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

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BLD SERVICES, LLC Petitioner v. LMK TECHNOLOGIES, LLC. Patent Owner CASE UNASSIGNED Patent No. 8,667,991 PETITION FOR INTER PARTES REVIEW

2 Table of Contents I. Introduction... 1 II. Mandatory Notices... 2 A. Real Parties-In-Interest... 2 B. Related Matters... 2 C. Lead and Backup Counsel... 2 D. Service Information... 3 III. Payment of Fees... 3 IV. Grounds for Standing... 3 V. Statements of Precise Relief Requested for Each Claim Challenged... 4 A. Claims for which Review is Requested... 4 B. Statutory Grounds of Challenge... 4 VI. The 991 Patent... 4 A. Background of the Technology... 4 B. The Alleged Invention of the 991 Patent... 4 C. Initial Examination of the 991 patent... 5 VII. Claim Construction... 7 VIII. Claims 1 and 2-4 of the 991 Patent are Unpatentable... 8 A. Ground 1 of Inter Partes Review Case No. IPR # , holding that BLD had presented sufficient information to show a reasonable likelihood that it would prevail in showing that Claim 1 would have been obvious over the following combination: Kiest 118 (Ex. 1102) in view of Kiest 597 (Ex. 1103) in further view of DeNeef (Ex. 1104) in further view of DeNeef 2002 (Ex. 1105) B. Ground 1: Claims 2, 3 and 4 are obvious over Kiest 118 (Ex. 1102) taken with Kiest '597 (Ex. 1103) in view of DeNeef 2006 (Ex. 1104), DeNeef 2002 (Ex. 1105) and Kiest '079 (Ex. 1106) in further view of Blackmore '087 (Ex. 1107), Kempenaers (Ex. 1108), Kiest 663 (Ex. 1109) and Tweedie '419 (Ex. 1111) IX. Claim Chart for Claim 1 of U.S. Patent No. 8,667, X. Claim Chart for Claims 2, 3, and 4, Ground 1: Claims 2, 3, and 4 are obvious over Kiest 118 (Ex. 1102) taken with Kiest 596 (Ex. 1103) in view of DeNeef

3 (Ex. 1104), DeNeef 2002 (Ex. 1105) and Kiest '079 (Ex. 1106) in further view of Blackmore '087 (Ex. 1107), Kempenaers (Ex. 1108), Kiest 663 (Ex. 1109) and Tweedie '419 (Ex. 1111) XI. Conclusion

4 List of Exhibits Exhibit 1101 U.S. Patent No. 8,667,991 to Kiest ( the 991 patent ). Exhibit 1102 U.S. Patent No. 6,994,118 to Kiest et al. ( Kiest 118 ) issued February 7, 2006 (Ex. 1102); prior art to the 991 patent under 35 U.S.C. 102(b) and/or 103(a). Exhibit 1103 U.S. Patent No. 5,765,597 to Kiest et al. ( Kiest 597 ) issued June 16, 1998 (Ex. 1103); prior art to the 991 patent under 35 U.S.C. 102(b) and/or 103(a). Exhibit 1104 DeNeef (DeNeef 2006), Technical Information Waterstops, SWELLSEAL WA, (March, 2006), (last accessed February 10, 2015), available at at sk=doc_view&gid=163&itemid=35 through the (Ex. 1104); prior art to the 991 patent under 35 U.S.C. 102(b) and/or 103(a). Exhibit 1105 DeNeef (DeNeef 2002), Swellseal hydrophilic Waterstop Solutions, (last accessed: February 11, 2015) available at eneef.com/index.php?option=com_docman&task=cat_view& gid=33&itemid=35 (Ex. 1105); prior art to the 991 patent under 35 U.S.C. 102(b) and/or 103(a). Exhibit 1106 U.S. Patent No. 6,039,079 to Kiest ("Kiest '079") issued March 21, 2000 (Ex. 1106); prior art to the '991 patent under 35 U.S.C. 102(b) and/or 103(a). Exhibit 1107 U.S. Patent No. 7,135,087 to Blackmore et al. ("Blackmore") issued November 14, 2006 (Ex. 1107); prior art to the 991 patent under 35 U.S.C. 102(b) and/or 103(a). Exhibit 1108 Kempenaers, P (Kempenaers), The pressure resistance of SWELLSEAL Sealant WA, (last accessed: February 11, 2015), available at

5 -swellseal-wa-pressure-resistance (Ex. 1108); prior art to the 991 patent under 35 U.S.C. 102(b) and/or 103(a). Exhibit 1109 Exhibit 1110 Exhibit 1111 Exhibit 1112 U.S. Patent No. 5,794,663 to Kiest et al. ( Kiest 663 ) issued August 18, 1998 (Ex. 1109); prior art to the 991 patent under 35 U.S.C. 102(b) and/or 103(a). Declaration of Thomas A. Day with Attachments. U.S. Patent No. 5,915,419 to Tweedie et al. ("Tweedie '419") issued June 29, 1999 (Ex. 1111); prior art to the '991 patent under 35 U.S.C. 102(b) and/or 103(a). Declaration of David Fletcher with Attachment

6 Inter Partes Review of U.S. Patent 8,667,991 Docket No.: I. Introduction BLD Services, LLC ( Petitioner ) respectfully requests inter partes review ( IPR ) of Claims 2, 3, and 4 of U.S. Patent No. 8,667,991 ( the 991 patent ) (Ex. 1101), in accordance with 35 U.S.C and 37 C.F.R et seq. The 991 patent is assigned on its face to LMK Technologies, LLC ( Patent Owner ). This Petition establishes all challenged claims of the 991 patent are obvious by prior art that the U.S. Patent and Trademark Office ( the Office or "USPTO") did not have or did not fully consider or that was not analyzed and applied in accordance with the laws, rules and regulations governing patents. The 991 patent is directed to a device and method for repairing pipes. (Ex at Title and Abstract). The alleged invention of the 991 patent is a device for repairing the juncture between a main pipeline and a lateral pipeline, comprising a main line member, a lateral line made of resin absorbent material, a hydrophilic gasket or gasket of similar impermeable compressible material surrounding a portion of both the lateral line and the main line member, a seal between the host pipe and the liner assembly resulting from the gasket swelling in response to exposure to a liquid. E.g., id. at 2: Pipe repair techniques and devices with these characteristics were wellknown in the prior art before the earliest priority date of the application, which resulted in the 991 patent.

7 II. Mandatory Notices A. Real Parties-In-Interest BLD Services, LLC is the real party-in-interest. B. Related Matters Patent Owner, LMK Technologies, LLC, has filed suit for alleged infringement of the 991 patent in LMK Technologies, LLC, v. BLD Services, LLC, Civil Action No. 1:14 cv 00956, in the Northern District of Illinois. Claims 1 and 5-37 of the '991 patent are the subject of IPR # , filed May 16, 2014 and instituted November 20, The subject matter of the '991 patent is also related to the subject matter of U.S. Patent No. 7,975,726, which is the subject of IPR # , filed May 16, 2014 and instituted November 20, The subject matter of the '991 patent is also related to the subject matter of U.S. Patent No. 8,667,992, which is the subject of IPR # , filed May 16, 2014 and instituted November 20, All three of these instituted IPRs are before the same Panel. The '991 patent is also related to the subject matter of IPR # , filed February 10, C. Lead and Backup Counsel Lead Counsel Scott A.M. Chambers, Ph.D. Reg. No. 37,573 Porzio, Bromberg & Newman, P.C New Hampshire Ave, N.W. Suite 710 Backup Counsel B. Dell Chism Reg. No. 60,464 Porzio, Bromberg & Newman, P.C New Hampshire Ave, N.W. Suite 710 2

8 Washington, DC Telephone: Facsimile: Washington, DC Telephone: Facsimile: D. Service Information Please send all correspondence to the lead counsel at the address shown above. Petitioner consents to service by if the is sent to the following two addresses: and III. Payment of Fees The required fees are submitted herewith in accordance with 37 C.F.R (a) and 42.15(a). If any additional fees are due during this proceeding, the Office is authorized to charge such fees to Deposit Account No IV. Grounds for Standing Pursuant to 37 C.F.R (a), Petitioner certifies the 991 patent is available for IPR and Petitioner is not barred or estopped from requesting IPR of the patent on the grounds identified in this petition. The petition is not barred under 35 U.S.C. 315(b) because it has not been more than one year since the date on which the petitioner, real party-in-interest, or privy of the petitioner was served with a complaint alleging infringement of the 991 patent. 3

9 V. Statements of Precise Relief Requested for Each Claim Challenged A. Claims for which Review is Requested Petitioner respectfully requests review under 35 U.S.C. 311 of Claims 2, 3, and 4 of the 991 patent and cancellation of Claims 2, 3, and 4 as unpatentable. B. Statutory Grounds of Challenge Claims 2, 3, and 4 of the 991 patent are unpatentable and should be canceled in view of the following grounds: Ground 1: Claims 2, 3, and 4 are unpatentable under 35 U.S.C. 103(a) over Kiest 118 (Ex. 1102) taken with Kiest 597 (Ex. 1103) in view of DeNeef 2006 (Ex. 1104), DeNeef 2002 (Ex. 1105), and Kiest '079 (Ex. 1106) in further view of Blackmore '087 (Ex. 1107), Kempenaers (Ex. 1108), Kiest 663 (Ex. 1109), and Tweedie '419 (Ex. 1111). VI. The 991 Patent A. Background of the Technology Pipe repair devices for repairing the juncture between a main pipe line and a lateral pipe line with materials including hydrophilic seals or other impermeable compressible materials were well-known more than one year before the 991 patent s earliest priority date. B. The Alleged Invention of the 991 Patent The 991 patent claims a device for repairing the juncture between a main pipe line and a lateral pipe line, which uses a hydrophilic band or other impermeable 4

10 compressible materials. (E.g., Ex at Abstract, 2:5-20). The device comprises a main line member, a lateral line made of resin absorbent material, a hydrophilic gasket or gasket of similar impermeable compressible material surrounding a portion of both the lateral line and the main line member, and a seal between the host pipe and the liner assembly resulting from the gasket swelling in response to exposure to a liquid. (E.g., id. at 2:33-45). C. Initial Examination of the 991 patent The 991 patent was filed on June 16, 2011, and is a continuation of U.S. Patent No. 7,975,726, filed August 27, 2007 and issued on July 12, The Applicant filed a preliminary amendment on October 8, 2012, adding new claims Claim were method claims and claims were apparatus claims. On February 15, 2013, the USPTO rejected claims 1-5, 8, 11, 13, 14, 17, 19, 23, 26, 32, 33, 36, 38, 39-41, 43, 45 and 46 for non-statutory obviousness-type double patenting over claims 1, 2, 9, 15, 16, 30, 33, 40, and 42 of Kiest 726 (U.S. Patent No. 7,975,726). Claims 1-46 were also rejected under 35 U.S.C. 103(a) over Taylor (U.S. Patent No. 5,927,341) in view of Kiest 597 (U.S. Patent No. 5,765,597). On May 9, 2013, Applicant responded by filing a terminal disclaimer over Kiest 726. Applicant also amended claims 26 and 29 by adding the phrase impermeable to describe the gasket. Applicant further argued that each of the independent claims required a gasket or paste applied at the juncture to mitigate groundwater from penetrating the liner assemblies at the juncture. The gaskets and paste are not 5

11 considered resin-absorbent carriers in these claims, and instead directly comprise the hydrophilic and/or impermeable and/or compressible materials. The Applicant further argued that Kiest 597 did not disclose that the gasket or paste was soaked in or with a resin or hydrophilic material. On June 7, 2013, the USPTO allowed claims Claims 11, 13, 14, 17, 19, 23, 26, and were rejected on the grounds of non-statutory obviousness-type double patenting as being unpatentable over U.S. Patent No. 8,667,992. Claims were also rejected under 35 U.S.C. 103(a) over Taylor in view of Kiest 597. An August 6, 2013 interview proposed language for amendments but no agreement was reached. The USPTO informed the Applicant s representatives that the grout disclosed in Kiest 597 met the limitation of a paste as disclosed in the 991 patent. The USPTO also said that stating that the band was solely or only formed of a hydrophilic paste, if supported, might confer patentability. Another interview was conducted on September 26, 2013, in which specific language for amendments was proposed and agreement was reached. The Applicant argued that the hydrophilic material used in the Kiest 597 patent was a liquid and not a paste. Additionally, the USPTO noted that the prior art did not disclose the hydrophilic paste used at a location between the main liner and the main pipe. Based on this, an agreement was reached for claims 11, 17, 32 and 40. The USPTO also recommended amending claim 23, 26 and 29 with the phrase hydrophilic paste. 6

12 On October 23, 2013, Applicant canceled claims Applicant argued that Taylor did not disclose a hydrophilic paste being applied at a location on the main line, such that the paste is at least partially disposed between the main liner and the main pipe. Applicant further argued that the hydrophilic paste of the 991 patent was not the same as the material disclosed in the Kiest 597 patent; however, there was no discussion of why the cross-linking resin of the 597 patent would not become a paste as it became more and more cross-linked in the prior art. On November 12, 2013, the USPTO issued a Notice of Allowability. Subsequently, the 991 patent issued on March 11, 2014 with 37 claims, including 5 independent claims and 32 dependent claims. VII. Claim Construction Claim limitations not specifically addressed in this Petition or claim charts are to be given the broadest reasonable construction of their plain and ordinary meaning. A person of ordinary skill in the art at the time of the alleged invention would have at least an undergraduate degree in engineering and/or ten years of experience in the plumbing, pipe repair and/or pipe installation industry. 7

13 VIII. Claims 1 and 2-4 of the 991 Patent are Unpatentable Claims 1 1 and 2-4 are unpatentable over the prior art, as discussed below. The prior art provided in these grounds was never considered by the Office in the light discussed below and renders Claims 1 and 2-4 unpatentable. A. Ground 1 of Inter Partes Review Case No. IPR # , holding that BLD had presented sufficient information to show a reasonable likelihood that it would prevail in showing that Claim 1 would have been obvious over the following combination: Kiest 118 (Ex. 1102) in view of Kiest 597 (Ex. 1103) in further view of DeNeef (Ex. 1104) in further view of DeNeef 2002 (Ex. 1105). Claim 1, as indicated by the Patent Trial and Appeal Board ("PTAB" or "the Board") in IPR # , is unpatentable under 35 U.S.C. 103(a) as obvious over Kiest 118 (Ex. 1102) in view of Kiest 597 (Ex. 1103) in further view of DeNeef 2006 (Ex. 1104) and DeNeef 2002 (Ex. 1105) for the reasons discussed below. Each of the references were public disclosures more than one year prior to the earliest priority date of the 991 patent. Ex is a product brochure created prior to the earliest priority date of the 991 patent. 2 1 The Board has previously instituted a Petition for Inter Partes Review for Claim 1 in IPR # , which is pending. To simplify the Board's understanding, the rejection in view of Exs of this claim is included in this Petition. 2 The Board previously accepted the DeNeef 2002 (Ex. 1005) reference through a declaration by Christopher Adams in IPR # The accompanying declaration of Thomas Day is attached here as Ex to verify the date of the 8

14 BLD presented obviousness arguments against Claim 1 in Case No. IPR # the Inter Partes Review of the '991 patent. The PTAB instituted against Claim 1 stating that "BLD has presented sufficient information to show a reasonable likelihood that it would prevail in showing that claims 1 of the '991 patent would have been obvious over the combination of Kiest '118, Kiest '597, De Neef Instructions, and De Neef Brochure." The limitations of Claim 1 and the relevant prior art used by the PTAB to initiate against Claim 1 in IPR # are shown in the claim chart in IX below, with direction to the supporting portions of the cited prior art. The chart in IX is merely provided for ease of reference by the PTAB, and the application of those references is again provided here to demonstrate the obviousness of those limitations incorporated into Claims 2-4 as dependent claims of independent Claim 1. 3 DeNeef 2002 (Ex. 1105) reference. In 5 of his declaration, Mr. Day refers to the DeNeef 2002 reference as Ex (filed as Ex in IPR # ), which corresponds to Ex of the present Petition. Mr. Day also attaches the DeNeef 2002 reference as an Exhibit to his declaration. 3 Claim 1 is already under review and consequently is not being challenged in this Request; however, Petitioner provides the arguments and relevant prior art upon which the PTAB relied to institute against Claim 1 in IPR # to make review more straightforward. 9

15 B. Ground 1: Claims 2, 3 and 4 are obvious over Kiest 118 (Ex. 1102) taken with Kiest '597 (Ex. 1103) in view of DeNeef 2006 (Ex. 1104), DeNeef 2002 (Ex. 1105) and Kiest '079 (Ex. 1106) in further view of Blackmore '087 (Ex. 1107), Kempenaers (Ex. 1108), Kiest 663 (Ex. 1109) and Tweedie '419 (Ex. 1111). In most basic form, Kiest '118 (Ex. 1102) and Kiest '597 (Ex. 1103) disclose the subject matter of the '991 patent, suggesting practitioners use hydrophilic materials such as SWELLSEAL TM4 to form the seals or bands of junctions. De Neef 2006 (Ex. 1104), De Neef 2002 (Ex. 1105), and Kempenaers (Ex. 1108) teach the properties and characteristics of SWELLSEAL TM when used in this manner. In addition to Kempenaers (Ex. 1108) showing that SWELLSEAL TM -when pressure is applied by use such as taught by Kiest '118 (Ex. 1102) forms a gasket and a tubular portion that includes a flange (see Photo 2 and 6 of Ex. 1108), Blackmore (Ex. 1107), 4 Exs. 1102, 1104 and 1108, like the '991 patent (Ex. 1101), disclose hydrophilic materials known in the art prior to the claimed invention, particularly those hydrophilic materials sold under the trademark SWELLSEAL. Many hydrophilic materials were known prior to the alleged invention, including the inventor-admitted hydrophilic materials sold under the trademark SWELLSEAL. Hydrophilic materials were offered under this trademark at the time of the alleged invention as well as presently, see SWELLSEAL--WA, which was last accessed February 11,

16 Kiest '079 (Ex. 1106) and Tweedie '419 (Ex. 1111) additionally show that a flange is preferred and useful in this art. Independent Claim 1 requires an apparatus for repairing a main pipe line and a lateral pipe line connected thereto and in communication therewith to form a pipe joint or juncture. Both Kiest 118 and Kiest 597 disclose systems and methods for repairing main pipe lines with connected lateral pipe lines. Kiest 118 discloses repairing a main pipe line having a lateral pipe line connected thereto at a pipe joint or juncture. (E.g., Ex at Abstract; 2:50-55; Ex at 18-25). Similarly, Kiest 597 discloses repairing the juncture between the lateral sewer pipe and the main line sewer pipe. (E.g., Ex at 2:62-65; 4:20-21; Ex at 18-25). It would have been obvious to one of ordinary skill in the art at the time of the invention to combine Kiest 118 and Kiest 597 as they both relate to repairing pipes with lateral pipe lines. (See, e.g., Ex at 18-25). Kiest 118 also discloses and recommends that a hydrophilic material may be used as a component of the pipeline repair. (E.g., Ex 1102 at 2:17-20, 5:28-30, 5:52-55; Ex at 19-25). Kiest 118 recommends use of SWELLSEAL TM. (Id.; Ex at 19-25) The SWELLSEAL TM material is also disclosed for use in these situations in the 991 patent. (E.g., Ex at 4:49-55; Ex at 20-25). DeNeef 2006 and DeNeef 2002 both describe SWELLSEAL TM, which is also set forth in the 991 patent. (E.g., Ex at 4:49-55; Ex. 1104, Ex. 1105; Ex at 20-29). It would have been obvious to one of ordinary skill in the art at the time of 11

17 the invention to combine the disclosures of DeNeef 2006 and DeNeef 2002 with the disclosures of the other references because they all disclose use of the SWELLSEAL TM hydrophilic material. (Ex at 21-29). Furthermore, 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. In fact, the '991 patent further teaches that lateral pipe lines are connected to main pipe lines. (E.g., Ex at 1:25-26; Ex at 20-25). Often, damage occurs at the junction between the lateral pipe line and the main pipe line. (Id. at 1:26-27; Ex at 20-25). T-shaped or Y-shaped liner tubes have been utilized to fit within the junction between the lateral pipe line and the main pipe line. (Id. at 1:27-29; Ex at 20-25). Liner tubes form a T-shaped or Y-shaped liner after hardening to the interior of the junction between the lateral pipe line and the main pipe line. (Id. at 1:29-32; Ex at 20-25). Ground water outside the lateral pipe line and the main pipe line infiltrates through the damaged portion of the pipe line and migrates between the liner tube and the pipe line to a point where it can enter the pipe line. (Id. at 1:33-36; Ex at 20-25). To prevent this infiltration of ground water, the liner tube must be adhered to the interior surface of the pipe line being repaired. (Id. at 1:36-39; Ex at 20-25). Obtaining an adhesive bond between the liner tube and the interior of the pipe being repaired is challenging. (Id. at 1:41-43; Ex at 20-25). Even in those instances where the interior of the pipe line is suitable for accepting a liner, 12

18 shrinkage of the liner can occur, which creates a gap that allows ground water to flow around the liner and eventually infiltrate the pipe line. (Id. at 1:52-55; Ex at 20-25). For example, thermoset resins are used in cured-in-place pipe applications to form the liner to the interior of the pipe line. These thermoset resins tend to shrink during the curing process, thus creating a gap between the liner and the pipe. (Id. at 1:55-60; Ex at 20-25). Even the slightest shrinkage in the liner can be problematic. (Id.; Ex at 20-25). One of skill in the art would have been motivated to use the different hydrophilic materials to create a water tight seal between the interior of the original pipeline and the new liner pipe at the juncture between the main line and lateral line at least at weak points in the pipe system, such as junctions. (Ex at 30-39). Claim 1 further requires a bladder assembly comprising a main bladder tube and a lateral bladder tube extending from the main bladder tube. Kiest 118 discloses a bladder assembly that includes a main bladder tube and a lateral bladder tube. (E.g., Ex at 3:3-8; 3:29-35; 4:31-33; Fig. 3; Ex at 21). Furthermore, [t]he main pipe line and the lateral pipe line are joined together in a y-shaped configuration with the lateral pipe line extending in an oblique direction away from the main pipe line the bladder assembly [is] also y- shaped in configuration and conform generally to the y-shaped configuration of the lateral pipe line and the main pipe line. (E.g., Ex at 3:3-8; 3:29-35; 4:31-33; Fig. 3; Ex at 21) 13

19 Claim 1 requires a liner assembly comprising a main liner member at least partially surrounding the main bladder tube and a lateral liner tube extending from the main liner member. Kiest 118 discloses a liner assembly that comprises a main liner tube and a lateral bladder tube. (E.g., Ex at 3:3-8; 3:29-35; 4:31-33; Fig. 3; Ex at 21). The main pipe line and the lateral pipe line are joined together in a y-shaped configuration with the lateral pipe line extending in an oblique direction away from the main pipe line. The liner assembly [is] also y-shaped in configuration and conform generally to the y-shaped configuration of the lateral pipe line and the main pipe line. (E.g., Ex at 3:29-35; Ex at 21). Claim 1 also requires that the lateral liner tube and lateral bladder tube extend to a position within the lateral pipe line with the lateral liner tube between the lateral pipe line and the lateral bladder tube. Kiest 118 discloses the lateral bladder tube and the lateral liner tube being within the lateral pipe line and with the lateral liner tube being between the lateral pipe line and the lateral bladder tube. (E.g., Ex at 2:51-54; 4:43-45; 4:65 5:3; Claim 1; Ex at 23). Claim 1 further requires a gasket comprising a hydrophilic rubber. Kiest 118 discloses a hydrophilic band made of a material which is hydrophilic such as SWELLSEAL that is stretchable in the same fashion as rubber bands. (E.g., Ex at 2:17-20; 5:28-30; 5:52-55; Ex at 24). DeNeef 2006 discloses that SWELLSEAL TM is rubbery after it cures. (E.g., Ex at p. 1; Ex at 24). 14

20 DeNeef 2002 discloses that SWELLSEAL TM is available as rubber shapes. (E.g., Ex at p. 2; Ex at 24). The 991 patent teaches that the gasket, such as recited in claim 1, can be a band (E.g., Ex at Abstract; Ex at 25), and that the gasket can be made of SWELLSEAL TM. (E.g., Ex at 4:49-55; Ex at 25). DeNeef 2002 clearly shows that SWELLSEAL TM can be formed into shapes, such as the bands, contemplated in the 991 patent. As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of DeNeef 2006 and DeNeef 2002 with Kiest 118 and Kiest 597 as the SWELLSEAL TM material is used for sealing pipe lines. (Ex at 25). Claim 1 also requires that the gasket is positioned at least partially surrounding the main liner member and the lateral liner member between the main liner member and the pipe joint. Kiest 118 discloses a hydrophilic band is wrapped around the main liner tube and surrounding the lateral liner tube (E.g., Ex at 4:53-54; 3:36-38; Ex at 26). Kiest 597 discloses a gasket positioned at the juncture between the lateral sewer pipe and the main line sewer pipe. (E.g., Ex at 4:18-22; Ex at 27). The positioning of the gasket in Kiest 597 would have the benefit of more completely sealing the junction between the main line pipe and the lateral line pipe, which is one of the weakest points of the pipe system. (See, e.g., Ex at 2:26-32; Ex at 27). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to place the band or seal of Kiest 15

21 118 at the position disclosed in Kiest 597 to improve sealing properties and reduce damage caused by water infiltration. (Ex at 27). Claim 1 further requires that the gasket can swell in reaction to contact with a liquid. Kiest 118 discloses a hydrophilic band made of a hydrophilic material capable of swelling in response to being exposed to the liquid. (E.g., Ex at 2:47-50; 2:65-67; 3:39-43; 5:27-31; Ex at 28). Kiest 118 also recommends use of SWELLSEAL TM (E.g., Ex 1102 at 2:17-20, 5:28-30, 5:52-55; Ex at 28). DeNeef 2006 discloses that SWELLSEAL TM swells in the presence of moisture or water. (E.g., Ex at p. 1; Ex at 28). DeNeef 2002 discloses that SWELLSEAL TM expand[s] upon contact with water. (E.g., Ex at p. 2; Ex at 28). Clearly, SWELLSEAL TM is a gasket material that swells in reaction to contact with a liquid. (Ex at 28). For these reasons, the PTAB instituted proceedings against independent Claim 1 as obvious under 35 U.S.C. 103(a) in view of the references Kiest 118 (Ex. 1102) in view of Kiest 597 (Ex. 1103) in further view of DeNeef 2006 (Ex. 1104) in further view of DeNeef 2002 (Ex. 1105). Claims 2, 3 and 4 are obvious under 35 U.S.C. 103 over Kiest 118 (Ex. 1102) taken with Kiest 597 (Ex. 1103) in view of DeNeef 2006 (Ex. 1104), DeNeef 2002 (Ex. 1105), and Kiest '079 (Ex. 1106) in further view of Blackmore '087 (Ex. 1107), Kempenaers (Ex. 1108), Kiest 663 (Ex. 1109) and Tweedie '419 (Ex. 1111). As discussed for Claim 1 above, Kiest 118 and Kiest 597 both disclose methods and 16

22 systems for repairing pipe systems having main pipes and lateral pipes connected thereto. Kiest '118 and Kiest '597 would also readily be modified by DeNeef 2006 and DeNeef 2002 by one of ordinary skill in the art as discussed above. (See, e.g., Ex at 25, 29-30). Similarly, Kiest '079 teaches an apparatus for repairing the juncture of a main sewer line with a lateral pipe with a liner/bladder assembly comprising a liner assembly. (E.g., Ex at Title, Abstract, 1:54-62, 4:11-31, 5:64 6:4, Figs. 3-4 and 12-13; Ex at 38). Furthermore, the repair apparatus of Kiest '079 includes polymer tape placed around the junction of the lateral liner and the main sheet liner, wherein the polymer tape forms a flange component (Ex at Fig. 3; Ex at 38) that forms an airtight/liquid-tight seal and has a flange like portion that extends outwardly from one of the first and second ends of the tubular portion (Ex at Fig. 3; Ex at 38). When the liner assembly is cured in the desired position, the polymer tape 38 is located at the junction of the main and lateral pipes between the liner and the pipes. (Ex at Figs. 3 and and 5:46 6:4; Ex at 38). The polymer tape of Kiest '079 is similar regarding the location/position of the gasket of Claim 2 when the repair system is cured and meets the flange component of Claim 2. When considering Kiest '079 and Kiest '663, for example, there would have been explicit motivation to one of ordinary skill in the art to incorporate hydrophilic sealing material to form gaskets with tubular portions and flange-like shapes at the pipe junction because this would repair damaged junctures, thus rendering the limitations 17

23 of Claim 2 obvious. (See, e.g., Ex at 1:54-62; Ex at 9:31-65; Ex at 38-39). Blackmore '087 teaches an apparatus for repairing a pipe junction or interface. (Ex at 2:25-28; Figs. 5, 5B-C and 6C; Ex at 40). The repair material/structure is cylindrical in shape and comprises a tubular lateral lining portion (Ex at 12:49-51), and a flange face or portion that extends outwardly from one of the first and second ends of the tubular portion into the main pipe. (Ex at 12:25-36; Ex at 40). Tweedie '419 teaches a "top hat", containing a brim and a tubular section, which correspond with the gasket and flange portion of Claim 2. (Ex at 2:36-42, 4:15-34; Fig. 1 with brim 13 and tubular section 12; Ex at 41). The top hat is used to seal cracks at the juncture of main line pipes with lateral pipes, just as the gasket and flange portion of the '991 patent. (Ex at 3:66-4:14, 5:24-49; Ex at 41). When repairing the pipe using a launcher device and bladder, pressurized air is applied to a bladder, which causes the tubular section to evert into a lateral pipe line (which corresponds with the inversion of the '991 patent), align with the junction, and cause a resin to cure in place, forming a water tight seal. (Ex at 7:60-8:24; Ex at 41). One of ordinary skill in the art would have understood to combine the teachings of Blackmore '087 and Tweedie '419, particularly with Kiest '118 and Kiest '597, to form a gasket including a tubular portion and a flange portion because one of 18

24 ordinary skill in the art would have understood that forming a "top-hat" structure (i.e., a gasket including a tubular portion and a flange portion) would provide an effective seal at the juncture and seal cracks in this area. (See, e.g., Ex Fig. 5B and 5C, 12:25-37; Ex Figs. 10 and 11 showing tubular portion including a flange, 5:24-49; Ex ). Kempenaers teaches SWELLSEAL TM sealant used in a simulated joint and shows the flange forming aspects of the material when applied and used as a gasket or repair material. (Ex at 1-3; Ex at 42). Kiest 663 discloses a pipe repair apparatus that includes an outer carrier tube, an inner bladder tube, and a repair sleeve within the bladder tube. (E.g., Ex at Abstract; Ex at 43). Furthermore, the pipe repair apparatus of Kiest 663 includes gaskets and/or gasket equivalents 150, 192 for forming seals. (E.g., Ex at Figs ; Figs ; Ex at 43). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine Kiest 663 with the other references, particularly Kiest 118 and Kiest 597, as each of the references relates to systems and methods for pipe repair. (Ex at 44, 49). Claim 2 adds the limitation that the gasket includes a tubular portion having a first end and a second end and a flange portion extending outwardly from one of the first and second ends of the tubular portion. As discussed for independent Claim 1, from which Claim 2 depends, Kiest 118 discloses a hydrophilic band is made of a material which is hydrophilic such as SWELLSEAL that is stretchable in the 19

25 same fashion as rubber bands. (E.g., Ex at 2:17-20; 5:28-30; 5:52-55; Ex at 44). Similarly, Kiest 597 discloses a gasket positioned at the juncture between the lateral sewer pipe and the main line sewer pipe. (E.g., Ex at 4:18-22; Ex at 44). Therefore, the references teach use of a gasket for creating seals. Kempenaers also demonstrates that SWELLSEAL TM will conform to its surroundings whenever it is compressed during curing. (Ex at 1-3; Ex at 44, 47). Because of this, one of ordinary skill in the art would have understood that SWELLSEAL TM would form a gasket including a tubular portion with a flange when compressed against the pipe lines' inner walls. (Ex at 30-38, 41-49). Kiest '079 teaches a liner/bladder assembly 10 comprising a liner assembly 24 for repairing pipe junctions. (E.g., Ex at Figs. 3-4 and 12-13; 1:54-62; 4:11-31; 5:64 6:4; Ex at 45). Liner assembly 24 uses polymer tape 38 to form an airtight seal at the liner junction, where the polymer tape is in a tubular shape about the liner junction and is positioned at the pipe junction upon installation and curing. (Ex at Figs, 3-4 and 12-13; 5:64-6:4; Ex at 45). Furthermore, the polymer tape 38 is placed around the junction of the lateral liner and the main sheet liner in a manner wherein the polymer tape forms a flange component (Ex at Fig. 3; Ex at 45) that forms an airtight seal and has a flange like portion that extends outwardly from one of the first and second ends of the tubular portion (Ex at Fig. 3; Ex at 45). When the liner assembly is cured in the desired position, the polymer tape 38 is located at the junction of the main and lateral pipes 20

26 between the liner and the pipes. (Ex at Figs. 3 and and 5:46 6:4; Ex at 45). The polymer tape of Kiest '079 is similar regarding the location/position of the gasket of instant Claim 2 when the repair system is cured and meets the flange component of Claim 2. (Ex at 45). Additionally, Blackmore '087 teaches a repair material/structure 410 that can be cylindrical. (Ex at 2:25-28; 8:34-36; Figs. 5, 5B-C, 6C; Ex at 46). Wherein the repair material 410 comprises a tubular lateral lining portion 412 (Ex at 12:49-51; Ex at 46), and has a flange face or portion 411 that extends outwardly from one of the first and second ends of the tubular portion into the main pipe (Ex at 12:25-36; Ex at 46). The repair material 410 can be inverted into the main body of the apparatus (Ex at Fig. 5C and 12:60-62; Ex at 46), inserted and aligned into a main pipe to the junction with a lateral pipe, and expanded from the main pipe into the lateral pipe thereby being placed at the main and lateral pipe junction. (Ex at 46). Kempenaers teaches SWELLSEAL TM sealant used in a simulated joint. (Ex at 1-3; Ex at 47). "Photo 2" particularly shows the SWELLSEAL TM sealant as a gasket that forms a flanged portion after application to the joint. (Ex at 1 and 3; Photo 2 and Photo 6; Ex at 47). One of ordinary skill in the art would have realized that SWELLSEAL TM would change shape under pressure to create a flange-like aspect. Kiest 118 discloses a hydrophilic band is made of a material which is hydrophilic such as SWELLSEAL that is stretchable in the 21

27 same fashion as rubber bands. (E.g., Ex at 2:17-20; 5:28-30; 5:52-55; Ex at 30-38, 47). As seen in Photo 2 of Kempenaers, the gasket changes form under pressure and creates a flange-like projection from one of the first and second ends of the tubular portion. (Ex at Photo 2; Ex at 30-38, 47). Keist 663 teaches a gasket equivalent in Figs , which shows a gasket 150 in tubular-like fashion extending outwardly from one of the first and second ends. (E.g., Ex at Figs ; Ex at 48). The gasket 192 in Figs serves in the same capacity as the gasket 150 discussed herein. (E.g., Ex at Figs ; Ex at 48). Fig. 20 in Kiest 663 demonstrates how a gasket with flange aspects is used and delivered to the proper position at the junction of the pipe line. (E.g., Ex at Figs ; Ex at 48). As such, one of ordinary skill in the art at the time of the invention would have been motivated to combine the teachings of Kiest '079, Blackmore '087, Kempenaers, Kiest 663, and Tweedie '419 with the other references to create the gasket including a tubular portion and a flange portion of Claims 2-4 because one of ordinary skill in the art would have understood to modify the positioning of the sealing material to form a strong, effective seal at the pipe junction. (Ex at 30-38, 49). One of ordinary skill in the art would have understood that this positioning would create the claimed gasket including a tubular portion and a flange portion because the sealing material would form the claimed shape as the sealing material was compressed around the pipe junction. (See, e.g., Ex Fig. 5B and 5C, 12:25-37; Ex Figs. 10 and 11 22

28 showing tubular portion including a flange, 5:24-49; Ex at 1-3; Ex , 46, 57-59). One of ordinary skill in the art would have also understood that the claimed structure would be formed when the sealing material was compressed against the main pipe line and the lateral pipe line when the bladder was inflated and subsequently inverted. (See, e.g., Ex Fig. 5B and 5C, 12:25-37; Ex Figs. 10 and 11 showing tubular portion including a flange, 5:24-49; Ex at 1-3; Ex , 46, 57-59). Dependent claim 3 requires that the tubular portion is positioned between the lateral liner tube and the lateral pipe line at the pipe joint and the flange portion is positioned between the main liner member and the main pipe line at the pipe joint. Kiest '079 teaches polymer tape 38 in a circular or tubular portion when completed that has a flange portion extending from one of the first and second ends of the tubular portion. (Ex at Fig. 3; Ex at 50-51). Figs demonstrate placement of the repair apparatus at the main and lateral line junction, with Fig. 13 illustrating placement of the polymer tape 38 forming an airtight seal at the junction being expanded into the lateral line. (Ex at Figs and 5:46 6:4; Ex at 51). The flange aspect of polymer tape 38 would be positioned between the main liner member and the main pipe line at the pipe joint. (Ex at Figs ; Ex at 51). Kempenaers teaches SWELLSEAL TM sealant used in a simulated joint. (Ex at 1-3; Ex at 52). "Photo 2" in particular shows the SWELLSEAL TM 23

29 sealant as a gasket that forms a flanged portion after application to the joint. (Ex at 1 and 3; Photo 2 and Photo 6; Ex at 52). Being a known gasket forming material and sealant as used by Kiest '118, it would be known and expected by one of ordinary skill in the art that the SWELLSEAL TM would have formed the flange aspect between the main pipe liner and the main pipe when pressure was applied during the expansion and curing process. (Ex at 30-38). Blackmore '087 teaches repair material/structure 410 can be cylindrical (Ex at 8:34-36; Ex at 53), with a tubular lateral lining portion 412 (Ex at 12:49-51; Ex at 53), and a flange face or portion 411 that extends outwardly from one of the first and second ends of the tubular portion into the main pipe (Ex at 12:25-36; Ex at 53), wherein it would be between the main pipe line and main liner member at the pipe joint when used in combination with the other references. (Ex at 53). Kiest 663 teaches a gasket equivalent in Figs. 16 and 17, which show a gasket 150 in tubular-like fashion positioned at the juncture 142 between main pipeline 140 and the lateral pipe line 138. (E.g., Ex at Figs ; Ex at 54). The gasket 192 in Figs serves in the same capacity as the gasket 150 discussed herein. (E.g., Ex at Figs ; Ex at 54). Fig. 20 in Kiest 663 demonstrates how a gasket with flange aspects is used and delivered to the proper position in the junction pipe. (E.g., Ex at Figs ; Ex at 54). As such, 24

30 Kiest 663 discloses positioning the flange portion between the main liner member and the main pipe line at the pipe joint as claimed. (Ex at 54). Tweedie '419 teaches a "top hat" containing a brim and a tubular section, which correspond with the gasket and flange portion of Claim 2. (Ex at 2:36-42, 4:15-34; Fig. 1 with brim 13 and tubular section 12; Ex at 55). The top hat is used to seal cracks at the juncture of main line pipe with lateral pipe, just as the gasket and flange portion of the '991 patent. (Ex at 3:66-4:14, 5:24-49; Ex at 55). When repairing the pipe using a launcher device and bladder, pressurized air is applied to a bladder which causes the tubular section to evert into a lateral pipe line (which corresponds with the inversion of the '991 patent), align with the junction, and cause a resin to cure in place, forming a water tight seal. (Ex at 7:60-8:24; Ex at 55). One of ordinary skill in the art would have understood to combine the teachings of Blackmore '087 and Tweedie '419, particularly with Kiest '118 and Kiest '597, to form a gasket including a tubular portion and a flange portion because one of ordinary skill in the art would have understood that forming a "top-hat" structure (i.e., a gasket including a tubular portion and a flange portion) would provide an effective seal at the juncture and seal cracks in this area. (See, e.g., Ex Fig. 5B and 5C, 12:25-37; Ex Figs. 10 and 11 showing tubular portion including a flange, 5:24-49; Ex at 46-49, 56). 25

31 As such, one of ordinary skill in the art at the time of the invention would have further been motivated to combine these references to create an improved gasket/seal with a flange aspect for being between the main pipe line and the main pipe liner of Claim 3 by using materials that both strengthen the junction and provide continuity across the pipe junction between the liners and the pipes. (See, e.g., Ex at 30-39, 46-49, 56). Dependent claim 4 requires that the flange portion of the gasket is attached to the main liner member near the lateral liner tube. Kiest '079 teaches a liner/bladder assembly 10 comprising a liner assembly 24 having a polymer tape 38 that has a flange portion extending from one of the first and second ends of the tubular portion and is attached to the lateral liner 26 and the sheet liner 28 which is attached to the main liner member near the lateral tube. (Ex at Fig. 3; 4:11-35; Ex at 57). Kempenaers teaches SWELLSEAL TM sealant used in a simulated joint. (Ex at 1-3; Ex at 57). "Photo 2" in particular shows the SWELLSEAL TM sealant as a gasket that, when applied, forms a flanged portion after application to the joint (Ex at 1 and 3; Photo 2 and Photo 6; Ex at 57) that would be attached to the main liner member near the lateral liner tube when applied or cured. (Ex at 57). Kiest 663 teaches a gasket 192 in Figs. 19 and 20 with a rim portion connected to the main liner tube 184 near the lateral liner tube 186. (E.g., Ex at Figs. 19, 20; Ex at 58). Kiest 663 also discloses a gasket slid down over the lateral 26

32 liner until it reaches the junction between the lateral liner tube 186 and the main liner tube 184. (E.g., Ex at Figs. 19, 20, 11: 33-38; Ex at 58). As such, Kiest 663 discloses that the flange portion of the gasket is attached to the main liner member near the lateral liner tube. Tweedie '419 teaches a "top hat" containing a brim and a tubular section, which correspond with the gasket and flange portion of Claim 2. (Ex at 2:36-42, 4:15-34; Fig. 1 with brim 13 and tubular section 12; Ex at 59). The top hat is used to seal cracks at the juncture of main line pipes with lateral pipes, just as the gasket and flange portion of the '991 patent. (Ex at 3:66-4:14, 5:24-49; Ex at 59). When repairing the pipe using a launcher device and bladder, pressurized air is applied to a bladder which causes the tubular section to invert into a lateral pipe line (which corresponds with the inversion of the '991 patent), align with the junction, and cause a resin to cure in place, forming a water tight seal. (Ex at 7:60-8:24; Ex at 59). One of ordinary skill in the art would have understood to combine the teachings of Blackmore '087 and Tweedie '419, particularly with Kiest '118 and Kiest '597, to form a gasket including a tubular portion and a flange portion because one of ordinary skill in the art would have understood that forming a "top-hat" structure (i.e., a gasket including a tubular portion and a flange portion) would provide an effective seal at the juncture and seal cracks in this area. (See, e.g., Ex Fig. 5B and 5C, 12:25-37; Ex Figs. 10 and 11 showing tubular portion including a flange, 5:24-49; Ex , 60). 27

33 Therefore, Claims 2, 3 and 4 are obvious under 35 U.S.C. 103 over Kiest 118 (Ex. 1102) taken with Kiest 597 (Ex. 1103) in view of DeNeef 2006 (Ex. 1104), DeNeef 2002 (Ex. 1105), and Kiest '079 (Ex. 1106) in further view of Blackmore '087 (Ex. 1107), Kempenaers (Ex. 1108), Kiest 663 (Ex. 1109) and Tweedie '419 (Ex. 1111). IX. Claim Chart for Claim 1 of U.S. Patent No. 8,667,991 Ground 1 of Inter Partes Review Case No. IPR # , holding that BLD had presented sufficient information to show a reasonable likelihood that it would prevail in showing that Claim 1 would have been obvious over the following combination: Kiest 118 (Ex. 1102) in view of Kiest 597 (Ex. 1103) in further view of DeNeef (Ex. 1104) in further view of DeNeef 2002 (Ex. 1105). 991 Patent Claims Exs. 1102, 1103, 1104 and 1105 as applied 1. An apparatus for Kiest 118 discloses an apparatus for repairing a repairing a main pipe line main pipe line having a lateral pipe line connected and a lateral pipe line thereto at a pipe joint. (E.g., Ex at Abstract; connected thereto and in 2:50-55). Kiest 597 discloses repairing the juncture communication therewith between the lateral sewer pipe and the mainline to form a pipe joint, sewer pipe. (E.g., Ex at 2:62-65; 4:20-21). 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 Kiest 118 discloses a bladder assembly that includes a main bladder tube and a lateral bladder tube. The main pipe line and the lateral pipe line are joined together in a y-shaped configuration with the lateral pipe line extending in an oblique direction away from the main pipe line the bladder assembly [is] also y-shaped in configuration and conform generally to the y- shaped configuration of the lateral pipe line and the main pipe line. (E.g., Ex at 3:3-8; 3:29-35; 4:31-33; Fig. 3). Kiest 118 discloses a liner assembly that comprises a main liner tube and a lateral bladder tube. The main pipe line and the lateral 28

34 991 Patent Claims Exs. 1102, 1103, 1104 and 1105 as applied surrounding the main pipe line are joined together in a y-shaped bladder tube and a lateral configuration with the lateral pipe line extending in liner tube extending from an oblique direction away from the main pipe the main liner member; line. The liner assembly [is] also y-shaped in configuration and conform generally to the y- shaped configuration of the lateral pipe line and the main pipe line. (E.g., Ex at 2:52-55; the lateral liner tube and lateral bladder tube extendable to a position within the lateral pipe line with the lateral liner tube between the lateral pipe line and the lateral bladder tube; and a gasket comprising a hydrophilic rubber, the gasket positioned at least partially surrounding the main liner member and the lateral liner member between the main liner member and the pipe joint, the gasket capable of swelling in reaction to contact with a liquid. 3:29-35; 4:31-33; Fig. 3). Kiest 118 discloses the lateral bladder tube and the lateral liner tube being within the lateral pipe line and with the lateral liner tube being between the lateral pipe line and the lateral bladder tube. (E.g., Ex at 2:51-54; 4:43-45; 4:65 5:3; Claim 1). Kiest 118 discloses a hydrophilic band is made of a material which is hydrophilic such as SWELLSEAL that is stretchable in the same fashion as rubber bands. (E.g., Ex at 2:17-20; 5:28-30; 5:52-55). DeNeef 2006 discloses that SWELLSEAL TM is rubbery after it cures. (E.g., Ex at p. 1). DeNeef 2002 discloses that SWELLSEAL TM is available as rubber shapes. (E.g., Ex at p. 2). The 991 patent teaches a gasket using a band and SWELLSEAL TM in the gasket. (E.g., Ex at Abstract; 4:49-55). Kiest 118 discloses a hydrophilic band is wrapped around the main liner tube and surrounding the lateral liner tube (E.g., Ex at 4:53-54; 3:36-38). Kiest 597 also discloses a gasket positioned at the juncture between the lateral sewer pipe and the main line sewer pipe. (E.g., Ex at 4:18-22). The 991 patent also teaches that a gasket is a band. (E.g., Ex at Abstract). Kiest 118 discloses a hydrophilic band is made of a hydrophilic material capable of swelling in response to being exposed to the liquid. (E.g., Ex. 29