Trials@uspto.gov
`Tel: 571-272-7822
`
`.
`
`Paper 13
`Entered: November20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLD SERVICES,LLC,
`Petitioner,
`
`Vv.
`
`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.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`I.
`
`INTRODUCTION
`
`BLDServices, LLC (“BLD”) filed a petition to institute an inter partes review
`of claims 1-37 (Paper 2; “Pet.”) of U.S. Patent No. 8,667,991 B2 (Ex. 1001; “the
`°991 patent”). LMK Technologies, LLC (““LMK”) filed a Patent Owner
`
`Preliminary Response. Paper7 (Prelim. Resp.”).
`Wehave jurisdiction under 35 U.S.C. § 314. The standard for instituting an
`
`inter partes review is set forth in 35 U.S.C. § 314(a), whichstates that an inter
`
`partes review may notbeinstituted unless “the information presented in the
`
`[Petition and Preliminary Response] showsthat there is a reasonable likelihood
`
`that the petitioner would prevail with respectto at least 1 of the claimschallenged
`in the petition.” Upon consideration of the above-mentioned Petition and
`Preliminary Response, we conclude that BLD hasestablishedthat there is a
`reasonablelikelihood that it would prevail with respectto at least oneof the
`challenged claims. Weinstitute an inter partes review as to claims 1 and 5-37 of |
`the °991 patent, but deny the Petition as to claims 2, 3, and 4.
`
`A. The ’991 patent (Ex. 1001)
`
`The 991 patent discloses devices and methodsfor repairing the juncture
`
`between a main pipeline anda lateral pipeline in underground sewerpipe.
`
`Ex. 1001, Abstract, 1:64-2:26. The disclosed devices include liner tube assemblies
`that fit the juncture between a mainpipeline anda lateral pipe line and a
`hydrophilic gasket or band that seals against entry of ground waterat the juncture
`
`between the pipe lines. Jd. at 2:9-26. Figure 1 of the 991 patent is provided
`below.
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`aA
`
`
`
`Figure | is a perspective view of repair assembly 10 for repairinga lateral
`
`pipe line and a main pipeline. ./d. at 3:6-7. Repair assembly 10 includes launcher
`device 12 havingmountedthereto liner assembly 14. Jd. at 3:29-61. Mainliner
`tube 38 is comprised of whatis initially a flat sheet of material that is wrapped
`around the outside of the main bladder tube and launcher device 12. Jd. Main
`liner tube 38 includes overlapping edges 42, 44. Jd.
`In order to prevent seepage of
`ground water, gasket 56 is positioned about a portion of liner assembly 14.
`/d.
`
`Repair assembly 10 also houses bladder tube assembly 16 (not shown in
`
`Figure 1). Jd. Bladder tube assembly 16 is shownin Figure 2, provided below.
`
`

`

`IPR2014-00770
`‘Patent 8,667,991 B2
`
`
`
`Aipd
`
`Figure 2 is a sectional view ofrepair assembly 10 placedat the juncture of
`main pipe line 50 andlateral pipe line 52 in order to repair damaged portion 54.
`
`Id. at 3:8-9. Bladder tube assembly 16 includes main bladder tube 34 andlateral
`
`' bladder tube 36. Bladder tube assemblyis fitted on the interior ofthe liner
`
`assembly 14, which includes main liner tube 38 andlateral liner tube 40. Lateral
`
`bladder tube 36 andlateral liner tube 40 are contained within launcher device
`
`cavity 48. Id. at 3:47-62.
`
`Figure 2 also providesa sectional view of gasket 56. Gasket 56 includes
`
`tubular portion 60 extending within lateral liner tube 40, and flange portion 58
`
`extending outwardly aboutthe periphery of one end of tubular portion 60. Jd. at
`
`4:1-54. Flange portion 58 of gasket 56 is attached to main liner tube 38 around the
`
`juncture between main liner tube 38 andlateral liner tube 40. Jd. Gasket 56 may
`
`be made of a hydrophilicmaterial capable of swelling in response to being exposed
`
`to water or other liquid, thereby creating a seal. Jd. at 4:49—-54.
`
`Figure 3 of the 991 patent is provided below.
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`4
`
`
`
`Figure 3 showsrepair assembly 10 in the inflated position. Jd. at 3:10—11.
`Lateralbladder tube36 andlateral liner tube 40 are launched outwardly into lateral
`pipe line 52 by increasing the air pressure in launcher device cavity 48. Jd. at
`
`4:29-48. Gasket 56 is positioned between main liner tube assembly 14 and the
`
`interior walls of main pipe line 50 and betweenlateral liner tube assembly 16 and
`
`the interior walls of lateral pipe line 52. Jd.
`
`Figure 5 of the 991 patent is provided below.
`
`Figure 5 showsan alternative embodimentof the device disclosed in the
`
`°991 patent. Gasket 56 is replaced with a band positioned on mainliner tube 38.
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`Id. at 5:18-46. The band extends around the juncture between mainliner tube 38
`
`andlateral liner tube 40. Jd. The band may be madeof a hydrophilic material and
`
`swells in response to being exposed to water or other liquid. Jd. Uponexposure to
`
`liquid, the band expandsin a radial direction to effectively seal the area between
`the liner assembly andthe juncture between main pipe line 50 andlateral pipe line
`52. Id.
`
`B. Illustrative Claims
`
`Independentclaims 1, 11, 17, 23, and 31 areillustrative of the challenged
`
`claims, and are reproduced below (emphases added):
`
`1. An apparatus for repairing a main pipe line andalateral pipe
`line connected thereto and in communication therewith to form a pipe
`joint, comprising:
`a bladder assembly comprising a main bladdertube anda lateral
`bladder tube extending from the main bladder tube;
`least
`a liner assembly comprising a main liner member at
`partially surrounding the main bladder tube andalateral liner tube
`extending from the main liner member;
`the lateral liner tube and lateral bladder tube extendableto 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 andthe lateral
`liner member between the main liner member andthe pipe joint, the
`gasket capable of swelling in reaction to contact with a liquid.
`
`11. An apparatus for repairing a main pipe line andalateral
`pipe line connected thereto and in communication therewith to form a
`pipe joint, comprising:
`a bladder assembly comprising a main bladder tube anda lateral
`bladder tube extending from the main bladdertube;
`a liner assembly comprising a main liner memberat least
`partially surrounding the main bladder tube andalateral liner tube
`extending from the main liner member;
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`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.
`
`17. A method of repairing a main pipe line andalateral 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
`liner tube in communication with one another at a liner
`lateral
`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 aroundthe lateral liner tube at the linerjuncture,
`expanding the bladder assembly to position the lateral
`liner tube
`against the lateral pipe line and the main liner memberagainst the
`main pipe line, with the band of hydrophilic paste between the main
`liner memberand the main pipeline 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 memberand a
`liner tube in communication with one another ata liner
`lateral
`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 ofthe linerjuncture; and
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`expanding the bladder assemblyto position the lateral liner tube
`against the lateral pipe line and the main liner member against the
`main pipeline;
`wherein the hydrophilic paste is between the main liner member
`and the main pipe.
`
`31. An apparatus for repairing a main pipe line anda lateral
`pipe line connected thereto and in communication therewith to form a
`pipe joint, comprising:
`a bladder assembly comprising a main bladdertube anda lateral
`bladder tube extending from the main bladder tube;
`a liner assembly comprising a main liner memberatleast partially
`surrounding the main bladder tube andalateral liner tube extending
`from the main liner member and in communication with the main
`liner memberata 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 andthe 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 lateralpipeline.
`
`Claims 2~10 dependdirectly 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 dependdirectly or indirectly from claim
`
`23. Claims 32-37 dependdirectly or indirectly from claim 31.
`
`C. The Prior Art and Supporting Evidence
`
`Petitioner relies on the followingpriorart:
`
`U.S. Patent No. 6,994,118 to Kiest et al.,
`(“Kiest 118”) (Ex. 1002).
`
`issued February 7, 2006
`
`U.S. Patent No. 5,765,597 to Kiest et al., issued June 16, 1998 (“Kiest
`‘597”) (Ex. 1003).
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`Installation Instructions, SWELLSEAL® WA,De Neef Construction
`Chemicals, Inc. (Rev. 3/2006) (“De Neef Instructions”) (Ex. 1004).
`“Swellseal® Hydrophilic Waterstop Solutions,” De Neef Construction
`. Chemicals, Inc., available at
`http://www.deneef.com/USA/index2.php?option=com docman&task=doc v
`iew&gid=547&Itemid=35 (“De Neef Brochure’) (Ex. 1005).
`Kempenaers, P., “The Pressure Resistance of SWELLSEAL Sealant WA,”
`De Neef Conhem (September5, 2005), available at:
`http://deneefusa.com/index.php/testing/doc_download/418-swellseal-wa-
`pressure-resistance. Ex. 1005 (“Kempenaers”).
`US. Patent No. 5,794,663 to Kiest et al., issued August 18, 1998 (“Kiest
`663”) (Ex. 1007).
`BLDfurtherrelies on declarations from Christopher W. Adams(Ex. 1008).
`
`D. The Asserted Grounds
`
`BLDchallenges claims 1-37 of the ’991 patent on the following grounds.
`
`Pet. 9-59.
`
`
` References:
`
`
`.
`Kiest ’118, Kiest 597,
`De Neef Instructions, De Neef
`Brochure
`Kiest °118, Kiest ’597,
`De NeefInstructions, Kiest °663
`Kiest 7118, Kiest °597,
`De NeefInstructions, De Neef
`Brochure, Kempenaers
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`| Claims Challenged
`
`1, 5—26, 28, 30-35, 37
`
`27, 29, 36
`
`
`
`
`
`
`Il. ANALYSIS
`
`A. Claim Interpretation
`
`Weinterpret claims using the “broadest reasonable constructionin light of
`
`the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b);
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14,
`
`2012). Under the broadest reasonable construction standard, claim terms are given
`
`their ordinary and customary meaning, as would be understood by oneofordinary
`
`skill in the art at the time of the invention. Jn re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). “Absent claim language carrying a narrow meaning,
`the PTO shouldonly limit the claim based on the specification .
`.
`. when[it]
`
`expressly disclaim[s] the broaderdefinition.” Jn re Bigio, 381 F.3d 1320, 1325
`
`(Fed Cir. 2004). “Although an inventoris indeed free to define the specific terms
`used to describe his or her invention, this must be done with reasonable clarity,
`deliberateness, and precision.” Jn re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Noneofthe claim terms require explicit construction at this time. Pet. 8;
`
`Prelim. Resp. 20-21.
`
`B. LMK’s Objections to De NeefInstructions, De NeefBrochure, and Kempenaers
`
`BLDrelies on De NeefInstructions, De Neef Brochure, and Kempenaersfor
`the disclosure of the SWELLSEAL™WAproduct, which is expressly disclosed as
`a hydrophilic material in paste form comparable to the SWELLSEAL™product
`.
`
`disclosed in Kiest °118. Pet. 10 and 40-42. LMKargues that BLDfails to make a
`
`threshold showing that De NeefInstructions, De Neef Brochure, and Kempenaers
`
`constitute prior art printed publications and are-therefore not properly relied upon
`
`by BLD forthe purposes of showing obviousness. Prelim. Resp. 6-13. On this
`
`basis, LMK argues that BLD hasnotsatisfied its burden of showing a reasonable
`
`likelihood of prevailing with respect to any challenged claim of the ’991 patent.
`
`Id.
`
`,
`
`The determination of whether a given reference qualifies as a prior art
`
`“printed publication” involves a case-by-case inquiry into the facts and
`
`10
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`circumstances surrounding the reference’s disclosure to membersof the public. Jn
`
`re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004), We acknowledge LMK’s
`objection to De Neef Instructions, De Neef Brochure, and Kempenaers, however,
`
`both De NeefInstructions and Kempenaersare dated product materials. De Neef
`
`Instructions, for example, is dated with a revision date of 3/2006 and entitled
`“Installation Instructions,” thereby suggesting that these materials may have been
`made available with sold product. Kempenaersis dated “09/05/2005.” Ex. 1006,
`
`3. De Neef Brochure does not contain a date, however, BLD provides evidence in
`
`the form of a declaration from Christopher W. Adamssuggesting that the
`
`document wasavailable on the internet by January 1, 2007.
`Onthis record,' we are persuaded that BLD has made a threshold showing
`
`that De Neef Instructions, De Neef Brochure, and Kempenaersare a “printed
`publications.” Accordingly, we consider the disclosures of De NeefInstructions,
`De Neef Brochure, and Kempenaers for the purposesof this decision.
`
`'To the extent that LMK objects to this evidence,it will have the opportunity to
`enter their objections to evidence submitted after trial is instituted. Whena party
`objects to evidence that was submitted during a preliminary proceeding, such an
`objection must be served within ten business daysofthe institution oftrial. 37
`CFR § 42.64(b)(1). The objection to the evidence must identify the grounds for
`the objection with sufficient particularity to allow correction in the form of
`supplemental evidence. Jd. This process allows the party relying on the evidence
`to which an objection is timely served, the opportunity to correct, by serving
`supplemental evidence within so many daysofthe service ofthe objection. The
`Board strongly encouragesthe parties to resolve evidentiary objections among
`themselves, particularly with respect to objections as to authenticity.
`If, however,
`upon receiving any supplemental evidence, the opposing party is still of the
`opinion that the evidence is inadmissible, the opposing party may file a motion to
`exclude such evidence. 37 CFR § 42.64(c). The timeforfiling a motion to
`exclude is typically several monthsintoatrial. See, e.g., 77 Fed. Reg. at 48,765,
`regarding Scheduling Order and Appendix A — Due Date 4.
`
`11
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`C. Asserted Grounds of Unpatentability
`
`1. Summary ofthe Cited References
`
`a. Summary ofKiest 118 (Ex. 1002)
`
`Kiest ’118 discloses a device using hydrophilic seals for repairing damage
`
`that occurs at the junction betweenthelateral pipe line and the main pipeline of
`
`sewer pipe. Ex. 2002 1:6—15. Figure 2 of Kiest ’118 is provided below.
`
`
`
`fig
`
`The device of Kiest ’118 comprises bladder assembly 16 having main
`
`bladder tube 34 andlateral bladder tube 36. Jd. at 4:37-65. Liner assembly 14
`
`comprises main liner tube 38 andlateral liner tube 40. Jd. Main liner tube 38
`comprises aninitially flat material wrapped around the outside of carrier tube 12
`having overlapping edges 42, 44. Jd. Lateral liner tube 40 is contained within the
`
`carrier tube cavity 48. Jd. Lateral bladder tube 36 is contained within cavity 48 of
`carrier tube 12 and surroundslateralliner tube 40. Jd. Mainliner tube 38 and
`
`lateral liner tube 40 both are comprisedof a felt layer and a polymerlayer. Jd. at
`
`4:59-61.
`
`12
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`The device of Kiest ’118 further includes hydrophilic seals or bands 56, 58,
`60 to prevent seepage ofground waterinto the interior ofmain and lateral pipe
`lines 50, 52 through damaged portion 54. Jd. at 4:46-58. Hydrophilic seals 56, 58
`are wrapped around mainliner tube 38 so as to hold main liner tube 38 in a tube
`like configuration around the outside ofcarrier tube 12. Id. Hydrophilic seal 60
`maybe optionally placed within the interioroflateral 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 SWELLSEAL®. Id. at 5:28-34.
`
`b. Summary ofKiest ’597 (Ex. 1003) and Kiest ’663 (Ex. 1007)’
`
`Kiest °597 discloses devices and methodsfor repairing damaged sewerpipe
`at a T-joint junction of a main pipeandlateral pipe. Ex. 1003, Abstract, 1:9-21,
`
`ov
`
`9:20-11:49. Figure 19 of Kiest ’597 is reproduced below.
`
`
`
`* Kiest 663 is a divisional application of Kiest 597 and the disclosures of
`the two referencesare, in relevantpart, substantially identical. For the purposes of
`this summary, references are made to Kiest ’597.
`
`13
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`Figure 19 provides a sectional view of T-liner assembly 182 for use in a
`
`methodfor repairing a main lateral sewer pipe junction. Jd. at 6:5—7. T-liner
`assembly 182 is formed by cutting a circular hole in main liner sleeve 184 to
`accommodatelateral liner sleeve 186. Id. at 10:64 to 11:42. Lateralliner sleeve
`
`186 is inserted into the circular hole of main liner sleeve 184 and the two sleeves
`
`are held together with the use of tabs 188 cutinto lateral liner sleeve 186. Jd.
`
`Urethanecollar 190 is then slid downoverlateral liner sleeve 186 and is fused to
`
`_
`the coating on lateral liner sleeve 186 and mainliner sleeve 184 by heat or
`chemical adhesive.
`/d. Urethane collar 190 providesan airtight seal between the
`two liners 184, 186.
`|
`Gasket 192, in the shape of a donut, is then slid down overlateral liner
`
`sleeve 186 until it reaches the junction betweenlateral liner sleeve 186 and main
`liner sleeve 184. Jd. Gasket 192 provides a seal between the liner sleeves and the
`main pipe, thereby forming a seal against groundwater. Jd. Gasket 192 is made of
`
`absorbent material, such as an opencell foam impregnated with an uncured grout.
`Id. at 11:28-42, 4:6-23. Kiest °597 also discloses the gasket “positioned at the
`juncture betweenthe lateral sewer pipe and the main line sewerpipe.” Jd. at 4:18—
`
`22.
`
`In another embodiment, the gasket is positioned so thatit is in contact with the
`
`juncture and the area to be repaired. Jd. at 9:43-44.
`
`c. Summary ofDe NeefInstructions
`
`De NeefInstructions contains product information about the product referred
`
`to as SWELLSEAL® WA. SWELLSEAL® WAisdescribed in De Neef as a
`
`paste “for sealing smooth to very irregular construction joints and pipe
`penetrations” and is supplied in cartridge or sausage. Ex. 1004.
`
`14
`
`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`d. Summary ofDe NeefBrochure
`
`De Neef Brochure contains product information about various
`
`SWELLSEAL®products, including SWELLSEAL® WA,whichis described in
`
`DeNeef Brochure as a gunnable paste. Ex. 1005, 4.
`
`e. Summary ofKempenaers (Ex. 1006)
`
`Kempenaers summarizes an experimentto test the pressure resistance of
`
`SWELLSEAL® WA. Ex. 1006.
`
`2. Obviousness ofClaims 1, 5—26, 28, 30-35, and 37 Over the Combination
`ofKiest ’118, Kiest ’597, De NeefInstructions, and De NeefBrochure .
`“Section 103 [of 35 U.S.C.] forbids issuance of a patent when ‘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 obviousat the time the
`invention was madeto a person having ordinary skill in the art to which said
`
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`“The test for obviousness is not whetherthe features of a secondary reference may
`be bodily incorporated into the structure of the primary reference. ... Rather, the
`
`test is what the combinedteachings ofthe references would have suggested to
`
`those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981)
`(citations omitted).
`,
`
`In support ofits assertion that the combination of Kiest ’118, Kiest °597, De
`
`NeefInstructions, and De Neef Brochurerenders claims 1, 5—26, 28, 30-35, and
`
`37 obvious, BLD sets forth the foregoing teachings of Kiest ’118, Kiest °597, De
`
`NeefInstructions, and De Neef Brochure and provides a detailed claim chart
`explaining how each claim limitation is disclosed in the combination of references.
`Pet. 9-36 and 42-57. Upon review ofthe information presentedin the Petition and
`
`,
`
`15
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`

`IPR2014-00770
`Patent 8,667,991 B2
`
`Preliminary Response, we have determined that BLD has demonstrated a
`
`reasonable likelihood that it would prevail in showing that claims 1] and 5—37 of
`
`the ’991 patent would have been obvious over the combination of Kiest ’118 and
`
`Kiest ?597, but are not persuaded as to claims 2, 3, and 4. Our reasoning follows.
`
`a. Analysis
`
`(1) Claims 1 and 5-7
`
`Claims 1 and 5-7 are directed to an apparatus for repairing the pipe joint
`
`between a main pipeline anda lateral pipe line that includes a hydrophilic rubber
`
`“gasket positioned at least partially surrounding the main liner memberand the
`
`lateral liner member between the main liner memberandthepipe joint, the gasket
`capable of swelling in reaction to contact with a liquid.”
`|
`BLD combinesthe teachings of Kiest ’118, Kiest °597, De Neef
`
`Instructions, and De Neef Brochure, summarized above, to meet the gasket
`elementsof claims 1 and 5-7. Specifically, BLD contends that Kiest 7118
`discloses a hydrophilic bandthatis “wrapped around the mainliner tube” and
`“surroundingthelateral liner tube.” BLD combinesthis teaching and contendsthat
`
`Kiest ’597 discloses a gasket “positioned at the juncture between the lateral sewer
`
`pipe and the main line sewerpipe.” Jd. at 14 (citing Ex. 1002 at 4:53-54 and 3:36-
`
`38; Ex. 1003 at 4:18-22). BLD reasonsthat “it would have been obviousto one of
`
`_
`ordinary skill in the art at the time of the invention to place the band or seal of
`Kiest ’118 at the position disclosed in Kiest ’°597 to improvesealing properties and
`reduce damage caused by water infiltration.” Jd. at 14. BLD further contends De
`Neef Brochure discloses that SWELLSEALis used to “create a compressionseal.”
`
`Ex. 1005, 2.
`
`16
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`

`

`IPR2014-00770
`Patent 8,667,991 B2
`
`At this stage of the proceeding and based onthe present record, we are
`persuaded that the combination of Kiest ?118, Kiest °597, De NeefInstructions,
`
`and De Neef Brochure suggests that placement of hydrophilic bandsat the liner
`
`juncture wasa predictable variation within the technical grasp of a person of
`
`ordinary skill in the art. KSR, 550 U.S. at 416 (“Ifa person of ordinary skill in the
`
`art can implementa predictable variation, and would see the benefit of doing so, §
`103 likely bars its patentability.”). We are persuaded that upon placement of the
`bands of Kiest ’118 at the juncture, the limitation of a hydrophilic bandatleast
`partially surroundingthe main liner memberandthelateral liner member between
`the main liner member andthepipejointis likely met.
`|
`In view of the above, we conclude that BLD haspresented sufficient
`information to show a reasonablelikelihoodthat it would prevail in showingthat
`claims 1 and 5-7 of the ’991 patent would have been obvious over the combination
`
`of Kiest’118, Kiest °597, De Neef Instructions, and De Neef Brochure.
`
`(2) Claims 11-16
`
`Claims 11-16 are directed to an apparatus for repairing the pipe joint
`
`between a mainpipeline anda lateral pipe line that includes “‘a band of
`
`hydrophilic paste disposed on the main liner memberaroundthelateralliner
`
`member and between the main liner memberand the main pipelineat the pipe
`
`joint.”
`
`BLD combinesthe teachings of Kiest ’118, Kiest 597, De Neef
`
`Instructions, and De Neef Brochure, summarized above, to meet the hydrophilic
`paste elements of claims 11-16. Pet. 17-22 and 46-49. Specifically, BLD
`contendsthat Kiest ’118 discloses a hydrophilic bandthat is “wrapped around the
`
`mainliner tube,” “positioned between the main liner tube and the main pipeline,”
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`IPR2014-00770
`Patent8,667,991 B2
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`and “surround[ing] the lateral liner tube.” /d. at 19 (citing Ex. 1002 at 5:28-33,
`
`3:16-20, 2:60-63, and 3:36-38). BLD also notes that Kiest ’597 discloses a gasket
`
`“positioned so that it is in contact with the juncture .
`
`.
`
`. between the lateral sewer
`
`pipe and main line sewerpipe.” /d. at 20 (citing Ex. 1003 at 4:19-22 and 9:42—
`44). BLD relies on De NeefInstructions and De Neef Brochure to show that the
`SWELLSEAL™product, a hydrophilic material disclose in Kiest 118, exists in
`
`/d. at 20. BLD reasonsthat “it would have been obvious to one of
`paste form.
`ordinary skill in the art at the time of the invention to position the band ofKiest
`
`°118 at the location disclosed in Kiest ’597 to improve sealing properties at a weak
`point in the pipe system.” /d. at 14.
`|
`Atthis stage of the proceeding and based onthe present record, weare
`persuadedthat the combination of Kiest’1 18, Kiest °597, De Neef Instructions,
`and De Neef Brochure suggests that the placement of hydrophilic bandsat the liner
`juncture wasa predictable variation within the technical grasp of a person of
`
`ordinary skill in the art. Once positioned at the juncture, the limitation of a
`hydrophilic band would be disposed on the main liner member aroundthelateral
`liner member and betweenthe main liner memberand the main pipeline at the
`
`pipe joint is likely met. Accordingly, we conclude that BLD has presented
`sufficient information to show a reasonablelikelihood that it would prevail in
`
`showing that claims 11-16 of the ’991 patent would have been obviousoverthe
`
`combination of Kiest’118, Kiest °597, De Neef Instructions, and De Neef
`
`Brochure.
`
`18
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`Patent 8,667,991 B2
`
`(3) Claims 17-22
`
`Claims 17-22 are directed to a method for repairing a pipe joint between a
`
`main pipeline andlateral pipe line that includes “applying a hydrophilic paste to
`
`the liner assembly and aroundat least a portion of the liner juncture.”
`
`BLD combinesthe teachingsof Kiest ’118, Kiest °597, De Neef
`
`Instructions, and De Neef Brochure, summarized above, to meet the hydrophilic
`
`paste elements of claims 17—22. Pet. 22-27 and 49-52. Specifically, BLD
`
`contends that Kiest ’118 discloses a hydrophilic bandthat “surrounds the main
`
`liner tube” and “surroundsthelateral liner tube.” Jd. at 23 (citing Ex. 1002 at
`
`5:28-33 and 2:60-3:2). BLDalso notes that Kiest °597 discloses a gasket
`
`“positioned so that it is in contact with the juncture...between the lateral sewer
`
`pipe and main line sewerpipe.” Jd. at 24 (citing Ex. 1003 at 4:19-22 and 9:42-
`
`44). BLD relies on De Neef Instructions and De Neef Brochure to showthat the
`SWELLSEAL™product, a hydrophilic material disclose in Kiest ’118, exists in
`paste form. Id. at 24. BLD reasonsthat “it would have been obviousto one of
`ordinary skill in the art at the time of the invention to position the band of Kiest
`’118 at the location disclosed in Kiest 597 to improve sealing properties at a weak
`point in the pipe system.” Id.
`Atthis stage of the proceeding and based onthe present record, weare
`
`persuaded the combination of Kiest ’118, Kiest °597, De Neef Instructions, and De
`
`Neef Brochure suggests that applying a band of hydrophilic paste on the outside of
`
`the main liner member and aroundthelateralliner tube at the liner juncture was a
`
`predictable variation within the technical grasp of a person of ordinary skill in the
`art. Accordingly, we conclude that BLDhaspresented sufficient information to
`
`show a reasonable likelihood that it would prevail in showingthat claims 17-22 of
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`IPR2014-00770
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`the 991 patent would have been obvious over the combination of Kiest’118, Kiest
`
`597, De Neef Instructions, and De Neef Brochure.
`
`(4) Claims 23-26, 28, and 30
`
`Claims 23-26, 28, and 30 are directed to a methodfor repairing a pipe joint
`
`between a main pipeline andlateral pipe line that includes “applying a band of
`
`hydrophilic paste on the outside of the main liner memberand aroundthelateral
`liner tube at the liner juncture.”
`|
`BLD combinesthe teachings of Kiest °118, Kiest °597, De Neef
`
`Instructions, and De Neef Brochure, summarized above, to meet the hydrophilic
`paste elements of claims 23-26, 28, and 30. Pet. 27-32 and 52-55. Specifically,
`BLDcontendsthat Kiest ’118 discloses a hydrophilic band that “surrounds the
`
`main liner tube” and is “made of a material which is hydrophilic” such as the
`SWELLSEAL™product. Jd. at 29 (citing Ex. 1002 at 5:28-33 and 2: 52-59).
`BLDalso notes that Kiest ’597 discloses a gasket “positionedso that it is in contact
`with the juncture...betweenthe lateral sewer pipe and main line sewerpipe.” Id. at
`29 (citing Ex. 1003 at 4:19-22 and 9:42-44). BLD relies on DeNeefInstructions
`and DeNeef Brochure to show that the SWELLSEAL™ product, a hydrophilic
`material disclose in Kiest ’118, exists in paste form. Jd. at 29. BLD reasonsthat
`
`‘it would have been obviousto oneofordinary skill in the art at the time of the
`
`invention to position the band of Kiest ’118 at the location disclosed in Kiest ’597
`
`to improve sealing properties at a weak point in the pipe system.” Jd.
`Atthis stage of the proceeding and based on the present record, we are
`persuaded that the combination of Kiest ’118, Kiest 597, De NeefInstructions,
`and De Neef Brochure suggests that applying a band of hydrophilic paste on the
`outside of the main liner memberand aroundthe lateral liner tube at the liner
`
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`IPR2014-00770
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`juncture wasa predictable variation within the technical grasp of a person of
`
`ordinary skill in the art. Accordingly, we conclude that BLD has presented
`sufficient information to show a reasonable likelihood that it would prevailin
`showingthat claims 23-26, 28, and 30 of the ’991 patent would have been obvious
`over the combination of Kiest ’118, Kiest °597, De Neef Instructions, and De Neef
`
`Brochure.
`
`(5) Claims 31-35 and 37
`
`Claims 31-35 and 37 are directed to an apparatus for repairing the pipe joint
`
`between a main pipeline anda lateral pipe line that includes “a hydrophilic paste
`
`disposed onthe liner assembly andat least partially around the liner juncture when
`the lateral liner tube is extendedinto the lateral pipeline.”
`BLD combinesthe teachings of Kiest ’118, Kiest °597, De Neef
`
`Instructions, and De Neef Brochure, summarized above, to meet the hydrophilic
`
`paste elements of claims 31-35 and 37. Pet. 32-36 and 55-57. Specifically, BLD
`contends that Kiest ‘118 discloses a hydrophilic band that is “circular...in the same
`fashion as rubber bands” and “made of a material which is hydrophilic”such as the
`SWELLSEAL™product. Jd. at 34 (citing Ex. 1002 at 5:28-33 and 2: 52-54).
`
`BLDalso notes that Kiest °597 discloses a gasket “positioned so thatit is in contact
`
`with the juncture...between the lateral sewer pipe and main line sewer pipe.” Jd. at
`
`29 (citing Ex. 1003 at 4:19-22 and 9:42-44). BLD relies on De NeefInstructions
`and De Neef Brochure to show that the SWELLSEAL™ product, a hydrophilic
`material disclose in Kiest °118, exists in paste form. Jd. BLD reasons that “it.
`‘would have been obvious to one of ordinary skill in the art at the time of the
`invention to position the band of Kiest ’118 at the location disclosed in Kiest ’597
`
`to improve sealing properties at a weak point in the pipe system.” Jd.
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`IPR2014-00770
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`At this stage of the proceedingand based onthe present record, we are
`persuadedthat the combination of Kiest ’118, Kiest °597, De Neef Instructions,
`and De Neef Brochure suggests that the placement of hydrophilic bandsat the liner
`juncture was a predictable variation within the technical grasp of a person of
`ordinary skill in the art. Once positioned at the juncture, the lim