UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`EURAMAX INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`INVISAFLOW, LLC
`Patent Owner
`
`
`
`
`
`Patent Number 8,556,195
`Filing Date: July 10, 2012
`Issue Date: October 15, 2013
`Title: LOW PROFILE ATTACHMENT FOR EMITTING WATER
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`I.
`
`I.
`
`II.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Introduction .................................................................................................... .. 1
`
`Formalities ....................................................................................................... 1
`
`Formalities ..................................................................................................... .. 1
`
`A.
`
`A.
`
`B.
`
`B.
`
`C.
`
`C.
`
`Real Parties-in-Interest .......................................................................... 1
`
`Real Parties-in-Interest ........................................................................ .. 1
`
`Related Matters ...................................................................................... 1
`
`Related Matters .................................................................................... ..1
`
`Fee ......................................................................................................... 2
`
`Fee ....................................................................................................... ..2
`
`D. Designation of Lead Counsel and Request for
`D.
`Designation of Lead Counsel and Request for
`Authorization ......................................................................................... 2
`Authorization ....................................................................................... . .2
`
`E.
`
`E.
`
`F.
`F.
`
`G.
`G.
`
`Service Information ............................................................................... 2
`
`Service Information ............................................................................. ..2
`
`Power of Attorney ................................................................................. 3
`Power of Attorney ............................................................................... ..3
`
`Standing ................................................................................................. 3
`Standing ............................................................................................... ..3
`
`III. The ’195 Patent ................................................................................................ 3
`
`The ’195 Patent .............................................................................................. ..3
`
`III.
`
`A.
`A.
`
`B.
`B.
`
`Priority Date of the ’195 Patent............................................................. 3
`Priority Date of the ’ 195 Patent ........................................................... ..3
`
`The Written Specification and Figures ................................................. 4
`The Written Specification and Figures ............................................... ..4
`
`IV. Claim Construction .......................................................................................... 6
`
`Claim Construction ........................................................................................ ..6
`
`IV.
`
`V.
`V.
`
`Statement of Relief Requested ...................................................................... 10
`Statement of Relief Requested .................................................................... .. 10
`
`VI. Scope and Content of the Prior Art ............................................................... 11
`VI.
`Scope and Content of the Prior Art ............................................................. ..11
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`D.
`D.
`
`The Francis Patent (Exhibit 1003) ...................................................... 11
`The Francis Patent (Exhibit 1003) .................................................... ..11
`
`The Farmer Patent (Exhibit 1004) ....................................................... 12
`The Farmer Patent (Exhibit 1004) ..................................................... .. 12
`
`The Hicks Patent (Exhibit 1005) ......................................................... 13
`The Hicks Patent (Exhibit 1005) ....................................................... .. 13
`
`The Sweers Patent (Exhibit 1006) ....................................................... 13
`The Sweers Patent (Exhibit 1006) ..................................................... .. 13
`
`VII. Level of Ordinary Skill in the Art ................................................................. 14
`VII. Level of Ordinary Skill in the Art ............................................................... .. 14
`
`VIII. Full Statement of the Reasons for the Relief Requested ............................... 14
`VIII. Full Statement of the Reasons for the Relief Requested ............................. .. 14
`
`i
`
`

`
`
`
`A. Ground 1: Obviousness of Claims 1-11 in View of the
`Francis Patent and Knowledge of a Person of Ordinary
`Skill in the Art ..................................................................................... 14
`
`B.
`
`Ground 2: Obviousness of Claims 8-9 in View of the
`Francis Patent and the Sweers Patent .................................................. 31
`
`C. Ground 3: Obviousness of Claims 1-11 in View of the
`Farmer Patent and Knowledge of a Person of Ordinary
`Skill in the Art ..................................................................................... 35
`
`D. Ground 4: Obviousness of Claim 9 in View of the Farmer
`Patent and the Hicks Patent ................................................................. 46
`
`E.
`
`F.
`
`Ground 5: Obviousness of Claims 1-11 in View of the
`Francis Patent and the Farmer Patent. ................................................. 49
`
`Ground 6: Obviousness of Claims 8-9 in View of the
`Francis Patent, the Farmer Patent and the Sweers Patent ................... 59
`
`IX. Conclusion ..................................................................................................... 60
`
`
`
`
`
`ii
`
`

`
`LIST OF EXHIBITS
`
`DESCRIPTION
`
`U.S. Patent No. 8,556,195 (“the ’195 patent”).
`
`Prosecution history for the ’195 patent.
`
`U.S. Patent No. 2,397,655 (“the Francis patent”).
`
`U.S. Patent No. 1,239,373 (“the Farmer patent”).
`
`U.S. Patent No. 3,640,465 (“the Hicks patent”).
`
`U.S. Patent No. 5,658,092 (“the Sweers patent”).
`
`Declaration of James B. Goddard, dated December 31, 2015
`(“Goddard Decl.”).
`
`The American Heritage College Dictionary (4th ed. 2006)
`
`Complaint for Patent Infringement and Demand for Jury Trial
`filed September 22, 2014 in the case of InvisaFlow LLC. v.
`Euramax International, Inc. et al., No. 1:14-cv-3026 (N.D. Ga.)
`and accompanying Notice of Service.
`
`First Amended Complaint filed October 27, 2014 in the case of
`InvisaFlow LLC. v. Euramax International, Inc. et al., No. 1:14-
`cv-3026 (N.D. Ga.) and accompanying Notice of Service.
`
`Plaintiff’s Proposed Claim Constructions for the Claim Terms
`Identified by Defendants in the case of InvisaFlow LLC. v.
`Euramax International, Inc. et al., No. 1:14-cv-3026 (N.D. Ga.)
`
`
`
`PETITIONER
`EXHIBIT
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`
`
`iii
`
`

`
`I.
`
`Introduction
`
`Through counsel, Euramax International, Inc. (“Petitioner”) hereby petitions
`
`for initiation of inter partes review of claims 1-11 of U.S. Patent No. 8,556,195
`
`(“the ’195 patent”), assigned to InvisaFlow, Inc. (“Patent Owner”). A copy of the
`
`’195 patent is attached as Exhibit 1001 and a copy of the prosecution history of the
`
`’195 patent is attached as Exhibit 1002.
`
`II.
`
`Formalities
`A. Real Parties-in-Interest
`
`The real parties-in-interest, Euramax International, Inc. and Euramax
`
`Holdings, Inc., are Delaware corporations having principal business addresses at
`
`303 Research Drive, Suite 400, Norcross, Georgia 30092.
`
`B. Related Matters
`
`The ’195 patent is asserted against Petitioner and Euramax Holdings, Inc. in
`
`InvisaFlow LLC. v. Euramax International, Inc. et al., No. 1:14-cv-3026 (N.D.
`
`Ga.). See Exs. 1009-1010 (Complaint for Patent Infringement, dated September
`
`22, 2014, and accompanying notice of service and First Amended Complaint,
`
`dated October 27, 2014, and accompanying notice of service).
`
`The ’195 patent claims priority to the following issued patents that are not
`
`involved in this proceeding or the related litigation: U.S. Patent Nos. 8,251,302;
`
`7,748,650; and 7,458,532.
`
`1
`
`
`

`
`C.
`
`Fee
`
`
`
`This petition for inter partes review of 11 claims of the ’195 patent is
`
`accompanied by a fee payment of $23,000, which includes the $9,000 inter partes
`
`review request fee and the $14,000 inter partes review post-institution fee. See 37
`
`C.F.R. § 42.15(a). Thus, this petition meets the fee requirements under 35 U.S.C.
`
`§ 312(a)(1) and 37 C.F.R. §§ 42.15(a) and 42.103. Petitioner further authorizes a
`
`debit from Deposit Account 20-1430 for whatever additional payment is necessary
`
`in granting this petition.
`
`D. Designation of Lead Counsel and Request for Authorization
`
`Lead Counsel for Petitioner is Vaibhav P. Kadaba (Reg. No. 45,865), of
`
`Kilpatrick Townsend & Stockton LLP. Back-up counsel for Petitioner is Renae B.
`
`Wainwright (Reg. No. 58,961), of Kilpatrick Townsend & Stockton LLP.
`
`E.
`
`Service Information
`
`As identified in the attached Certificate of Service, a copy of the present
`
`petition, in its entirety, is being served to the address of record for the ’195 patent ,
`
`which is also the address for the lead attorneys of record in the related litigation.
`
`Euramax International, Inc. may be served at its counsel, Kilpatrick Townsend &
`
`Stockton LLP.
`
`2
`
`

`
`F.
`
`Power of Attorney
`
`
`
`A power of attorney with designation of counsel is filed herewith in
`
`accordance with 37 C.F.R. § 42.10(b).
`
`G.
`
`Standing
`
`The ’195 patent was filed on July 10, 2012 and therefore is eligible for inter
`
`partes review immediately following the date of the grant of the patent. 37 C.F.R.
`
`§ 42.102(a)(2). Further, the ’195 patent is currently asserted in a co-pending
`
`litigation, and this petition is being filed within one year of Petitioner being served
`
`with a complaint for infringement. See Exs. 1009-1010. Petitioner certifies that
`
`the ’195 patent is available for inter partes review and that Petitioner is not barred
`
`or estopped from requesting an inter partes review challenging the patent claims
`
`on the grounds identified in this petition.
`
`III. The ’195 Patent
`A.
`Priority Date of the ’195 Patent
`
`The ’195 patent issued on October 15, 2013 from Application No.
`
`13/545,713, filed on July 10, 2012. The ’195 patent purports to be a continuation
`
`application of Application No. 12/620,327 filed on November 17, 2009, which
`
`purports to be a continuation-in-part application of Application No. 12/262,621
`
`filed on October 31, 2008, which in turn purports to be a continuation application
`
`of Application No. 11/561,313 filed on November 17, 2006. Thus, the earliest
`
`3
`
`

`
`
`
`possible effective filing date for purposes of 35 U.S.C. §§ 102(a) and 102(b) is
`
`November 17, 2006.
`
`B.
`
`The Written Specification and Figures
`
`The ’195 patent relates to an attachment for emitting water from a water
`
`source. See ’195 patent, Abstract.
`
`According to the ’195 patent, it was well known in the prior art for
`
`attachment designs “to direct water flowing from pipes and down spouts on
`
`buildings” and that many prior art designs have “attempted to manipulate the
`
`outflow of water from the pipes and down spouts in order to increase the flow
`
`efficiency of the water or transfer the water to a different location.” See ’195
`
`patent, at 1:35-40. The ’195 patent purports to improve on these prior attempts to
`
`increase water flow efficiency with a water emitting design that “increases the
`
`fluid dynamic flow out of the outlet end.” See ’195 patent, at 1:62-2:12.
`
`Specifically, to increase water flow efficiency, the ’195 patent illustrates and
`
`describes an attachment 10 that includes an inlet end 14 having a center point 54
`
`and an outlet end 18 positioned below the center point 54. See ’195 patent, at
`
`4:22-25; Figs. 3, 5 reproduced below.
`
`4
`
`

`
`
`
`
`
`
`
`
`
`
`
`The inlet end 14 of the attachment 10 includes an intake opening 36 having
`
`an inlet width 40. See ’195 patent, at 4:47-49; Figs. 5-6 reproduced above and
`
`below, respectively. Similarly, the outlet end 18 includes a dispersion opening 32
`
`having an outlet width 44. See ’195 patent, at 4:49-52; Figs. 5-6 reproduced above
`
`and below, respectively.
`
`
`
`
`
`The attachment 10 further includes a transitional section 16 between the inlet
`
`end 14 and the outlet end 18 that “provides a geometric transition from a circular
`
`inlet end 14 to a rectangular outlet end 18” as shown in Figure 3 reproduced above.
`
`’195 patent, at 3:47-49; 5:21-24; Fig. 3.
`
`5
`
`

`
`The attachment 10 also includes “a plurality of attachment members 28
`
`
`
`
`
`spaced along the outer surface 26 and positioned to removably secure the water
`
`source 12 to the inlet end 14 of the attachment [10]…In alternate embodiments, the
`
`attachment members 28 can include slots designed to accept the water source 12,
`
`buckles, snaps, hooks, and other fasteners known to one skilled in the art to secure
`
`two items together.” ’195 patent, at 3:63-4:5; Fig. 5.
`
`IV. Claim Construction
`In inter partes review, a claim is given the “broadest reasonable construction
`
`in light of the specification.” See 37 C.F.R. § 42.100(b).
`
`Petitioner submits that the preamble of claim 1 of the ’195 Patent is not
`
`limiting. See TomTom, Inc. v. Adolph, 790 F.3d 1315 (Fed. Cir. 2015); Rowe v.
`
`Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“[W]here a patentee defines a
`
`structurally complete invention in the claim body and uses the preamble only to
`
`state a purpose or intended use for the invention, the preamble is not a claim
`
`limitation.”).
`
`The recitation of (a) “an inlet center point defining a longitudinal axis” and
`
`(b) “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” appears in claim 1 of the ’195
`
`patent. Petitioner submits that these two clauses should be interpreted as defining
`
`6
`
`

`
`
`
`a first plane that extends through the center point of the inlet end and that is
`
`parallel to a second plane that extends between the top and bottom portions of the
`
`outlet end and bisects the first and second side portions of the outlet end.
`
`The recitation of “an outlet end comprising a top portion, a bottom portion,
`
`and first and second side portions” appears in claim 1 of the ’195 patent. Petitioner
`
`submits that this clause should be interpreted as “an outlet end having an
`
`uppermost structure extending between first and second lateral structures and a
`
`lowermost structure extending between the first and second lateral structures.”
`
`This is consistent with the ‘195 patent specification that describes the outlet height
`
`42 and outlet width 4, as well as the description of Figure 3 as a perspective view
`
`of the current invention, which is further described as having a rectangular outlet
`
`end. ’195 patent, at 3:21-23; 4:50-56; 5:21-26; Fig. 3.
`
`The recitation “outlet opening top portion” appears in claim 1 of the ’195
`
`patent. Petitioner contends that, to be consistent with the ’195 patent’s use of the
`
`same term “top portion” earlier in claim 1,1 the term must be construed to mean
`
`“an uppermost structure of the outlet opening extending between first and second
`
`lateral structures.” See Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1348
`
`1 When referencing the “top portion” of the outlet end, claim 1 of the ’195 patent
`
`also separately refers to “a bottom portion” and “first and second side portions,”
`
`indicating each are distinct.
`
`7
`
`

`
`
`
`(Fed. Cir. 2007) (Applying the same construction of a term to all claims because
`
`“…unless otherwise compelled . . . the same claim term in the same patent or
`
`related patents carries the same construed meaning.”) (internal quotations omitted).
`
`However, in the related litigation involving the ’195 patent, Patent Owner
`
`contends that “top portion” means the “space defined above the second plane and
`
`by at least a part of the walls above the second plane.” See Ex. 1011, at p. 2.2
`
`Although Petitioner believes such a construction is inconsistent with the teaching
`
`of the specification, including claim 1 itself, and therefore improperly broad,
`
`Petitioner has addressed this construction in the Grounds below should the Board
`
`deem this to be the broadest reasonable construction.
`
`The recitation “thereby reducing the effects of erosion adjacent the outlet
`
`opening” appears at the end of claim 1 of the ’195 patent. Petitioner submits that
`
`this clause is not entitled to patentable weight because it is a statement of a desired
`
`result rather than an apparatus or specific structure to accomplish the desired result.
`
`See, e.g., Application of Koester, 392 F.2d 626, 631-32 (C.C.P.A. 1968); see also
`
`Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir.
`
`
`2 Patent Owner inconsistently construes the term “portion” throughout claim 1.
`
`Patent Owner construes the term “portion” in the context of the first and second
`
`side portions of claim 1 to mean “wall.” See Ex. 1011, at p. 2.
`
`8
`
`

`
`
`
`1990) (“[A]pparatus claims cover what a device is, not what a device does.”)
`
`(emphasis in original).
`
`The recitation “attachment member” appears in claim 7 of the ’195 patent.
`
`According to the broadest reasonable construction, Petitioner submits that
`
`“attachment member” should be interpreted as “a connection mechanism.” ’195
`
`patent, at 3:63-4:5.
`
`The recitation “slot” appears in claim 9 of the ’195 patent. According to the
`
`broadest reasonable construction, Petitioner submits that “slot” should be
`
`interpreted as “a narrow opening, groove or slit.” Ex. 1008, at p. 1304 (defining
`
`“slot” as “a narrow opening; a groove or a slit”).
`
`The recitation “at least a major portion of the outlet opening” appears in
`
`claim 11 of the ’195 patent. According to the broadest reasonable construction,
`
`Petitioner submits that “at least a major portion of the outlet opening” should be
`
`interpreted as “at least a majority of the outlet opening.” Ex. 1008, at p. 834
`
`(defining “major” as “great in number, quantity, or extent.”).
`
`Petitioner submits that the remaining claim terms should be accorded their
`
`ordinary and customary meaning as understood by one of ordinary skill in the art.
`
`See 77 Fed. Reg. 48700 (2012). Any claim constructions presented either
`
`implicitly or explicitly in this proceeding should not be viewed as a concession as
`
`to the proper scope of any claim term in any future litigation proceeding.
`
`9
`
`

`
`Statement of Relief Requested
`
`
`
`V.
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner respectfully requests
`
`cancellation of claims 1-11 based on the following prior art references:
`
`• U.S. Patent No. 2,397,655 to Francis (the “Francis patent”) (Exhibit 1003).
`
`• U.S. Patent No. 1,239,373 to Farmer et al. (the “Farmer patent”) (Exhibit
`
`1004).
`
`• U.S. Patent No. 3,640,465 to Hicks (the “Hicks patent”) (Exhibit 1005).
`
`• U.S. Patent No. 5,658,092 to Sweers (the “Sweers patent”) (Exhibit 1006).
`
`
`
`The statutory grounds for the challenge of each claim are set forth below.
`
`Ground 35 U.S.C. Claims
`
`References
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`103(a)
`
`1-11
`
`Francis patent
`
`103(a)
`
`8-9
`
`Francis patent and the Sweers patent
`
`103(a)
`
`1-11
`
`Farmer patent
`
`103(a)
`
`9
`
`Farmer patent and the Hicks patent
`
`103(a)
`
`1-11
`
`Francis patent and the Farmer patent
`
`103(a)
`
`8-9
`
`Francis patent, Farmer patent and Sweers patent
`
`
`
`Below is a discussion of why the challenged claims of the ’195 patent are
`
`unpatentable under the statutory grounds raised, including claim charts specifying
`
`where each element of a challenged claim is met by the prior art. 37 C.F.R.
`
`§ 42.104(b)(4). The showing in these sections establishes a reasonable likelihood
`
`of prevailing as to each ground of invalidity with respect to the challenged claims
`
`10
`
`

`
`
`
`as to that ground. This showing is supported by the Declaration of James B.
`
`Goddard (“Goddard Decl.”) (Exhibit 1007).
`
`VI. Scope and Content of the Prior Art
`As described in detail in Section VIII below, the following prior art
`
`references teach, either alone or in combination, all of the elements of the
`
`challenged claims of the ’195 patent.
`
`A. The Francis Patent (Exhibit 1003)
`The Francis patent issued on November 30, 1943, before the November 17,
`
`2006 earliest possible priority date claimed by the ’195 patent, and thus is prior art
`
`under 35 U.S.C. § 102(b). The Francis patent was cited during original
`
`prosecution of the ’195 patent, but nevertheless teaches features of claims 1-11 of
`
`the ’195 patent.
`
`
`
`The following table shows Figure 4 of the Francis patent alongside Figure 2
`
`of the ’195 patent.
`
`’195 patent, Figure 2
`
`
`Francis patent, Figure 4
`
`
`
`
`
`11
`
`

`
`
`
`The Farmer Patent (Exhibit 1004)
`
`B.
`The Farmer patent issued on September 4, 1917, before the November 17,
`
`2006 earliest possible priority date claimed by the ’195 patent, and thus is prior art
`
`under 35 U.S.C. § 102(b). The Farmer patent was cited during original prosecution
`
`of the ’195 patent, confirming the relevancy of the Farmer patent to the claimed
`
`subject matter. The Farmer patent explicitly teaches features that the Examiner
`
`determined to be lacking in the prior art references cited during original
`
`prosecution of the ’195 patent. See Ex. 1002, at p. 37 (Notice of Allowability
`
`stating as reasons for allowance that the “prior art did not teach or suggest a
`
`drainage attachment as claimed by the applicant, specifically a drainage attachment
`
`comprising an inlet end including an intake opening, the intake opening
`
`comprising an inlet width, the intake opening including an inlet center point
`
`defining a longitudinal axis; wherein 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; wherein at least a portion of the outlet opening top portion is positioned below
`
`the first plane; and 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…”).
`
`12
`
`

`
`The Farmer patent describes and depicts, at Figures 6 and 7, a drainage
`
`
`
`
`
`attachment having each and every feature the Examiner identified as not taught or
`
`suggested by the prior art. See Farmer patent, at 2:64-68; Figs 6-7. The following
`
`table shows Figure 7 of the Farmer patent alongside Figure 7 of the ’195 patent.
`
`’195 patent, Figure 7
`
`
`
`Farmer patent, Figure 7
`
`
`
`
`
`
`C. The Hicks Patent (Exhibit 1005)
`The Hicks patent issued on February 8, 1972, before the November 17, 2006
`
`earliest possible priority date claimed by the ’195 patent, and thus is prior art under
`
`35 U.S.C. § 102(b). The Hicks patent was not cited during original prosecution of
`
`the ’195 patent and explicitly teaches features of claim 9 of the ’195 patent.
`
`
`
`The Hicks patent describes and depicts at Figures 1-2 a hose system 14 that
`
`includes a male coupling portion 21 with a tapered groove 33 and slots that
`
`interface with a female releasable coupling portion 13. Hicks patent, at Figs. 1-2.
`
`D. The Sweers Patent (Exhibit 1006)
`The Sweers patent issued on August 19, 1997, before the November 17,
`
`2006 earliest possible priority date claimed by the ’195 patent, and thus is prior art
`
`13
`
`

`
`
`
`under 35 U.S.C. § 102(b). The Sweers patent was cited during original prosecution
`
`of the ’195 patent, but explicitly teaches features of claims 8-9 of the ’195 patent.
`
`
`
`The Sweers patent describes and depicts a downspout extension assembly
`
`with an extension 20 that attaches to another extension using slots positioned on an
`
`interior surface of the extension 20. Sweers patent, at Fig. 1; 4:34-56.
`
`VII. Level of Ordinary Skill in the Art
`One of ordinary skill in the art as of November 17, 2006 would have had at
`
`least five years of design and development experience in the field of attachments
`
`for emitting water from a water source. Goddard Decl. ¶¶ 38-39.
`
`VIII. Full Statement of the Reasons for the Relief Requested
`A. Ground 1: Obviousness of Claims 1-11 in View of the Francis
`Patent and Knowledge of a Person of Ordinary Skill in the Art
`
`Under Patent Owner’s construction of the term “top portion” in its Proposed
`
`Claim Constructions in the related litigation (Exhibit 1101, at p. 2) and as set forth
`
`above in Section IV, claims 1-11 should be cancelled as obvious in view of the
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`Francis patent (Exhibit 1003). Set forth below is a claim chart that specifies where
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`each element of claims 1-11 is met or rendered obvious by the Francis patent when
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`applying Patent Owner’s construction.3
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`With respect to claim 1, as described above in Section VI.A, the Francis
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`patent describes a drainage attachment including, among other things: an inlet end
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`3 The claim chart below is annotated in red, green and yellow by Petitioner.
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`with an intake opening having a width and a center point defining a longitudinal
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`axis; an outlet end having a top portion, a bottom portion, first and second side
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`portions, and an outlet opening having an outlet width; a transitional section
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`between the inlet end and the outlet end that increases in width and decreases in
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`height towards the outlet end; and an outlet opening having a width that is greater
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`than a width of the inlet opening to disperse water flowing through the attachment
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`and out of the outlet opening. Francis patent, at Figs. 2-4; Goddard Decl. ¶¶ 51-58.
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`Moreover, under Patent Owner’s proposed construction of the term “top
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`portion” as meaning “the space defined above the second plane and by at least a
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`part of the walls above the second plane” (see Exhibit 1011, at p. 2 and Section IV
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`above), the illustrated embodiment of the Francis patent has an outlet opening top
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`portion positioned below a first plane, where the longitudinal axis extends in the
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`first plane and where the first plane is parallel to a second plane located between
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`the top and bottom portions and that bisects the first and second side portions of
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`the outlet end. Francis patent, at Fig. 2; Goddard Decl. ¶ 55.
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`To the extent Patent Owner changes its construction of the term “top
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`portion” or its construction is not adopted (for example, if Petitioner’s proposed
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`construction is adopted), it would have been obvious to one of ordinary skill in the
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`art as of at least November 17, 2006 to modify the illustrated embodiment of the
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`Francis patent in view of the teachings of the Francis patent so the outlet opening
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`top portion is positioned below a first plane, where the longitudinal axis extends in
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`the first plane and where the first plane is parallel to a second plane located
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`between the top and bottom portions and that bisects the first and second side
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`portions of the outlet end. Goddard Decl. ¶¶ 56-62.
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`In particular, the Francis patent explicitly provides that the “height of the
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`discharge end [of the outlet end 7] is considerably less than” the height of the
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`intake opening. Francis patent, at 2:19-25 (emphasis added). As a result, it would
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`have been obvious to person of ordinary skill in the art as of at least November 17,
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`2006 that the height of the discharge end of the outlet end, and thereby the outlet
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`opening top portion, could vary, and in particular, be less than that depicted in the
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`embodiment of Figures 1-4. Goddard Decl. ¶ 57. Indeed, the Francis patent
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`discloses that the “rectangular outlet end” need only be “so proportioned that it has
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`substantially the same area as the inlet end....” Francis patent, at 1:42-49. A
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`person of ordinary skill in the art as of at least November 17, 2006 would
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`recognize that rectangles of various shapes (e.g., lesser height and greater width),
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`but overall similar surface areas, could thus be utilized at the “rectangular outlet
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`end.” Goddard Decl. ¶ 58.
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`Moreover, one of ordinary skill in the art as of at least November 17, 2006
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`would have been motivated to decrease the height of the outlet end 7 of the fitting
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`of the Francis patent in view of the express teaching of the Francis patent that it is
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`desirable to have a discharge end with less height so that the material of the curb in
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`which the fitting is used is thicker so that a “high degree of strength of the curb
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`structure is maintained and there is less likelihood of injury or damage thereto.”
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`Francis patent, at 2:20-26; Goddard Decl. ¶¶ 59-60. This is particularly the case
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`where “[a] person of ordinary skill is also a person of ordinary creativity, not an
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`automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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`To maintain the structural integrity of the curb structure, it would have been
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`obvious to a person of ordinary skill in the art as of at least November 17, 2006 to
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`reduce the height of the outlet end 7 to a point where the outlet opening top portion
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`is positioned below a first plane under either construction, where the longitudinal
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`axis of a center point of the inlet extends in the first plane and where the first plane
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`is parallel to a second plane located between the top and bottom portions and that
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`bisects the first and second side portions of the outlet end. Goddard Decl. ¶ 60.
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`To compensate for the reduced height, a person of ordinary skill in the art as
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`of at least November 17, 2006 would have known to make a corresponding
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`increase in the width of the outlet opening 6 to better disperse and spread the flow
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`of water at the outlet end, especially in view of the teachings of the Francis patent
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`that (1) “[t]he size of the rectangular outlet end is so proportioned that it has
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`substantially the same area as the inlet end 6 and thus the flow capacity of the
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`fitting is uniform from end to end” and (2) “…the height of the fitting at the point
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`where it passes through the gutter curb is decreased and its width increased so that
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`while maintaining an area of adequate size, no weak spot is produced in the curb
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`structure at the point of passage of the outlet fitting and the strength and durability
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`of the curb is not, therefore, impaired.” Francis patent, at 1:7-14, 1:45-49;
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`Goddard Decl. ¶ 61.
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`Moreover, a drainage attachment placed through a structure such as a curb,
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`as taught in the Francis patent, would benefit from an outlet with a lower height
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`and greater width to spread the water flow over a wider area and horizontally
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`spread the stresses associated with the water flow. Goddard Decl. ¶ 62.
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`Horizontally spreading the stresses of the water flow results in the flow not being
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`concentrated at any given area. Goddard Decl. ¶ 62. Spreading the load placed on
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`any structure, including a drainage structure, is a major design consideration.
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`Goddard Decl. ¶ 62. Thus, one of ordinary skill in the art as of at least November
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`17, 2006 would have recognized the benefits of widening the outlet (and in turn
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`reducing the height so as to maintain the same area as the inlet as taught by the
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`Francis patent) of the fitting of the Francis patent to better spread the water flow.
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`Goddard Decl. ¶ 62.
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`As set forth above in Section IV, the claim language starting with “thereby
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`reducing” is not entitled to patentable weight. In the event this clause is deemed to
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`be limiting, however, it is inherent that the device of the Francis patent would
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`reduce the effects of erosion adjacent the outlet opening because, as set forth in the
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`claim chart below, the Francis patent has the structure claimed to achieve t