherwise made available to the extent
`that persons interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence, can locate it.’” Kyocera Wireless Corp. v. ITC, 545 F.3d
`1340, 1350–51 (Fed. Cir. 2008) (citation omitted).
`In our Decision to Institute, we determined that Petitioner presented
`sufficient information to show a reasonable likelihood that it would prevail on
`obviousness grounds that relied, in part, on De Neef Instructions, De Neef
`Brochure, and Kempenaers. This decision was made with the understanding that
`Petitioner would have the opportunity at trial to respond to Patent Owner’s
`contentions and/or evidentiary objections with supplemental evidence under 37
`C.F.R. § 42.64(b)(2) and/or supplemental information under § 42.123(a). Dec. 11.
`In its Response, Patent Owner argues that Petitioner failed to provide sufficient
`evidence to establish that De Neef Instructions, De Neef Brochure, and
`Kempenaers constitute prior art printed publications. PO Resp. 54–59. As such,
`Patent Owner contends that De Neef Instructions, De Neef Brochure, and
`Kempenaers are not properly relied upon by Petitioner in their asserted
`obviousness grounds. Id.
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`Petitioner, in its Reply, responds not with any additional evidence, but
`rather, with attorney argument, which in this case is insufficient to carry
`Petitioner’s burden of proving public availability by a preponderance of the
`evidence. Reply 5–6; Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1379 (Fed. Cir. 2015) (Petitioner has the ultimate burden of persuasion to
`prove unpatentability by a preponderance of the evidence).
`Having reviewed the parties’ arguments and supporting evidence, we
`determine that Petitioner has not satisfied its burden to prove that De Neef
`Instructions and Kempenaers are printed publications. We determine, however,
`that Petitioner has satisfied its burden to prove that De Neef Brochure is a printed
`publication and thus available as prior art. Our reasoning follows.
`
`1. De Neef Instructions and Kempenaers
`
`With regard to De Neef Instructions (Ex. 1004), Patent Owner contends that
`Ex. 1004 bears no indication that it was publicly disseminated, and the
`Petition presents no supporting documentary evidence showing that it
`was publicly disseminated. The only indicia resembling a date of Ex.
`1004 is the “Rev. 03/2006” on page 3 following the last line of text.
`
`PO Resp. 55.
`With regard to Kempenaers (Ex. 1006), Patent Owner contends that
`Ex. 1006 also bears no indication that it was publicly disseminated,
`and Petitioner has presented no supporting documentary evidence
`showing
`that
`it was publicly disseminated. The only
`indicia
`resembling a date of Ex. 1006 is the “09/05/2005” on page 3. It is
`unclear what this date represents.
`
`Id. at 59.
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`Patent Owner further notes that Petitioner has provided no evidence, other
`than Exhibits 1004 and 1006 themselves, to establish either exhibit as a prior art
`printed publication. Id. at 56.
`We agree with Patent Owner that the dates found on De Neef Instructions
`and Kempenaers, without more, are insufficient to establish either De Neef
`Instructions or Kempenaers as prior art. Petitioner has not provided sufficient
`evidence to show that the documents were publicly available or accessible by the
`public prior to the critical date. Based on the record before us, we determine that
`Petitioner has not provided competent evidence to qualify either De Neef
`Instructions or Kempenaers as a “printed publication.” Accordingly, we will not
`consider either De Neef Instructions or Kempenaers in our determination on the
`patentability of any challenged claims.
`
`2. De Neef Brochure
`
`Petitioner provides a declaration from Christopher W. Adams, an attorney
`with Patton Boggs LLP and counsel for Petitioner. Ex. 1008, 1. Mr. Adams
`indicates that the De Neef Brochure was located in a Google search using a custom
`date range of “01/01/1990” to “03/31/2007.” Id. at 2. Mr. Adams testifies that
`Annex 2 of Ex. 1008 “is a true and correct copy of the results” of the search he
`performed using Google’s search engine. Id. at 3. The Google search results
`indicate that De Neef Brochure was made available as a PDF file on the internet by
`at least January 1, 2007. Id. at Annex 2. Mr. Adams further notes that the
`metadata of the PDF file indicated that De Neef Brochure was created on
`“03/13/2006 6:48:56 PM” and was last modified on “03/13/2006 6:57:02 PM.” Id.
`at 3, Annex 2.
`
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`Patent Owner does not contest the search conducted by Mr. Adams or the
`search results he obtained. Rather, Patent Owner contends that “mere publication
`on the Internet does not mean that a document was available as of January 1, 2007
`such that persons interested and ordinarily skilled in the art, exercising reasonable
`diligence, can locate it.” PO Resp. 58. We disagree. “When considering whether
`a given reference qualifies as a prior art ‘printed publication,’ the key inquiry is
`whether the reference was made ‘sufficiently accessible to the public interested in
`the art’ before the critical date.” Voter Verified, Inc. v. Premier Election Solutions,
`Inc., 698 F.3d 1374, 1380 (Fed.Cir.2012) (citation omitted). Here, Petitioner
`presents evidence in the form a Google search report and a declaration by Mr.
`Adams describing the search conducted and how the results should be interpreted.
`Ex. 1008. Mr. Adams explains that metadata of the PDF file indicates that it “was
`created on ‘03/13/2006 6:48:56 PM’ and was last modified on ‘03/13/2006 6:57:02
`PM,’” that he used “the Google Search Tools to enter a Custom date range for the
`query from ‘01/01/1990’ to ‘03/31/2007,’” and that “[t]he Google search results
`indicate that this document was posted on this site by at least January 1, 2007.”
`Ex. 1008 (citing Annex 2, 3). Thus, the search results indicate that De Neef
`Brochure was indexed by the Google search engine and became available
`worldwide on the internet via direct link by at least January 1, 2007. Id. at Annex
`2. Voter Verified, 698 F.3d at 1381 (search engine availability constituting
`indexing and publication).
`Patent Owner further contends that Mr. Adams is an interested party and that
`his declaration alone is insufficient to establish that De Neef Brochure constitutes a
`prior art printed publication. PO Resp. 5758 (citing Checkpoint Sys., Inc. v. All-
`Tag Sec. S.A., 412 F.3d 1331, 1339 (Fed. Cir. 2005) (“Physical, documentary, or
`
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`circumstantial evidence, or reliable testimony from individuals other than the
`alleged inventor or an interested party, may corroborate.”)). We are not persuaded
`that Mr. Adams, outside counsel for Petitioner, is an interested party. Patent
`Owner does not provide any evidence to show that Mr. Adams has a recognizable
`stake in the outcome of this proceeding and does not cite any authority to support
`the contention that an attorney representing a party in a case may be considered an
`interested party.
`Given the record before us, we find the evidence of record sufficient to
`conclude that De Neef Brochure was publicly available worldwide on the internet
`by the critical date and therefore qualifies as a prior art “printed publication” under
`§ 102(b).
`
`D. Asserted Obviousness Grounds
`
`1. Law of Obviousness
`
`Obviousness is a question of law based on underlying determinations of fact.
`Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Richardson-Vicks Inc. v.
`Upjohn, Co., 122 F.3d. 1476, 1479 (Fed. Cir. 1997). A patent may not be obtained
`if the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which the subject
`matter pertains. 35 U.S.C. § 103(a). The question of obviousness is resolved on
`the basis of underlying factual determinations, including: (1) the scope and content
`of the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham, 383 U.S. at 17–18.
`
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`In KSR Int’l Co. v. Teleflex Inc., the Supreme Court stated that an invention
`may be found obvious if trying a course of conduct would have been obvious to a
`person having ordinary skill:
`When there is a design need or market pressure to solve a problem
`and there are a finite number of identified, predictable solutions, a
`person of ordinary skill has good reason to pursue the known options
`within his or her technical grasp. If this leads to the anticipated
`success, it is likely the product not of innovation but of ordinary skill
`and common sense. In that instance the fact that a combination was
`obvious to try might show that it was obvious under § 103.
`
`550 U.S. 398, 421 (2007). “KSR affirmed the logical inverse of this statement by
`stating that § 103 bars patentability unless ‘the improvement is more than the
`predictable use of prior art elements according to their established functions.’” In
`re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (citing KSR, 550 U.S. at 417).
`
`2. Level of Ordinary Skill
`
`Petitioner contends that a person of ordinary skill in the art at the time of the
`’991 patent invention “would have at least an undergraduate degree in engineering
`and/or ten years of experience in the pipe repair and/or pipeline installation
`industry.” Pet. 8. Patent Owner points out that Petitioner does not cite any support
`for this assertion. PO Resp. 8.
`The skill-level determination is an important guarantee of objectivity in an
`obviousness analysis. Graham, 383 U.S. at 17. Usually, we expect evidence, such
`as affidavits of experts, to aid our analysis in this respect. Sometimes, however,
`the prior art may reflect an appropriate skill level. Litton Indus. Products, Inc. v.
`Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Such is the case
`here. See, e.g., Ex. 1002, 1:6–2:28 (discussing methods for repairing damaged
`pipe lines using liner tubes impregnated with a liquid material capable of curing
`
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`and hardening and hydrophilic bands); Ex. 1003, 4:6–23 (discussing methods for
`repairing the juncture of a lateral sewer pipe and a mainline sewer pipe by
`inverting a preliner tube to a position where a gasket impregnated with grout forms
`a water tight seal between the preliner tube and the sewer pipes).
`Patent Owner asserts “the relevant art is sewer pipe renewal and particularly
`trenchless, cured-in-place pipelining” (PO Resp. 8), and one of ordinary skill in the
`art is “someone with knowledge of cured-in-place pipelining materials and
`techniques, and at least several years of experience involving the design and
`application of cured-in-place pipelining technologies” (id. at 8 (citing Ex. 2005 ¶
`21)). For purpose of this Decision, we generally accept Patent Owner’s definition
`of the art and the statement of the level of skill, with one modification. We
`determine that an ordinary artisan does not have to be experienced in both
`designing and applying the technology.
`As Patent Owner recognizes, hands-on experience, rather than formal
`education, serves better in the field of sewer pipe repair. PO Resp. 7–8. Further,
`Patent Owner’s own document supports our modification. Indeed, ASTM F 2561-
`06, an alleged “industry standard specifying the arrangement of the ’118 patent”
`(PO Resp. 24), states that the practice is for use by “designers and specifiers,
`regulatory agencies, owners, and inspection organizations who are involved in the
`rehabilitation of sewer service laterals and its connection to the main through the
`use of a resin-impregnated tube installed within an existing sewer lateral”
`Ex. 2005, Exhibit B, 2 (emphasis added). Thus, in this respect, we agree with
`Petitioner that an ordinary artisan would include both “designers and field
`engineers, including those that were specifying repair methods and procedures
`along with overseeing on-site repairs and who may not publish all their work.”
`Reply 2; Fletcher Decl. ¶ 4.
`
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`
`3. Content of the Prior Art
`
`a. Summary of Kiest ’118 (Ex. 1002)
`
`Kiest ’118 discloses a device using hydrophilic seals for repairing damage
`that occurs at the junction between the lateral pipe line and the main pipe line of
`sewer pipe. Ex. 1002 1:6–24. Figure 2 of Kiest ’118 is provided below.
`
`
`Figure 2 is a sectional view of main pipe line 50 and lateral pipe line 52 showing
`the device of Kiest ’118. Id. at 4:12. The device of Kiest ’118 comprises bladder
`assembly 16 having main bladder tube 34 and lateral bladder tube 36. Id. at 4:37–
`65. Liner assembly 14 comprises a main liner tube 38 and lateral liner tube 40. Id.
`Main liner tube 38 comprises an initially flat material wrapped around the outside
`of carrier tube 12 having overlapping edges 42, 44. Id. Lateral liner tube 40 is
`contained within the carrier tube cavity 48. Id. Lateral bladder tube 36 is
`contained within the cavity 48 of carrier tube 12 and surrounds the lateral liner
`tube 40. Id. Main liner tube 38 and lateral liner tube 40 both are comprised of a
`felt layer and a polymer layer. Id. at 4:59–61.
`
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`
`The device of Kiest ’118 further includes hydrophilic seals or bands 56, 58,
`60 to prevent seepage of ground water into the interior of main and lateral pipe line
`50, 52 through the damaged portion 54. Id. at 4:46–58. Hydrophilic seals 56, 58
`are wrapped around the main liner tube 38 so as to hold the main liner tube 38 in a
`tube like configuration around the outside of carrier tube 12. Id. Hydrophilic seal
`60 may be optionally placed within the interior of the lateral liner tube 40.
`Hydrophilic seals or bands 56, 58, 60 are made of a hydrophilic material capable of
`expanding in response to encountering ground water such as
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