BLD Services, LLCv.LMK Technologies, LLC

Patent Trial and Appeal Board

Nov 18, 2015

13714490 (P.T.A.B. Nov. 18, 2015)

Trials@uspto.gov Paper 39
Tel: 571-272-7822 Entered: November 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
BLD SERVICES, LLC,
Petitioner,

v.

LMK TECHNOLOGIES, LLC,
Patent Owner.
_______________

Case IPR2014-00772
Patent 8,667,992 B2
_______________

Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
and ZHENYU YANG, Administrative Patent Judges.

YANG, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
BLD Services, LLC (“BLD”) filed a Petition for an inter partes review
of claims 1–16 of U.S. Patent No. 8,667,992 B2 (Ex. 1001, “the ’992 patent”).
Paper 1 (“Pet.”). On November 20, 2014, the Board instituted trial to review
patentability of the challenged claims. Paper 13 (“Dec.”).
Thereafter, LMK Technologies, LLC (“Patent Owner”) filed a Patent
Owner Response (Paper 19 (“PO Resp.”)), relying on the Declarations of
Norman E. Kampbell (Ex. 2005) and Larry W. Kiest, Jr. (Ex. 2006). After
deposing Mr. Kampbell (Ex. 1010), Petitioner filed a Reply (Paper 27),
relying on the Declaration of David A. Fletcher (Ex. 1013). After deposing
Mr. Fletcher (Ex. 2010), Patent Owner filed its Observations on the cross-
examination. Paper 30. Petitioner filed its Response to Patent Owner
Observations. Paper 32. Oral hearing was held on July 15, 2015. See
Paper 38 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c) and issue this final
written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We
determine that Petitioner has established by a preponderance of the evidence
that claims 1–16 of the ’992 patent are unpatentable.
A. Related Proceedings
According to the parties, Patent Owner has asserted the ’992 patent
against Petitioner in LMK Technologies, LLC v. BLD Services, LLC, Case
No. 1:14-cv-00956 (N.D. Ill., filed February 11, 2014). Pet. 2; Paper 6, 1.
The parties are involved in two other inter partes reviews based on patents
claiming similar subject matter: IPR 2014-00768 (US 7,975,726) and IPR
2014-00770 (US 8,667,991).
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B. The ’992 patent
The ’992 patent relates to a device and method for repairing pipe,
such as underground sewer pipe. Ex. 1001 1:16–17. Specifically, it
provides an apparatus for repairing the juncture between a main pipe line
and a lateral pipe line. Id. at 2:33–34. The apparatus includes a liner
assembly, which includes a main liner member and a lateral liner tube, and a
hydrophilic gasket or band that seals against entry of ground water at the
pipe junction. Id. at 2:35–59. Figure 5 of the ’992 patent is provided below.

Figure 5 is a sectional view of a repair assembly placed at the juncture
of main pipe line 50 and lateral pipe line 52 in order to repair damaged
portion 54. Id. at 3:18–19, 65–67.1 Liner assembly 14 includes main liner
tube 38 and lateral liner tube 40. Id. at 3:48–50. Fitted on the interior of

1 In explaining Figures 5 and 6, we cite certain descriptions of Figures 2 and
3 as the two embodiments only differ in whether a gasket (Figures 2 and 3)
or a band (Figures 5 and 6) is positioned around the juncture between the
main liner tube and the lateral liner tube. See Ex. 1001, 5:21–24.
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liner assembly 14 is bladder tube assembly 16, which includes main bladder
tube 34 and lateral bladder tube 36. Id. at 3:46–48, 50–51. To prevent the
seepage of ground water, ring-shaped band 62 is positioned on the main liner
tube 38 and extends around the juncture between the main liner tube 38 and
the lateral liner tube 40. Id. at 5:21–26. Before launch, lateral bladder tube
36 and lateral liner tube 40 are contained within launcher device cavity 48.
Id. at 4:24–26.
After launch, lateral bladder tube 36 and lateral liner tube 40 are
inverted outwardly through the launcher device opening into the lateral pipe
line 52, as shown in Figure 6 of the ’992 patent. Id. at 4:35–38.

Figure 6 shows the liner assembly in its inflated position. Id. at 3:20–
21. In this position, band 62 is positioned between the main liner tube
assembly 14 and the interior walls of the main pipe line 50. See id. at 4:43–
45.
Band 62 is preferably made of a hydrophilic material and swells in
response to being exposed to water or other liquid. Id. at 5:26–28. One such
hydrophilic material is manufactured by DeNeef Construction Chemical Co.,
under the trademark SWELLSEAL™. Id. at 4:54–57, 5:37–39. According
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to the ’992 patent, the band may be made of a hydrophilic paste. Id. at 5:40–
44. Upon exposure to liquid, the hydrophilic band expands to effectively
seal the area between the liner assembly and the juncture between main pipe
line 50 and lateral pipe line 52. Id. at 5:26–32.
C. Illustrative Claims
Independent claims 1 and 11 are representative of the challenged
claims. They are reproduced below:
1. A method of repairing a main pipe and a lateral pipe
connected thereto and in communication therewith to form a
pipe joint, comprising:
taking a bladder assembly comprising a main bladder tube
and a lateral bladder tube;
taking a liner assembly comprising a main liner member and
a lateral liner tube in communication with one another at
a liner juncture;
impregnating the liner assembly with a material capable of
curing and hardening;
applying a hydrophilic paste to the liner assembly about at
least a portion of the liner juncture;
expanding the bladder assembly to position the lateral liner
tube against the lateral pipe and the main liner member
against the main pipe with the hydrophilic paste at least
partially disposed between the main liner member and
the main pipe; and
allowing the material capable of curing and hardening to
cure and harden.
11. An apparatus for repairing a main pipe and a lateral pipe
connected thereto and in communication therewith to form a
pipe joint, comprising:
a bladder assembly comprising a main bladder tube and a
lateral bladder tube extending from the main bladder
tube;
a liner assembly comprising a main liner member at least
partially surrounding the main bladder tube and a lateral
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liner tube extending from the main liner member and in
communication with the main liner member at a liner
juncture;
the lateral liner tube and lateral bladder tube extendable to a
position within the lateral pipe line with the lateral liner
tube between the lateral pipe line and the lateral bladder
tube; and
a hydrophilic paste disposed on the liner assembly and at
least partially around the liner juncture when the lateral
liner tube is extended into the lateral pipe line.
Claims 2–10 depend from claim 1 directly or indirectly. Claims 12–
16 depend from claim 11 directly or indirectly.
D. Reviewed Grounds of Unpatentability
The Board instituted trial on the following grounds of unpatentability:
References Basis Claim(s) challenged
Kiest ’118,2 Kiest ’597,3
De Neef Instructions,4 and De Neef
Brochure5
§ 103(a) 1–4 and 6–16
Kiest ’118, Kiest ’597,
De Neef Instructions, De Neef
Brochure, Kempenaers,6 and Kiest
Study7
§ 103(a) 5

2 Kiest et al., U.S. Patent No. 6,994,118 B2, issued February 7, 2006 (Ex.
1002, “Kiest ’118”).
3 Kiest et al., U.S. Patent No. 5,765,597, issued June 16, 1998 (Ex. 1003,
“Kiest ’597”).
4 Installation Instructions, SWELLSEAL® WA, De Neef Construction
Chemicals, Inc., Rev. 3/2006 (Ex. 1004, “De Neef Instructions”).
5 Swellseal® Hydrophilic Waterstop Solutions, De Neef Construction
Chemicals, Inc. (Ex. 1005, “De Neef Brochure”).
6 Piet Kempenaers, The pressure resistance of SWELLSEAL Sealant WA
(Ex. 1006, “Kempenaers”).
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II. ANALYSIS
Obviousness is a question of law based on underlying facts. Graham
v. John Deere Co., 383 U.S. 1, 17 (1966). In an obviousness determination,
we analyze: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) objective evidence of nonobviousness, i.e., secondary
considerations. Id.
A. Expert Testimony
As an initial matter, we note that the Petition was not accompanied by
any expert declaration. “The Board expects that most petitions and motions
will rely upon affidavits of experts.” Office Patent Trial Practice Guide, 77
Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Especially in complex cases
where obviousness is asserted as a ground of unpatentability, “expert
testimony may be critical, for example, to establish the existence of certain
features in the prior art or the existence (or lack thereof) of a motivation to
combine references.” Wyers v. Master Lock Co., 616 F.3d 1231, 1240 n.5
(Fed. Cir. 2010) (citations omitted). But expert testimony is not a per se
requirement—where the technology is simple, where the references are
easily understandable without the need for expert explanatory testimony, or
where the factual inquiries underlying the obviousness determination are not
in material dispute, expert testimony, though it might be helpful, may not be
indispensable. Allergan, Inc. v. Barr Labs., Inc., 501 F. App’x 965, 972
(Fed. Cir. 2013). In addition, a reason to combine prior art teachings may

7 Larry W. Kiest Jr., A Case Study In Infiltration Reduction Through
Trenchless Technology, March 1999 (Ex. 1007, “Kiest Study”).
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exist “in the content of the public prior art, in the nature of the problem
addressed by the invention, or even in the knowledge of one of ordinary skill
in the art.” Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d
1332, 1338-39 (Fed. Cir. 2005). And in some cases, “the legal
determination of obviousness may include recourse to logic, judgment, and
common sense, in lieu of expert testimony.” Wyers, 616 F.3d at 1239.
Patent Owner challenges the credibility and qualification of Mr.
Fletcher, an expert who submitted a declaration in support of Petitioner’s
Reply. See, e.g., Paper 30, 1–2, 4. Petitioner, on the other hand, urges that
we ignore the declaration of Mr. Kampbell, an expert for Patent Owner, due
to his alleged bias and lack of qualification. Reply 13 & nn. 5–6. Neither
party, however, seeks to disqualify the expert for the other side. We, thus,
consider the declarations from both Mr. Fletcher and Mr. Kampbell, but take
account of the credibility challenges raised by each party and accord proper
weight to the testimonies.
B. Claim Construction
In an inter partes review, we interpret a claim term in an unexpired
patent according to its broadest reasonable construction in light of the
specification of the patent in which it appears. 37 C.F.R. § 42.100(b); In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1281 (Fed. Cir. 2015). Under
that standard, and absent any special definitions, we assign claim terms their
ordinary and customary meaning, as understood by a person of ordinary skill
in the art, in the context of the entire patent disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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Claim terms need only be construed to the extent necessary to resolve
the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
(Fed. Cir. 2011). For purposes of this Decision, we see no need to construe
any term expressly.
C. Prior Art Disclosures
1. Kiest ’118
Kiest ’118 teaches that damages often occur at the junction between a
lateral pipe line and a main pipe line. Ex. 1002, 1:17–18. Kiest ’118 relates
to a device and method for repairing a pipe using hydrophilic seals. Id. at
1:6–7. Figure 2 of Kiest ’118 is provided below.

Figure 2 is a sectional view of main pipe line 50 and lateral pipe line 52
showing a repair assembly of Kiest ’118 for repairing damaged portion 54.
Id. at 4:12. The repair assembly includes line assembly 14 and bladder
assembly 16. Id. at 4:16–19. Liner assembly 14 includes main liner tube 38
and lateral liner tube 40. Id. at 4:33–34. Fitted on the interior of liner
assembly 14 is bladder tube assembly 16, which includes main bladder tube
34 and lateral bladder tube 36. Id. at 4:31–32, 35–36. Before launch, lateral
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bladder tube 36 and lateral liner tube 40 are contained within launcher
device cavity 48. Id. at 4:65–5:1.
To prevent the seepage of ground water into the interior of pipe lines
50 and 52 through the damaged portion 54, Kiest ’118 teaches hydrophilic
seals 56 and 58 are wrapped around the main liner tube 38. Id. at 4:48–56.
Kiest ’118 further teaches that “a third hydrophilic seal 60 may be optionally
placed within the interior of the lateral liner tube 40.” Id. at 4:57–58.
Hydrophilic seals 56, 58, and 60 are made of a hydrophilic material capable
of expanding in response to encountering ground water, such as
SWELLSEAL®. Id. at 5:28–34.
After launch, lateral bladder tube 36 and lateral liner tube 40 are
inverted outwardly into the lateral pipe line 52, as shown in Figure 3 of Kiest
’118. Id. at 5:5–10.

Figure 3 shows the liner assembly in its inflated position. Id. at 4:34. In
this position, the hydrophilic seals 56 and 58 are positioned between the
main liner tube 38 and the interior wall of main liner tube 50, while optional
hydrophilic seal 60 is positioned between the lateral liner tube 40 and lateral
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liner tube 52. Id. at 5:1922. Upon encountering water, the hydrophilic
seals expand and form watertight seals between liner assembly 14 and the
interior walls of main pipe line 50 and lateral pipe line 52. Id. at 5:3641.
2. Kiest ’597
Kiest ’597 relates to an apparatus and method for repairing a pipeline.
Ex. 1003, 1:8–9. According to Kiest ’597, it is common that the junctures
between lateral sewer pipelines and main pipelines become damaged or
destroyed, which results in ground water infiltrating into the sewer system at
the juncture. Id. at 9:22–26. Kiest ’597 teaches a method for repairing the
juncture between a lateral sewer pipe and a mainline sewer pipe. Id. at
2:63–65. Figure 19 of Kiest ’597 is reproduced below.

Figure 19 provides a sectional view of T-liner assembly 182 for use in
a method for repairing a sewer pipe junction. Id. at 6:5–7. T-liner assembly
182 includes main liner sleeve 184 and lateral liner sleeve 186. Id. at 10:65–
67. Urethane collar 190, fused to lateral liner sleeve 186 and main liner
sleeve 184 at the juncture thereof, connects and provides an airtight seal
between the two liner sleeves. Id. at 11:28–32.
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Kiest ’597 further teaches that gasket 192 is slid down over the lateral
liner sleeve 186 until it reaches the junction between lateral liner sleeve 186
and main liner sleeve 184. Id. at 11:3436. Gasket 192, in the shape of a
donut, is made of absorbent material, such as an open cell foam. Id. at
11:32–34. It is impregnated with a hydrophilic chemical grout just before
installation. Id. at 11:36–38. According to Kiest ’597, gasket 192 provides
a seal between the liner sleeves and the main pipe, thereby eliminating
ground water from infiltrating into the main line sewer pipe. Id. at 11:38–
41.
3. De Neef Instructions and Kempenaers
Whether a reference qualifies as a “printed publication” involves a
case-by-case inquiry into the facts and circumstances surrounding the
reference’s disclosure to the public. In re Klopfenstein, 380 F.3d 1345, 1350
(Fed. Cir. 2004). A reference is publicly accessible upon a satisfactory
showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate it. Kyocera
Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). After
reviewing the parties’ arguments and supporting evidence, we determine that
Petitioner has not satisfied its burden to show that De Neef Instructions and
Kempenaers are printed publications.
In our Decision to Institute, we acknowledged Patent Owner’s
challenge of De Neef Instructions, De Neef Brochure, and Kempenaers as
printed publications under 35 U.S.C. § 102. Dec. 10. We stated that
Petitioner made a threshold showing that those documents qualify as printed
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publications. Id. That threshold showing, however, only translates into a
reasonable likelihood that Petitioner would prevail on the obviousness
grounds based, in part, on those documents. Indeed, we contemplated that
Petitioner would supplement the record to support the prior art status of
those documents. Id. n.1. Petitioner did not do so.
In its Response, Patent Owner continues to argue that Petitioner has
failed to provide sufficient evidence to establish that De Neef Instructions,
De Neef Brochure, and Kempenaers constitute printed publications. PO
Resp. 50–56. Patent Owner contends that neither De Neef Instructions (Ex.
1004) nor Kempenaers (Ex. 1006) bears any indication, and Petitioner has
not provided any supporting evidence to show, that either was publicly
disseminated. PO Resp. 52–53, 55–56. We agree. Even though De Neef
Instructions shows “Rev. 03/2006” (Ex. 1004, 38) and Kempenaers shows
“09/05/2005” (Ex. 1006, 3), it is unclear what these dates represent. See PO
Resp. 52, 55. As Patent Owner contends, for example, “Rev. 03/2006” may
simply be a revision date. Id. at 52. Petitioner does not point to any
persuasive evidence or provide any credible explanation that De Neef
Instructions and Kempenaers were publicly accessible on the respective date
shown on the documents. As a result, we conclude Petitioner has not
provided competent evidence to qualify either De Neef Instructions or
Kempenaers as printed publication.
Patent Owner asserts that we must rule in its favor because Petitioner
has failed to show that De Neef Instructions and Kempenaers are prior art.

8 Exhibits 1004–07 do not include page numbers. We number the pages
sequentially in these exhibits.
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See, e.g., Tr. 60:4–8. We disagree. As explained later in this Decision, the
combination of the rest of the references, all of which qualify as prior art,
renders the challenged claims obvious. Patent Owner does not contend that
either De Neef Instructions or Kempenaers teaches away from the
combination. To the contrary, counsel for Patent Owner concedes that the
“DeNeef SWELLSEAL documents . . . are, in fact, merely cumulative and
. . . that’s been acknowledged [] in the subject patents that SWELLSEAL is
and was a known water stop material.” Tr. 26:5–9. Thus, we decline to
dismiss the Petition on this basis. Instead, we do not consider the
disclosures of De Neef Instructions and Kempenaers in rendering this
Decision.
4. De Neef Brochure
Patent Owner similarly challenges the prior art status of De Neef
Brochure. PO Resp. 53–55. Here, we determine that Petitioner has shown
that De Neef Brochure is a printed publication.
Patent Owner points out that De Neef Brochure itself does not bear
any indication of whether it was publicly disseminated. Id. at 53. We agree
with this observation. Petitioner, however, provides a declaration from
Christopher W. Adams, an attorney with Patton Boggs LLP and counsel for
Petitioner. Ex. 1008 ¶ 3. According to Mr. Adams, he obtained De Neef
Brochure through a Google search using a custom date range of
“01/01/1990” to “03/31/2007.” Id. ¶ 6. Mr. Adams testifies that De Neef
Brochure was created on “03/13/2006 6:48:56 PM,” last modified on
“03/13/2006 6:57:02 PM,” and posted on the internet by at least January 1,
2007. Id. ¶¶ 7, 8 (citing Annex 3).
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Patent Owner first challenges Mr. Adams as an interested party, and
contends that his declaration alone is insufficient to establish that De Neef
Brochure constitutes a prior art printed publication. PO Resp. 5455. We
are not persuaded that Mr. Adams, an attorney who originally represented
Petitioner, is an interested party. But even if he were, we still would not
discount his testimony because it was accompanied by Annex 2—
corroborating, documentary, evidence. See Checkpoint Sys., Inc. v. All-Tag
Sec. S.A., 412 F.3d 1331, 1339 (Fed. Cir. 2005) (“Physical, documentary, or
circumstantial evidence, or reliable testimony from individuals other than
the alleged inventor or an interested party, may corroborate.”). We,
therefore, conclude that De Neef Brochure was published on the internet on
or before January 1, 2007.
Patent Owner next contends that “mere publication on the Internet
does not mean that a document was available as of January 1, 2007 such that
persons interested and ordinarily skilled in the art, exercising reasonable
diligence, can locate it.” PO Resp. 55. We disagree. The website from
which Mr. Adams retrieved De Neef Brochure appears to be open to any
internet user. Thus, a person of ordinary skill interested in obtaining
information about SWELLSEAL®, with reasonable diligence, would have
found De Neef Brochure through a simple internet search. See Voter
Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1381 (Fed.
Cir. 2012). Based on the evidence of record, we conclude that De Neef
Brochure was publicly available by January 1, 2007, and therefore, qualifies
as a printed publication under 35 U.S.C. § 102(b).
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De Neef Brochure contains product information about various
SWELLSEAL® products, including SWELLSEAL® WA, which is
described in De Neef Brochure as a gunnable paste. Ex. 1005, 4.
5. Kiest Study
Kiest Study is a case study report of a pipe rehabilitation project
conducted by the Patent Owner’s predecessor company for a township
sanitary district. Ex. 1007, 1. It describes a cured-in-place T-Liner system
for repairing a sewer main at the lateral connection, in which the integrally
manufactured lateral liner is inverted from the center of the sewer main liner
up the lateral. Id. at 6.
D. Level of Ordinary Skill
Petitioner contends that a person of ordinary skill in the art at the time
of the ’992 patent invention “would have at least an undergraduate degree in
engineering and/or ten years of experience in the pipe repair and/or pipe
installation industry.” Pet. 7. Patent Owner points out that Petitioner does
not cite any support for this assertion. PO Resp. 7.
The skill-level determination is an important guarantee of objectivity
in an obviousness analysis. Graham, 383 U.S. at 17. Usually, we expect
evidence, such as affidavits of experts, to aid our analysis in this respect.
Sometimes, however, the prior art may reflect an appropriate skill level.
Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64
(Fed. Cir. 1985). Such is the case here. See, e.g., Ex. 1002, 1:6–2:28
(discussing methods for repairing damaged pipe lines using liner tubes
impregnated with a liquid material capable of curing and hardening and
hydrophilic bands); Ex. 1003, 4:6–23 (discussing methods for repairing the
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juncture of a lateral sewer pipe and a mainline sewer pipe by inverting a
preliner tube to a position where a gasket impregnated with grout forms a
water tight seal between the preliner tube and the sewer pipes).
Patent Owner asserts “the relevant art is sewer pipe renewal and
particularly trenchless, cured-in-place pipelining” (PO Resp. 7), and one of
ordinary skill in the art is “someone with knowledge of cured-in-place
pipelining materials and techniques, and at least several years of experience
involving the design and application of cured-in-place pipelining
technologies” (id. at 8 (citing Ex. 2005 ¶ 21)). For purpose of this Decision,
we generally accept Patent Owner’s definition of the art and the statement of
the level of skill, with one modification. We determine that an ordinary
artisan does not have to be experienced in both designing and applying the
technology.
As Patent Owner recognizes, hands-on experience, rather than formal
education, serves better in the field of sewer pipe repair. PO Resp. 7–8.
Further, Patent Owner’s own document supports our modification. Indeed,
ASTM F 2561-06, an alleged “industry standard specifying the arrangement
of the ’118 patent” (PO Resp. 25), states that the practice is for use by
“designers and specifiers, regulatory agencies, owners, and inspection
organizations who are involved in the rehabilitation of sewer service laterals
and its connection to the main through the use of a resin-impregnated tube
installed within an existing sewer lateral” Ex. 2005, 40 (emphasis added).
Thus, in this respect, we agree with Petitioner that an ordinary artisan would
include both “designers and field engineers, including those that were
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specifying repair methods and procedures along with overseeing on-site
repairs and who may not publish all their work.” Reply 2; Ex. 1013 ¶ 4.
E. Patentability Analysis
1. Claims 1–4 and 6–16
Petitioner argues that claims 1–4 and 6–16 would have been obvious
over the combination of Kiest ’118, Kiest ’597, and De Neef Brochure.
Pet. 8–26. After reviewing the complete record, we conclude Petitioner has
shown by a preponderance of the evidence that the challenged claims are
unpatentable as obvious.
Kiest ’118 relates to a device and method for repairing a pipe using
hydrophilic seals. Ex. 1002, 1:6–7. Petitioner contends that Kiest ’118
teaches all the limitations of challenged claim 1, except “applying a
hydrophilic paste to the liner assembly about at least a portion of the liner
juncture.” Pet. 9–14, 31–33.
Regarding the “hydrophilic paste,” Petitioner refers to De Need
Brochure for teaching SWELLSEAL® products in the form of a paste. Id.
at 11 (citing Ex. 1005, 2).9 Petitioner also points out that Kiest ’118
specifically teaches seals made of SWELLSEAL®. Id. (citing Ex. 1002,
5:28–33). We agree with Petitioner that an ordinary artisan would have used

9 Even if De Neef Brochure, like De Neef Instructions and Kempenaers, did
not qualify as prior art, it would not affect our obviousness analysis. Patent
Owner does not dispute that SWELLSEAL® products exist in the form of a
hydrophilic paste. See Tr. 26:5–9 (“DeNeef SWELLSEAL documents . . .
are, in fact, merely cumulative and . . . that’s been acknowledged [] in the
subject patents that SWELLSEAL is and was a known water stop
material.”); see also Ex. 1010, 63:2–3 (Mr. Kampbell, the expert for Patent
Owner, confirming SWELLSEAL® is a hydrophilic paste).
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SWELLSEAL® paste as a hydrophilic material to form a seal. See id. at
11–12.
Regarding the position of the hydrophilic seal, Petitioner asserts that
“it would have been obvious to one of ordinary skill in the art at the time of
the invention to use a well-known hydrophilic paste to seal one or more
locations, particularly known weak portions of the pipe system,” such as the
juncture of a main pipe line and a lateral pipe line.10 Pet. 12. Petitioner
refers to Kiest ’597 for teaching a gasket, impregnated with grout, located on
the exterior of the preliner and positioned at the juncture between the lateral
sewer pipe and the main line sewer pipe. Pet. 13 (citing Ex. 1003, 4:18–22,
9:42–44). According to Petitioner, “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.” Id.
In its Response, Patent Owner does not appear to dispute that the
combination of the asserted references teaches all limitations of claim 1.
Instead, Patent Owner contends that placement of hydrophilic bands at the
liner juncture would not have been, as we stated in the Decision to Institute,
“a predictable variation within the technical grasp of a person of ordinary
skill in the art.” PO Resp. 34 (citing Dec. 17). Patent Owner’s arguments
appear to center on two main points. First, Patent Owner asserts Kiest ’118
and Kiest ’597 are not combinable because they embody different principles

10 Petitioner cites the Background section of the ’992 patent to support that
the juncture is a weak point of the pipe system. Pet. 12 (citing Ex. 1001,
1:27–46). We note Kiest ’118 includes the same discussion. See Ex. 1002,
1:16–35.
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of operation. Id. at 13–15, 22–25, 40–47. Second, Patent Owner argues that
because the T-liner of Kiest ’118 is watertight, adding a hydrophilic band at,
the liner juncture “would have served no purpose” and “would have been
superfluous.” Id. at 35–41. We address each argument in turn.
According to Patent Owner, the approach in Kiest ’118 allows
groundwater to flow through damaged pipe portions and in between the T-
Liner and the pipe. Id. at 24. The infiltrated groundwater is then contained
because the T-Liner remains watertight and because seal gaskets prevent
water from flowing past the ends of the T-Liner. Id. In contrast, the
approach in Kiest ’597 blocks groundwater from entering the pipe. Id. at 15.
It creates a seal by enveloping the damaged pipe areas and penetrating the
surrounding soil with chemical grout. Id. As a result, Patent Owner asserts,
“[t]he proposed obviousness rationale based on modifying the ’118 patent
technique in view of the ’597 patent technique is untenable because the ’597
technique’s principle of operation is completely different than the principle
of operation of the ’118 patent techniques.” Id. at 46. We disagree.
Where “a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield predictable results.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Combinations that
change the basic principles under which the prior art was designed to
operate, however, may fail to support a conclusion of obviousness. In re
Ratti, 270 F.2d 810, 813 (CCPA 1959). As explained below, we find that
modifying Kiest ’118 with Kiest ’597 does not change the principle of
operation of Kiest ’118.
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First, Patent Owner bases its argument on the premise that the
hydrophilic seal of Kiest ’118 is located between the T-Liner and the host
pipes (PO Resp. 25), whereas the seal of Kiest ’597 is located outside of the
pipe (id. at 14). Evidence of the record, however, shows otherwise. Indeed,
Kiest ’597 repeatedly and explicitly states that “[t]he gasket impregnated
with grout forms a water tight seal between the preliner tube and the main
sewer pipe and the lateral sewer pipe.” Ex. 1003, 4:21–23 (emphasis
added); see also id. at 9:59–61 (“This fluid tight seal provides a sealing
between the exterior of the preliner 148 and the interior of the existing
pipelines 138, 140 at the juncture 142.”); 11:37–40 (“The grout gasket will
provide for a seal between the liners and the main host pipe, thereby
eliminating any ground water from infiltrating into the main line sewer pipe
210.”). These disclosures directly contradict Patent Owner’s assertion that
the seal of Kiest ’597 is outside of the pipe.
Second, Patent Owner asserts that the gasket of Kiest ’597 “is not a
gasket in the conventional sense of the term” because it “does not provide
any sort of compression seal.” PO Resp. 44. Again, the disclosures of Kiest
’597 quoted in the last paragraph, stating that the gasket forms a watertight
seal, directly contradict Patent Owner’s position.11

11 Kiest ’597 is not the challenged patent, and none of the challenged claims
of the ’992 patent recites a “gasket.” Thus, we do not need to construe the
term. But even if we were to construe the term “gasket” in Kiest ’597, an
already expired patent, we would give no weight to extrinsic evidence that
contradicts claim meaning that is unambiguous in light of the intrinsic
evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir.
2005) (en banc).
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Third, an embodiment of the ’992 patent invention, as illustrated in
Figure 6, casts further doubt on Petitioner’s principle-of-operation argument.
In Figure 6, hydrophilic band 62 is positioned on the main liner tube and
extends around the liner juncture. Ex. 1001, Fig. 6. The same figure also
shows band 60, positioned on, and wrapping around, the lateral liner tube.
Id. Upon encountering water, both bands expand: band 62 forms a seal
between the main liner tube and the pipe line juncture; whereas band 60
forms a seal between the lateral liner tube and the lateral pipe line. Id.
Thus, it appears that this embodiment of the ’992 patent invention includes a
containment region formed between bands 60 and 62, similar to, albeit
smaller than, the one formed between bands 56 and 60 in Figure 3 of Kiest
’118. See Reply 20; compare Ex. 1001, Fig. 6 with Ex. 1002, Fig. 3. In
other words, modifying Kiest ’118 by including a hydrophilic band at the
liner juncture, as Kiest ’597 teaches, does not destroy its principle of
operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)
(comparing prior-art disclosure with the claimed invention and concluding
that the combination of asserted references does not destroy the principle of
operation of the prior art). Patent Owner’s argument confirms our
conclusion. See PO Resp. 41 (asserting that moving the bands of Kiest ’118
only reduces the size of the containment region).
Patent Owner contends that the T-liner of Kiest ’118 is watertight.
PO Resp. 36–41. As a result, according to Patent Owner, reducing the size
of the containment region “would serve no apparent useful purpose, and
would have been seen as having the negative effect of increasing the
likelihood of leaks occurring outside the containment region resulting in
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flows that would not be contained but rather would flow into the sewer.” Id.
at 41. We are not persuaded. First of all, common sense dictates that hardly
anything in sewer-pipe-repair industry remains watertight. Indeed, Patent
Owner itself recognizes so. See id. at 25 (stating leakage occurs through T-
liner of Kiest ’118). More importantly, Patent Owner emphasizes that Kiest
’118 operates by containing groundwater in the annular space, i.e., the space
between the liner and the pipe. PO Resp. 47. As Mr. Kampbell, Patent
Owner’s expert, testifies, a sewer pipe is more likely to buckle (or fracture)
with a larger annular space. Ex. 1010, 336:9–11, 336:22–337:1. Thus, it
appears that reducing the size of the containment region would be useful.
We appreciate the scenario Patent Owner puts forth, that is, a smaller
containment region would not repair the damage to the pipe outside of the
containment region. But, an ordinary artisan would have set out to modify
an existing method or apparatus, even if the result is not a panacea. Indeed,
as Kiest ’118 recognizes, one of ordinary skill the art would have understood
that, depending on different working conditions, “many modifications,
substitutions, and additions may be made which are within the intended
spirit and scope of the invention.” Ex. 1002, 6:25–28.
We find Patent Owner’s other arguments similarly unpersuasive. For
example, Patent Owner asserts that an ordinary artisan would not have
modified Kiest ’118 with the teachings of Kiest ’597 because, in actual
practice, the approach of Kiest ’597 was unsuccessful whereas the approach
of Kiest ’118 was highly successful. PO Resp. 46–47. We disagree. None
of the alleged problems associated with Kiest ’597 result from the location
of the seal. See PO Resp. 17. Instead, they relate to the amount or
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application of grout, something not used in Kiest ’118. Id. Moreover, the
test for obviousness is “not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference,” but
rather “what the combined teachings of the references would have suggested
to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). Both Kiest ’118 and Kiest ’597 teach methods for repairing sewer
pipes using seals to stop water from entering the sewer line. Petitioner relies
on Kiest ’597 only for teaching a seal between the liner and the pipe at the
liner juncture. See Pet. 13. As a result, we are not persuaded that one of
ordinary skill in the art would have been dissuaded from considering Kiest
’597 when seeking to improve Kiest ’118.
Patent Owner further argues that the “thin and narrow” hydrophilic
“bands or O-rings” of Kiest ’118, while perfectly suitable as end seals,
“would not have been considered suitable for directly targeting
unpredictably located and configured cracks and voids at the pipe juncture
for sealing the same.” PO Resp. 43. We are not persuaded. Kiest ’118 does
not describe the hydrophilic seals as thin or narrow. Nor does it characterize
them as O-rings. More importantly, as ASTM F 2561-06, an alleged
industry standard embodying Kiest ’118 patent, recognizes that “[a]s for any
practice, modifications may be required for specific job conditions.”
Ex. 2005, 40. Thus, we agree with Petitioner that an ordinary artisan would
have altered the size of the seals in response to varying conditions at the job
sites. Reply 20.
In sum, we conclude that at the time of the ’992 patent invention, it
would have been obvious to one of ordinary skill in the art to place the type
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of seal taught in Kiest ’118 at the position taught in Kiest ’597 to arrive at
the subject matter of challenged claim 1. See KSR, 550 U.S. at 401 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
In our Decision to Institute, we stated that Petitioner has also
demonstrated a reasonable likelihood that it would prevail in showing the
obviousness of challenged claims 2–4 and 6–16. Dec. 17; see also Pet. 14–
26, 33–39 (analyzing the obviousness of claims 2–4 and 6–16). In its
Response, Patent Owner does not address those claims separately. After
reviewing the entire record, we conclude Petitioner has shown, by a
preponderance of the evidence, that claims 2–4 and 6–16 would have been
obvious over the combination of Kiest ’118, Kiest ’597, and De Neef
Brochure.
2. Claim 5
Claim 5 depends indirectly from claim 1. It requires the hydrophilic
paste is applied to form a ring or band around, and fully encircles, the liner
juncture. Petitioner asserts that claim 5 would have been obvious over the
combination of Kiest ’118, Kiest ’597, De Neef Brochure, and Kiest Study.
Pet. 26–29, 39–40.
Patent Owner argues that Kiest Study does not remedy the
deficiencies in the combination of Kiest ’118, Kiest ’597, and De Neef
Brochure, as asserted in relation to claims 1–4 and 6–16. PO Resp. 49–50.
In addition, Patent Owner contends that Kiest Study “in fact supports the
patentability of the claims” because it teaches a “watertight seal at the
connection point between the . . . lateral and the main.” Id. at 50 (citing
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Ex. 1007, 6). According to Patent Owner, this statement confirms that the
T-Liner system “was effective for guaranteeing a watertight seal at its
juncture,” and thus, “teaches against” modifying Kiest ’118 approach. Id.
We are not persuaded.
First, as explained above, we find no deficiencies in the combination
of Kiest ’118, Kiest ’597, and De Neef Brochure. Second, Petitioner refers
to Kiest ’118 for teaching hydrophilic bands that are “circular and
stretchable in the same fashion as rubber bands.” Pet. 28 (citing Ex. 1002,
5:52–54). Petitioner also refers to Kiest ’597 for teaching a donut-shaped
gasket positioned at the juncture of a lateral liner tube and a main liner tube.
Id.; Ex. 1003, 11:32–36. Thus, the teachings in Kiest Study are not essential
to show the obviousness of claim 5. Third, there is no guarantee, in life in
general, and perhaps in sewer-pipe-repair industry in particular. As
Petitioner points out, the T-Liner system only reduced the water infiltration
to various degrees (from 19.8% to 59.6%). Reply 17 (citing Ex. 1007, 8).
Thus, we agree with Petitioner that Kiest Study “does not support an
assertion of a leakless system,” and would not have dissuaded one of
ordinary skill from seeking improvement of the T-Liner system. See id.
In sum, we conclude that Petitioner has shown, by a preponderance of
the evidence, that claim 5 would have been over the combination of Kiest
’118, Kiest ’597, De Neef Brochure, and Kiest Study.
III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that the
combination of Kiest ’118, Kiest ’597, and De Neef Brochure would have
rendered claims 1–4 and 6–16 of the ’992 patent obvious; and that the
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combination of Kiest ’118, Kiest ’597, De Neef Brochure, and Kiest Study
would have rendered claim 5 obvious.
IV. ORDER
For the reasons given, it is
ORDERED that claims 1–16 of the ’992 patent are determined to be
unpatentable;
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Scott A.M. Chambers, PhD.
sachambers@pbnlaw.com

Matthew D. Zapadka
mdzapadka@pbnlaw.com

PATENT OWNER:

Jeffrey D. Harty
Jeff.harty@nyemaster.com

Christopher L. McKee
LMKpatentIPRs@bannerwitcoff.com