UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`EURAMAX INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`
`INVISAFLOW, LLC
`Patent Owner
`____________________
`
`
`
`Case No. IPR 2016-00423
`Patent 8,556,195
`____________________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107.
`
`
`
`Filed: April 6, 2016
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`TABLE OF EXHIBITS ............................................................................................. v
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND FACTS ................................................................................ 1
`
`A.
`
`B.
`
`C.
`
`The ’195 Patent ..................................................................................... 1
`
`Prosecution of the Related ’327 Application ........................................ 2
`
`Related District Court Litigation Involving the ’195
`Patent ..................................................................................................... 5
`
`III.
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW ....................... 6
`
`A. Overview of the Challenged Claims ..................................................... 6
`
`B.
`
`Petitioner’s Asserted Prior Art Combinations and
`Grounds for Invalidity ........................................................................... 8
`
`IV. LEGAL STANDARDS ................................................................................... 9
`
`A.
`
`Threshold Standards for Inter Partes Review ....................................... 9
`
`B. Obviousness under 35 U.S.C. § 103(a) ............................................... 10
`
`C.
`
`The Entirety of the Claims, Including the Preamble,
`Should be Given Patentable Weight. .................................................. 11
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 13
`
`A.
`
`B.
`
`Petitioner’s Asserted Claim Constructions ......................................... 13
`
`Patent Owner’s Proposed Constructions ............................................. 13
`
`1.
`
`2.
`
`3.
`
`Claim 1 Preamble – “A drainage attachment for
`directing water from an elevated water source” ....................... 13
`
`Claim 1 – “an outlet end comprising a top portion,
`a bottom portion, and first and second side
`portions” .................................................................................... 15
`
`Claim 1 – “the longitudinal axis extends in a first
`plane that is parallel to a second plane that is
`located between the top and bottom portions of the
`outlet end and bisects the first and second side
`portions of the outlet end” ......................................................... 17
`
`4.
`
`Claim 1 – “outlet opening top portion” .................................... 18
`
`i
`
`

`
`5.
`
`6.
`
`7.
`
`Claim 1 – “thereby reducing the effects of erosion
`adjacent the outlet opening” ...................................................... 21
`
`Claim 7 – “attachment member” .............................................. 23
`
`Claim 11 – “at least a major portion of the outlet
`opening” .................................................................................... 24
`
`VI. THE PETITION SHOULD BE DENIED BECAUSE THE APPLIED
`REFERENCES FAIL TO TEACH OR SUGGEST EVERY CLAIM
`ELEMENT ..................................................................................................... 24
`
`A. Ground 1: Claims 1-11 are Patentable over Francis ........................... 24
`
`B. Ground 2: Claims 8 and 9 are Patentable over Francis in
`view of Sweers .................................................................................... 30
`
`C. Ground 3: Claims 1-11 are Patentable over Farmer ........................... 31
`
`D. Ground 4: Claim 9 over Farmer and Hicks ......................................... 34
`
`E. Ground 5: Claims 1-11 over Francis in view of Farmer ..................... 34
`
`F.
`
`Ground 6: Claims 8-9 over Francis in view of Farmer and
`Sweers.................................................................................................. 37
`
`CONCLUSION ........................................................................................................39
`
`CERTIFICATE OF SERVICE ................................................................................40
`
`
`
`
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed.
`Cir. 2002) .......................................................................................................12
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) .................10
`
`Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251
`(Fed. Cir. 1989) ..............................................................................................12
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) .......................................................10
`
`Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed.
`Cir. 1990) .......................................................................................................22
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ..............................................................11
`
`Inline Connection Corp. v. Earthlink, Inc., 684 F. Supp. 2d 496 (D.
`Del. 2010) ......................................................................................................11
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ......................................... 10, 11
`
`Omega Eng'g, Inc., v. Raytek Corp., 334 F.3d 1314 (Fed.Cir.2003) ......................19
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358 (Fed.
`Cir. 2008) .......................................................................................................11
`
`Oxford Gene Tech., Ltd. v. Mergen Ltd., 345 F. Supp. 2d 431 (D. Del.
`2004) ..............................................................................................................11
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir.
`2009) ..............................................................................................................11
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir.
`1999) ..............................................................................................................12
`
`Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997) ................................................... 12, 15
`
`iii
`
`

`
`Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279 (Fed.
`Cir. 2008) .................................................................................... 12, 14, 21, 23
`
`Textron Innovations, Inc. v. American Eurocopter Corp., 498 Fed.
`Appx. 23 (Fed. Cir. 2012) ....................................................................... 12, 33
`
`Toro Co. v. Textron, Inc., 502 F. Supp. 2d 904 (D. Minn. 2007) ............................12
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ......................11
`
`Vizio, Inc. v. International Trade Com'n, 605 F.3d 1330 (Fed. Cir.
`2010) ..............................................................................................................13
`
`Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d
`1322 (Fed. Cir. 2006).....................................................................................20
`
`Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1348 (Fed. Cir.
`2007) ................................................................................................... 6, 18, 19
`
`Statutes
`
`35 U.S.C. § 103(a) ...................................................................................................10
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ...............................................................................................9, 24
`
`37 C.F.R. § 42.100(b) ..............................................................................................10
`
`Other Authorities
`
`M.P.E.P. §§ 2141, 2142, 2143 .................................................................................11
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14,
`2012) ..............................................................................................................10
`
`
`
`
`
`iv
`
`

`
`TABLE OF EXHIBITS
`
`Patent Owner Exhibit
`
`Description
`
`Ex. 2001
`
`Prosecution History of U.S. Patent Application No.
`12/620,327 (“the ’327 Application)
`
`Ex. 2002
`
`U.S. Patent No. 1,033,195 to Robinson (“Robinson”)
`
`v
`
`

`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. 42.107, Patent Owner Invisaflow,
`
`LLC, submits this Preliminary Response to Petitioner Euramax International, Inc.’s
`
`Petition for Inter Partes Review of U.S. Patent No. 8,556,195 (the ’195 Patent).
`
`The ’195 Patent describes and claims drainage attachments for reducing
`
`erosion from elevated water sources, such as down spouts. The Petitioner asks the
`
`Board to re-visit references that the Examiner already considered with respect to
`
`not only the application that issued as the ’195 Patent, but also earlier related
`
`applications that also issued. During prosecution of one of the related applications,
`
`the applicant described certain fundamental characteristics that distinguished the
`
`claimed attachment over prior art curb outlets and nozzles. Claim 1 of the ’195
`
`Patent recites those same fundamental characteristics. Petitioner is unlikely to
`
`succeed with respect to any challenged claim. Given the intrinsic evidence, the
`
`Board should decline Petitioner’s invitation to ignore the claim language, and deny
`
`institution of Inter Partes Review of the ’195 Patent.
`
`II. BACKGROUND FACTS
`
`A. The ’195 Patent
`
`The ’195 Patent teaches an attachment for emitting water from an elevated
`
`water source (e.g. a down spout) that reduces erosion around the outlet end of the
`
`attachment. See Pet. Ex. 1001, ’195 Patent at col. 1, lines 28-30; col. 2, lines 5-8.
`
`More specifically, erosion is reduced because, among other things, the water
`
`1
`
`

`
`exiting the outlet end of the attachment disperses over a wider area than the area of
`
`most conventional devices. Id. at col. 4, lines 26-35. This wider area of dispersion
`
`slows the speed of the water exiting the water source, thereby reducing the effects
`
`of erosion adjacent the outlet opening. Id.
`
`The ’195 Patent issued from U.S. Application No. 13/545,713 (“the ’713
`
`Application”), which is a continuation of U.S. Application No. 12/620,327 (“the
`
`’327 Application”), now Patent No. 8,251,302. Additionally, the ’327 Application
`
`is a continuation-in-part of U.S. Application No. 12/262,621 (now U.S. Patent No.
`
`7,748,650), which is a continuation of U.S. Application No. 11/561,313 (now U.S.
`
`Patent No. 7,458,532).
`
`B.
`
`Prosecution of the Related ’327 Application
`
`The primary references asserted in the Petition were of-record during
`
`prosecution of the ’713 Application. Additionally, the Examiner considered U.S.
`
`Patent 2,397,655 to Francis (“Francis”) and another nozzle attachment patent, U.S.
`
`Patent 1,033,195 to Robinson (“Robinson”), during examination of the related ’327
`
`Application, to which the ’195 Patent claims priority. In an Office Action, the
`
`Examiner rejected claims pending in the ’327 Application as anticipated by
`
`Robinson and Francis. Ex. 2001, at pp. 068-69 (April 12, 2012 Office Action at
`
`pp. 3-4).
`
`2
`
`

`
`Robinson discloses a “flushing-nozzle,” similar to the nozzle disclosed in
`
`U.S. Patent 1,239,373 to Farmer (“Farmer”). For example, Robinson states:
`
`This invention relates to improvements in flushing
`nozzles of the type used on flushing wagons which are
`mainly employed for washing city pavements, and has
`for its particular object to provide a 'device of this
`character that will discharge a flat broad stream at an
`angle to the pavement and means for causing said stream
`to contact with the pavement with equal force throughout
`its flushing area.
`
`Ex. 2002, Robinson at col. 1, lines 9-18. Robinson’s Fig. 1 is reproduced below.
`
`
`
`In response to the rejection over Robinson, the applicant emphasized both
`
`the use of gravity to influence water flowing through the claimed drainage device,
`
`and also that the outlet opening was positioned below the attachment inlet end
`
`center point. See Ex. 2001, at p. 052 (’327 Application, June 14, 2012 Amendment,
`
`at p. 10). To that end, the applicant amended a pending independent claim’s
`
`preamble to clarify that the attachment drained water “from an elevated water
`
`source,” and further amended that claim to recite that the attachment’s outlet
`
`“reduced the effects of erosion at the drainage location adjacent the outlet
`
`3
`
`

`
`opening.” Id. at p. 045 (Amendment at p. 3). The applicant also distinguished the
`
`claims on the basis that the claimed drainage attachment reduced the effects of
`
`erosion at the drainage location, whereas the Robinson nozzle “is configured to
`
`eject water from the outlet with sufficient force to clean city pavements.” Id. at 053
`
`(Amendment at p. 11). Following the June 14, 2012 Amendment, the Examiner
`
`allowed the ’327 Application to issue. Id. at p. 024 (Notice of Allowance mailed
`
`June 26, 2012). For much the same reasons, Farmer, discussed below, also fails to
`
`teach or suggest the claims of the ’195 Patent.
`
`In addition to the Examiner finding the ’327 Application’s claims patentable
`
`over Robinson’s nozzle, the Examiner also found the claims patentable over
`
`Francis. In the June 14, 2012 Amendment, the applicant emphasized both the
`
`claimed attachment’s configuration for use with an elevated water source, and the
`
`outlet opening being “positioned below the inlet end center point.” Id. at p. 054
`
`(Amendment at p. 12). Francis, on the other hand, has an opening “not positioned
`
`below a center point of the inlet end,” and “is not configured for use with a
`
`relatively raised water source.” Id. (emphasis original). Instead, Francis’s curb
`
`fitting “is configured for use with a horizontal drain pipe.” Id. The Examiner
`
`allowed the ’327 Application in response to these distinctions. As discussed below,
`
`the challenged claims are patentable over Petitioner’s proposed rejections for at
`
`least the same reasons.
`
`4
`
`

`
`C. Related District Court Litigation Involving the ’195 Patent
`
`Patent Owner asserted the ’195 Patent against Petitioner in Invisaflow LLC
`
`v. Euramax Int’l, Inc., No. 1:14-cv-3026 (N.D. Ga.). In the lawsuit, Patent Owner
`
`accuses Euramax of infringing the ’195 Patent by making, offering for sale, selling,
`
`importing, and/or using certain products in the United States that embody the
`
`patented inventions described and claimed in the ’195 Patent, including the
`
`“extend-A-Spout v2 Low Profile Drainage System” product as marketed in various
`
`stores and online at http://www.amerimax.com/products/extend-a-spout/ (pictured
`
`below).
`
`
`
`See Petitioners’ Exhibit 1010 at ¶ 14 and Ex. B thereto.
`
`The accused product includes an elongated outlet end relative to the figures
`
`of the ’195 Patent, but nonetheless is encompassed by the claims, as every claim
`
`element of at least claim 1 is present in the accused device. This includes the claim
`
`element that “at least a portion of the outlet opening top portion is positioned
`
`below the first plane” as recited in claim 1. ’195 Patent at col. 6, lines 28-29.
`
`Contrary to Petitioner’s argument, the quoted element is directed to “the outlet
`
`5
`
`

`
`opening,” not “the outlet end” as referenced “earlier in claim 1,” and therefore the
`
`construction with respect to “the outlet opening” need not be identical. See
`
`Petition at 7-8 (citing Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1348
`
`(Fed. Cir. 2007) (Court applying similar construction to “same claim term,” which
`
`is distinguishable from the situation here having distinguishable claim terms
`
`(emphasis added))); see also infra at Sec. V.B.4.
`
`III. PETITIONER’S REQUEST FOR INTER PARTES REVIEW
`
`A. Overview of the Challenged Claims
`
`Petitioner challenges all 11 claims of the ’195 Patent. Those claims
`
`generally relate to drainage attachments for directing water from an elevated water
`
`source to an outlet end, reducing erosion at the outlet end. Claim 1, the only
`
`independent claim, recites a drainage attachment having an inlet end, an outlet end,
`
`and a transitional section between ends.
`
`As shown in the embodiment that Figs. 5 and 6 (reproduced below)
`
`illustrate, inlet end 14 includes center point 54. At least a portion of the outlet
`
`opening 32 top portion is positioned below the center point 54. The ’195 Patent
`
`teaches that this configuration facilitates a low-profile design and allows for
`
`gravitational draining. See, e.g., ’195 Patent at col. 5, lines 37-40.
`
`6
`
`

`
`
`
`Claim 1 incorporates this fundamental characteristic by reciting, in part,
`
`“wherein the longitudinal axis [defined by the center point] extends in a first plane
`
`that is parallel to a second plane that is located between the top and bottom
`
`portions of the outlet end and bisects the first and second side portions of the outlet
`
`end;” and “wherein at least a portion of the outlet opening top portion is positioned
`
`below the first plane.” In addition to Figs. 5 and 6, Fig. 1 (below) illustrates the
`
`relative orientation of the inlet end 14, transitional section 16, and outlet end 18.
`
`
`
`7
`
`

`
`Transitional section 16 increases in width and decreases in height from the
`
`inlet end 14 to the outlet opening 32. This allows the cross-sectional area of the
`
`outlet end 18 to increase, “slow[ing] the speed of the water exiting the water
`
`source, thereby reducing the effects of erosion on the surrounding area.” ’195
`
`Patent at col. 4, lines 28-35. The Specification provides guidance on the
`
`relationship of the inlet and outlet widths and heights to reduce erosion at the outlet
`
`end. See, e.g., ’195 Patent at col. 4, lines 50-65. Claim 1 recites, “wherein the
`
`outlet width is greater than the inlet width to disperse water flowing through the
`
`attachment and out of the outlet opening, thereby reducing the effects of erosion
`
`adjacent the outlet opening,” to capture this fundamental characteristic of the
`
`claimed invention.
`
`B.
`
`Petitioner’s Asserted Prior Art Combinations and Grounds for
`Invalidity
`
`Petitioner relies on two primary references, Francis (U.S. Patent 2,397,655),
`
`and Farmer (U.S. Patent 1,239,373). Francis teaches a curb outlet designed to
`
`allow a drainage pipe to extend through a curb without significantly reducing the
`
`curb’s structural integrity. Pet. Ex. 1003, Francis at col. 2, lines 25-27. Francis was
`
`cited during prosecution of the ’713 Application, and is referenced on the ’195
`
`Patent. The applicant distinguished Francis during prosecution of the related ’327
`
`Application, based on fundamental characteristics also recited in claim 1 of the
`
`’195 Patent.
`
`8
`
`

`
`Farmer teaches a “street-flushing nozzle” for attachment to “sprinkling or
`
`flushing machines, of improved construction, designed to eject a stream of water to
`
`cleanse and wash a pavement in a manner more thorough and advantageous than
`
`that attained by nozzles of ordinary construction.” Pet. Ex. 1004, Farmer at col. 1,
`
`lines 12-17. Farmer was cited during prosecution of the ’713 Application, and is
`
`referenced on the ’195 Patent.
`
`The following table summarizes Petitioner’s asserted grounds for invalidity
`
`of claims 1-11 of the ’195 Patent.
`
`Ground
`
`Ground 1
`
`Ground 2
`
`Ground 3
`
`Ground 4
`Ground 5
`Ground 6
`
`Challenged Claims
`
`Claims 1-11
`
`Claims 8 and 9
`
`Claims 1-11
`
`Claim 9
`Claims 1-11
`Claims 8 and 9
`
`Asserted References
`Francis and “Knowledge of
`a Person of Ordinary Skill
`in the Art”
`Francis and Sweers
`Farmer and “Knowledge of
`a Person of Ordinary Skill
`in the Art”
`Farmer and Hicks
`Francis and Farmer
`Francis, Farmer, and Sweets
`
`IV. LEGAL STANDARDS
`
`A. Threshold Standards for Inter Partes Review
`
`In instituting an Inter Partes Review, the petitioner must show that there is a
`
`“reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). In conducting its review,
`
`the Board should interpret claims using the broadest reasonable interpretation as
`
`9
`
`

`
`understood by one of ordinary skill in the art and consistent with the disclosure.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37
`
`C.F.R. § 42.100(b). There is a heavy presumption that a claim term carries its
`
`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`
`1359, 1366 (Fed. Cir. 2002).
`
`B. Obviousness under 35 U.S.C. § 103(a)
`
`A patent is only invalid under Section 103(a) 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.” 35 U.S.C. § 103(a). An obviousness
`
`inquiry requires considering the following four Graham factors: (1) the scope and
`
`content of the prior art; (2) the differences between the prior art and the claimed
`
`invention; (3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see also KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007) (stating that the four
`
`Graham factors continue to define the controlling inquiry). The relevant inquiry is
`
`whether the petition has set forth “some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at
`
`418.
`
`10
`
`

`
`Determining the differences between the prior art and the claimed invention
`
`requires an element-by-element comparison of the claim elements with regard to
`
`the prior art. See, e.g., Oxford Gene Tech., Ltd. v. Mergen Ltd., 345 F. Supp. 2d
`
`431, 437 (D. Del. 2004); Inline Connection Corp. v. Earthlink, Inc., 684 F. Supp.
`
`2d 496, 523 (D. Del. 2010).
`
`The obviousness analysis also must present evidence of a motivation to
`
`combine or modify the prior art to arrive at the invention as claimed. See Unigene
`
`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011); Ortho-McNeil
`
`Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364-65 (Fed. Cir. 2008); In re
`
`Kahn, 441 F.3d 977, 986-88 (Fed. Cir. 2006). There must be “some rationale,
`
`articulation, or reasoned basis to explain why the conclusion of obviousness is
`
`correct.” In re Kahn, 441 F.3d at 986-88. The requirement “remains the primary
`
`guarantor against a non-statutory hindsight analysis.” Ortho-McNeil, 520 F.3d at
`
`1364-65. It is well-established that rejections on obviousness grounds cannot be
`
`sustained by “mere conclusory statements.” KSR, 550 U.S. at 418; see also Perfect
`
`Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009); M.P.E.P.
`
`§§ 2141, 2142, 2143.
`
`C. The Entirety of the Claims, Including the Preamble, Should be
`Given Patentable Weight.
`
`A preamble is entitled to patentable weight when it is “necessary to give life,
`
`meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`
`11
`
`

`
`182 F.3d 1298, 1305 (Fed. Cir. 1999). The same is true for language that may be
`
`considered “functional.” Textron Innovations, Inc. v. American Eurocopter Corp.,
`
`498 Fed. Appx. 23, 28 (Fed. Cir. 2012) (“functional language may be used to add
`
`limitations to an apparatus claim”). Consideration of the “entire patent record” is
`
`required “to determine what invention the patentee intended to define and protect,”
`
`and therefore whether such language should be limiting. Rowe v. Dror, 112 F.3d
`
`473, 478 (Fed. Cir. 1997); see also Corning Glass Works v. Sumitomo Elec. U.S.A.,
`
`Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (considering the specification’s
`
`statement of the problem with the prior art).
`
`Another situation where courts have regularly held preamble and/or
`
`“functional” language limiting is where there was “clear reliance” on the language
`
`during prosecution “to distinguish the claimed invention from the prior art.”
`
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
`
`2002); see also Toro Co. v. Textron, Inc., 502 F. Supp. 2d 904, 908 (D. Minn.
`
`2007) (finding amendment language limiting where amendment was added during
`
`prosecution to overcome cited art). The addition of such language to distinguish
`
`over the prior art indicates clear intent that the language define the scope of the
`
`claimed invention. Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279,
`
`1288 (Fed. Cir. 2008). In this case, in view of the rules set forth herein and as
`
`12
`
`

`
`detailed further below, both the preamble and the claim element “thereby reducing
`
`the effects of erosion adjacent the outlet opening” are entitled to patentable weight.
`
`V. CLAIM CONSTRUCTION
`
`A.
`
`Petitioner’s Asserted Claim Constructions
`
`Petitioners have proposed claim interpretations for several claim elements.
`
`However, Petitioners’ proposed claim constructions are inconsistent with the
`
`express teachings of the ’195 Patent, and are contrary to the plain and ordinary
`
`meanings of the claim terms. Patent Owner submits the proper interpretation for
`
`claim elements that Petitioners did not construe.
`
`B.
`
`Patent Owner’s Proposed Constructions
`
`1.
`
`Claim 1 Preamble – “A drainage attachment for directing
`water from an elevated water source”
`
`The preamble to claim 1 should be given patentable weight, and be
`
`construed according to its plain and ordinary meaning. As seen in the specification,
`
`and the prosecution history of the related ’327 Application, this feature represents
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`“the essence or a fundamental characteristic of the claimed invention.” Vizio, Inc.
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`v. International Trade Com'n, 605 F.3d 1330, 1340 (Fed. Cir. 2010) (citation
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`omitted). Indeed, “[t]he attachment is used in a gravity flow, surface drainage
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`system. . . . The attachment is also designed to attach to a down spout that directs
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`water from a building.” ’195 Patent at col. 5, lines 37-42. This indicates clear
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`intent that the preamble defines the scope of the claimed invention. Symantec
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`Corp., 522 F.3d at 1288.
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`Petitioner merely argues that the preamble is not limiting, because the body
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`of the claim is purportedly a complete structure. Pet. at p. 6 (citations omitted).
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`However, Petitioner’s argument fails to account for the prosecution history of both
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`the ’713 Application and a related parent application, the ’327 Application. During
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`prosecution of the ’713 Application, the applicant amended the preamble to recite a
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`“drainage attachment for directing water from an elevated water source . . . .” Pet.
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`Ex. 1002 at p. 63 (’713 Application, Nov. 3, 2012 Amendment, at p. 2). Although
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`applicant eventually cancelled claim 1 in favor of new claim 32, independent claim
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`32 (which issued as claim 1 of the ’195 Patent) includes the same preamble. Id. at
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`p. 67 (Amendment at p. 6).
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`Although present in the claim preamble, this feature represents a
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`fundamental characteristic of the claimed invention. For example, the Summary of
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`the Invention section teaches that the disclosed drainage attachment lowers the
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`height of the drain pipes and down spouts, to reduce erosion around the exit of the
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`water source. ’195 Patent at col. 2, lines 33-39. This fundamental characteristic can
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`also be seen in connection with the prosecution of the related ’327 Application,
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`discussed above. See supra at pp. 2-4. As set forth in the applicant’s response to
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`an April 12, 2012 Office Action, the applicant emphasized the claimed
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`attachment’s configuration for use with an elevated water source. Ex. 2001 at p.
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`052-54 (’327 Application, June 14, 2012 Amendment at 10-12). Like claim 1 of
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`the ’195 Patent, the independent claim pending in the ’327 Application also
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`referenced the elevated water source in its preamble. Thus, the applicant clearly
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`intended for the preamble to have patentable weight. Accordingly, the claim
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`preamble should be given patentable weight, and should be construed according to
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`its plain and ordinary meaning. See Rowe, 112 F.3d at 478.
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`2.
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`Claim 1 – “an outlet end comprising a top portion, a bottom
`portion, and first and second side portions”
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`Claim 1 recites, inter alia, “an outlet end comprising a top portion, a bottom
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`portion, and first and second side portions, the outlet end including an outlet
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`opening, the outlet opening comprising an outlet width.” ’195 Patent at col. 6, lines
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`17-20. The Specification teaches that the drainage attachment includes an inlet end,
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`a transitional section connected to the inlet end, an outlet end connected to the
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`transitional section opposite from the inlet end. Id. at col. 47-49. Fig. 2 shows an
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`embodiment in which outlet end 18 as having a rectangular cross-sectional area
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`having an outlet opening 32. Thus, the outlet end extends from the transitional
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`section to the outlet opening.
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`Petitioner argues that this claim element should be interpreted as “an outlet
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`end having an uppermost structure extending between first and second lateral
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`structures and a lowermost structure extending between the first and second lateral
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`15
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`structures.” Petition at 7. Patent Owner disagrees, as “uppermost” and “lowermost”
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`are neither used in the claims, nor referenced in the Specification. Accordingly,
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`Petitioner’s proposed construction would seek to limit the claim language beyond
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`the plain language of the claims, running afoul of the broadest reasonable
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`interpretation.
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`Consistent with its position in related litigation, Patent Owner contends that
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`the plain and ordinary meaning may be described as:
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` The top portion of the outlet end is the space defined above the second plane,
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`and by at least a part of the walls above the second plane.
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` The bottom portion of the outlet end is the space defined below the second
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`plane and by at least a part of the walls below the second plane.
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` The first side portion is a first side wall.
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` The second side portion is a second side wall.
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`The term “portion” is a commonly used term, and is generally understood to
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`mean a “section or quantity within a thing; a part of a whole.” See, e.g., The
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`American Heritage Dictionary of the English Language (5th Ed. 2015), available at
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`https://www.ahdictionary.com/word/search.html?q=portion&submit.x=38&submit.
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`y=22.) Nothing in the plain and ordinary meaning justifies the use of “uppermost”
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`or “lowermost” in the construction of this claim element.
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`Instead, the claim describes the “outlet end” in terms of sections or pieces of
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`that component of the drainage attachment. There is no basis for limiting the
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`structure of the outlet end to Petitioner’s manifestation, in which the “top portion”
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`is only the “uppermost structure” between the side walls, or the “bottom portion” is
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`only the “lowermost structure” between the side walls. Accordingly, the Board
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`should adopt Patent Owner’s proposed constructions.
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`3.
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`Claim 1 – “the longitudinal axis extends in a first plane that is
`parallel to a second plane that is located between the top and
`bottom portions of the outlet end and bisects the first and
`second side portions of the outlet end”
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`This recitation appears in claim 1 of the ’195 Patent, and to the position of
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`the outlet end relative to the inlet end. Petitioner asserts that this element, in
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`connection with “an inlet center point defining a longitudinal axis,” should be
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`construed as defining “a first plane that extends through the center point of the
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`inlet end and that is parallel to a second plane that extends between the top and
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`bottom portions of the outlet end and bisects the first and second side portions of
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`the outlet end.” Pet. at p. 7. This proposed construction appears to merely rearrange
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`the claim language, and adds nothing to assist with interpreting the claim language.
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`Patent Owner contends that this claim element does not require construction,
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`as the ordinary and plain meaning should gove