Trials@uspto.gov
`571-272-7822
`
` Paper No. 9
`Entered: December 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01396
`Patent 9,156,203 B2
`____________
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
` Paper No. 9
`Entered: December 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01396
`Patent 9,156,203 B2
`____________
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01396
`Patent 9,156,203 B2
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`
`INTRODUCTION
`I.
`A. Background and Summary
`Bestway (USA), Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of U.S. Patent No. 9,156,203 B2 (“the ’203 patent,”
`Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of
`claims 1 and 6–29 of the ’203 patent on the grounds of anticipation under
`35 U.S.C. § 102 and of obviousness under 35 U.S.C. § 103. Intex Marketing
`Ltd. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 7
`(“Prelim. Resp.”).
`
`An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered
`the arguments and evidence presented by Petitioner and Patent Owner, we
`determine that Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in establishing the unpatentability of the challenged claims of
`the ’203 patent.
`
`B. Related Proceedings
`The parties agree that there are no active matters involving the ’203
`
`patent. Pet. 2; Paper 4 (Patent Owner’s Mandatory Notice), 2. Patent
`Owner states that the ’203 patent previously was the subject of litigation in
`the United States District Court for the Central District of California and
`before the International Trade Commission. Paper 4, 2. Petitioner also
`states that the parties are participating currently in litigation in two cases
`before the United States District Court for the Central District of California,
`that those cases involve patents unrelated to the ’203 patent, that the patents
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`involved in those two district court cases are the subject of proceedings
`pending before the Patent Trial and Appeal Board, and that the District
`Court actions are stayed pending the outcome of the PTAB cases. Pet. 2.
`
`C. The ’203 Patent
`The ’203 patent is titled “Method for Producing an Air Mattress,” and
`
`is directed to a manufacturing method for creating internal tensioning
`structures that are used in inflatable structures such as mattresses. See
`Ex. 1001, 2:7–9. The tensioning structures maintain two surfaces of the
`inflatable structure in a desired geometric arrangement when the product is
`inflated. Id. at 2:9–12. The Specification of the ’203 patent explains that
`prior art tensioning structures of belt- or sheet-like PVC tension bands
`contributed to an increased weight and compressed/folded volume of the
`inflatable product. Id. at 1:62–2:3. According to the Specification, the
`tensioning structures of the ’203 patent “are lightweight and occupy minimal
`volume when the device is deflated and packed away, while also functioning
`as a strong and durable internal support upon inflation and use of the
`inflatable device.” Id. at 6:9–13.
`
`One embodiment of a mattress is depicted in Figure 3 of the ’203
`patent, and is reproduced below.
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`FIG. 3 is an exploded, perspective view of an inflatable bed incorporating
`tensioning structures made in accordance with the disclosure of the ’203
`patent. Id. at 4:34–36. Figure 3 depicts inflatable bed 10 having upper sheet
`(or material) 1 and lower sheet (or material) 2, side wall 4, a plurality of
`tensioning structures 3 having a plurality of strands 32 and weld strips 31,
`and a valve 6 to facilitate inflation and deflation of the mattress. Id. at 6:45–
`46, 7:48–53, 8:22–35.
`
`Figure 2, shown below, depicts an example of a tensioning structure.
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`Figure 2 is an enlarged perspective view of a tensioning structure. Id.
`at 4:32–33. “[T]ensioning structure 3 is shown joining upper material 1 to
`lower material 2.” Id. at 6:40–41. “In the illustrated embodiment,
`tensioning structure 3 includes upper and lower weld strips 31 connected to
`one another by a plurality of substantially parallel strands 32.” Id. at 6:41–
`44.
`An embodiment of an apparatus for manufacturing tensioning
`
`structures 3 is depicted in Figure 7, shown below.
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`Figure 7 is a perspective view of an apparatus for producing bulk material
`for tensioning structures. Id. at 4:48–49. As shown in Figure 7, a plurality
`of strands 32 (mislabeled in Figure 7 as 31; see Figure 8) are delivered via
`strand guide A to welder 40 where weld strips 31, which are positioned
`above and below strands 32, are welded to the strands. Id. at 11:3–31, 50–
`58. The ’203 patent explains that alternatives to welding include the use of
`adhesives or sewing to join strands 32 to weld strips 31. Id. at 11:38–44.
`Similarly, the ’203 patent indicates that the weld strips may be affixed to the
`upper and lower sheets 1, 2, of the mattress using alternative methods. Id. at
`11:44–49.
`
`D. Illustrative Claim
`Of the challenged claims of the ’203 patent, method claims 1, 12, 19,
`
`and 24 are independent claims. The remaining challenged claims depend
`directly or indirectly from one of these independent claims. Claim 1,
`reproduced below with emphasis added, is illustrative:
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`A method for producing an air mattress comprising the
`1.
`steps of
`providing an upper sheet made of weldable plastic,
`providing a lower sheet made of weldable plastic,
`providing a side wall made of weldable plastic,
`providing a plurality of tensioning structures, each tensioning
`structure including
`at least one tensile sheet having a first side, a second side,
`and plurality of holes extending through the tensile
`sheet from the first side to the second side and
`a plurality of weld strips including
`a first weld strip positioned on the first side of the
`tensile sheet,
`a second weld strip positioned on the second side of
`said tensile sheet, the first and second weld
`strips welded together with said tensile sheet
`positioned between the first and second
`strips,
`a third weld strip positioned on the first side of said
`tensile sheet, and
`a fourth weld strip positioned on the second side of
`said tensile sheet, the third and fourth weld
`strips welded together with said tensile sheet
`positioned between the third and fourth
`strips,
`welding the plurality of tensioning structures to the upper sheet
`by welding at least one of the first and second weld strips
`to the upper sheet,
`welding the plurality of tensioning structures to the lower sheet
`by welding at least one of the third and fourth weld strips
`to the lower sheet,
`creating an inflatable chamber defined by the upper sheet, lower
`sheet, and side wall by the steps of
`coupling the side wall to the upper sheet, and
`coupling the side wall to the lower sheet, and
`providing a valve in communication with the inflatable chamber
`to facilitate inflation and deflation of the air mattress.
`Ex. 1001, 18:53–19:22 (emphasis added).
`
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`Reference
`
`E. Applied References
`Dates
`
`Pennel
`
`US 3,683,431
`
`Harris
`GB’0231
`
`GB 313,023
`
`Stutz
`
`US 3,379,596
`
`Filed June 1, 1970; Issued
`Aug. 15, 1972
`Filed Mar. 1, 1928;
`Complete Specification
`Accepted June 4, 1929
`Filed June 15, 1964; Issued
`Apr. 23, 1968
`
`Exhibit
`No.
`Ex. 1002
`
`Ex. 1008
`
`Ex. 1009
`
`Petitioner also relies on the declaration of Dr. Ali M. Sadegh dated
`
`May 12, 2017 (Ex. 1014), in support of its arguments. Patent Owner relies
`on the declaration of Mr. Bernhard Kuchel dated September 1, 2017
`(Ex. 2001), in support of its arguments.
`
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference[s]
`Basis
`Claim(s)
`Pennel
`§ 102(b)
`1, 6–29
`Pennel and Harris GB’023
`§ 103(a)
`1, 6–29
`Pennel, Harris GB’023, and Stutz
`§ 103(a)
`6, 13–15, and 20–23
`
`
`1 Exhibit 1008 is a Provisional and Complete Patent Specification, naming
`The Avon India Rubber Company Limited and William John Harris of
`Wiltshire, England. Ex. 1008, 1. We refer to this reference as “Harris,” as
`does Petitioner in the related case IPR2017-01397. We include the
`“GB’023” designation to distinguish this document from Exhibit 1004,
`which is a United States Patent to, inter alia, Herschel G. Harris of New
`York.
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`II. ANALYSIS
`A. Preliminary Matter
`Patent Owner, in addition to addressing Petitioner’s challenges on the
`
`merits, urges us to exercise our discretion to deny institution as to Grounds 1
`and 2 of the Petition under 35 U.S.C. § 325(d)2. Prelim. Resp. 27–34.
`Patent Owner notes that the Pennel and Harris GB’023 references were the
`subject of a Third Party Submission during prosecution of the application
`that led to the issuance of the ’203 patent (id. at 9–10; see Ex. 1016, 342–
`353, 391–396) and asserts that the anonymous third-party presenter was
`Petitioner Bestway (Prelim. Resp. 10–11). Patent Owner argues that “[b]y
`relying on Pennel as an allegedly anticipatory reference in Ground 1, the
`Petition presents ‘the same’ prior art and arguments as the Third Party
`Submission” and that “[b]y relying on Pennel in combination with GB’023
`in Ground 2, the Petition presents ‘the same’ prior art and arguments as the
`Third Party Submission.” Id. at 30–32.
`
`We have considered Patent Owner’s arguments concerning “the
`same” art and arguments made during prosecution. However, because we
`determine that the Petition fails on the merits, we see no need to exercise our
`discretion here.
`
`
`2 “In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`35 U.S.C. § 325(d).
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`B. The Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Sadegh, opines that:
`[T]he relevant technical field is inflatable products and materials
`used in the manufacture of such products [and] a person of
`ordinary skill in this field at the time would be a person having
`at least a bachelor’s degree in mechanical engineering, or an
`equivalent field, and two to four years of practical experience in
`product design, manufacturing, and related materials.
`Ex. 1014 ¶¶ 42–43; see Pet. 17. Patent Owner’s declarant, Mr. Kuchel,
`affirmatively states agreement with Dr. Sadegh’s opinions in this regard
`(Ex. 2001 ¶¶ 50–51) and Patent Owner acknowledges that “[t]he parties do
`not dispute the relevant technical field or the education and experience of a
`person having ordinary skill in the art” (Prelim. Resp. 14).
`
`For purposes of this decision, we apply the parties’ agreed-upon
`description of the person of ordinary skill in the art.
`
`C. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one 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).
`Weld Strip, Welder, Welding, Welded
`Claim 1 recites the structural element “weld strip,” recites weld strips
`
`“welded together” with the tensile sheet, and recites steps calling for the
`“welding” of the tensioning structures to the upper and lower sheets of the
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`mattress via “welding” the weld strips to those sheets. The other challenged
`independent claims—claims 12, 19 and 24—contain the same or similar
`recitations. See, e.g., Ex. 1001, 20:24–26 (claim 12 reciting the step of
`“welding” weld strips together with the tensile sheet rather than providing
`“welded” weld strips as recited in claim 1).
`
`Petitioner proposes a construction for “weld strip” and “welder” (of
`dependent claim 213) but does not propose an explicit construction for
`“welded” or “welding.” See Pet. 28–30. Petitioner argues, based on its
`proposed construction of “weld strip,” that the term “welder” means “any
`means for fixedly connecting the weld strips to the tensile sheet material.”
`Id. at 32; see also Ex. 1014 ¶ 87 (Dr. Sadegh’s opinion regarding “‘the
`welder’ of Claim 15”). In its discussion of the anticipation ground,
`Petitioner impliedly construes “welding” as “fixedly connecting.” Pet. 39
`(“Pennel disclosed fixedly connecting (i.e., welding) each pair of bands with
`the thread loops sandwiched between each pair.”); see also id. at 40–41
`(Petitioner referring to “connected” and “adhered” in arguing that Pennel
`discloses a limitation reciting the step of “welding.”).
`
`Patent Owner asserts that Petitioner’s construction of “welding” is
`unreasonably broad. See Prelim. Resp. 1. Patent Owner argues that “the
`broadest reasonable interpretation of ‘welding’ (and its past tense, ‘welded’)
`is ‘joining thermoplastics by application of temperatures high enough to
`melt the materials so that they fuse to a permanent union on cooling.’”
`Prelim. Resp. 14–15 (citing Ex. 2001 ¶¶ 70, 81). Patent Owner further
`
`
`3 Patent Owner notes that Petitioner erroneously asserts that the term
`“welder” is found in dependent claim 15. Prelim. Resp. 15 n.3.
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`argues that the Specification clearly distinguishes welding from other types
`of connecting and, therefore, Patent Owner’s proposed construction excludes
`other methods of joining materials such as by the use of an adhesive or by
`sewing. Prelim. Resp. 14–15.
`
`For the reasons that follow, we determine that Petitioner’s implied
`construction of “welding”—namely, as encompassing any method resulting
`in two materials being fixedly connected—is unreasonably broad when the
`claims are read in light of the Specification of the ’203 patent. For the same
`reasons, Petitioner’s construction of “welded” and “welder” are
`unreasonably broad.
`
`As Petitioner notes, Pet. 30, the Specification of the ’203 patent states:
`“the term ‘weld strip’ as used herein refers to any strip of material suitable
`for affixation to another material, whether by application of heat, application
`of adhesive, mechanical joining methods such as sewing and riveting, or any
`other suitable method,” Ex. 1001, 11:45–49. Thus, the Specification
`indicates that there are several methods that may be used to affix materials
`together. However, the Specification precedes this definition of “weld strip”
`by stating “[m]oreover, weld strips 31 need not be welded to upper or lower
`materials 1, 2. . .,” Ex. 1001, 11:44–45 (emphasis added), which
`distinguishes “welding” from the broader genus of affixation techniques
`recited in the portion Petitioner directs us to. This distinction between the
`narrower meaning of “welding” and the broader category of affixing
`techniques is also drawn by the language and structure of the claims
`themselves. Claim 1 recites, in some steps, the specific method of
`“welding” and recites materials “welded together.” E.g., Ex. 1001, 19:6–7,
`9–11. In contrast, claim 1 utilizes, in another step, the broader term
`
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`“coupling.” Id. at 19:16–19 (“creating an inflatable chamber . . . by the steps
`of coupling the side wall to the upper sheet, and coupling the side wall to the
`lower sheet”). Thus, the language of claim 1 distinguishes the specific
`category of “welding” from the more generic concept of “coupling.”
`
`We agree with Patent Owner that the Specification of the ’203 patent
`distinguishes between welding and other methods of affixation. The
`Specification identifies multiple welding methods and then identifies
`alternatives to the use of welding methods:
`
`Welder 40 may be a thermofusion device, using heat to
`join two plastic materials together, or may be a high-frequency
`welder, in which electromagnetic waves take advantage of
`excitable chemical dipoles in the plastic material to soften and
`join the materials to one another. Moreover, any suitable
`welding method may be employed by welder 40, as required or
`desired for a particular material and process. Another alternative
`is to forego a welding process and use adhesive to join strands
`32 to weld strips 31. Where adhesive connection is 40 utilized,
`welder 40 may be replaced by a similarly arranged adhesive
`device, such as a gluing device. Yet another alternative is to
`utilize a sewing machine to mechanically join weld strips 31 to
`strands 32.
`Id. at 11:32–44. The Specification, in describing a particular embodiment,
`similarly distinguishes welding and other joining methods:
`
`Finally, the abutting pairs of weld strips 31, 31' are joined
`to one another and to strand 532, such as by welding or by one
`of the other attachment methods discussed above. For example,
`weld strips 31, 31', may be joined by a high frequency welder or
`another thermofusion device. It is also contemplated that strand
`532 can be fixed to weld strips 31, 31', and weld strips 31 can be
`fixed to weld strips 31', by adhesive or by sewing.
`Id. at 16:4–11.
`
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`As to the meaning of “welding,” the Specification describes
`
`connecting the weld strips of the tensioning structures to the mattress’s
`upper and lower sheets by “welding,” and that such is accomplished by
`“applying heat to melt and fuse the material of weld strips 31 to the abutting
`material.” Id. at 8:4–8. As indicated in the quote above, “any suitable
`welding method may be employed,” including the utilization of “a
`thermofusion device, using heat to join two plastic materials together, or . . .
`a high-frequency welder, in which electromagnetic waves take advantage of
`excitable chemical dipoles in the plastic material to soften and join the
`materials.” Id. at 11:32–37.
`
`Patent Owner, in support of proposed construction of “welding,”
`provides extrinsic evidence in the form of declaration testimony from
`Mr. Kuchel and a technical dictionary. Ex. 2001 ¶¶ 70–84; Ex. 2004
`(HAWLEY’S CONDENSED CHEMICAL DICTIONARY (14th ed. copyright 2001)).
`The technical dictionary defines “welding” as: “Joining or bonding of
`metals or thermoplastics by application of temperatures high enough to melt
`the materials so that they fuse to a permanent union on cooling.”
`Ex. 2004, 3. The dictionary identifies several methods used for welding
`certain thermoplastics. Id.
`
`On the record before us and for purposes of this decision, we conclude
`that “welding” means joining or bonding of thermoplastics by application of
`temperatures high enough to melt the materials so that they fuse to a
`permanent union on cooling, and excludes joining by other means such as
`the use of an adhesive.
`
`We determine, on this record and for purposes of this decision, that no
`other claim terms require express construction.
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`D. The Alleged Anticipation of Claims 1 and 6–29 By Pennel
`Petitioner alleges that independent claims 1, 12, 19, and 24 and
`
`dependent claims 6–11, 13–18, 20–23, and 25–29 of the ’203 patent are
`anticipated by Pennel (Ex. 1002). See Pet. 33–45 (addressing the
`independent claims). Patent Owner argues that Petitioner has failed to show
`that the limitations involving “welding” and “welded” are satisfied by
`Pennel. See Prelim. Resp. 42–44. We find Patent Owner’s argument
`persuasive.
`
`Pennel discloses the use of ties to control the distance between walls
`(e.g., top and bottom sheets) of an inflatable structure. See Ex. 1002, 1:3–6.
`Figure 2 of Pennel is shown below.
`
`
`Figure 2 is a perspective view of a thread tie in an inflatable mattress. Id.
`at 2:15–16. The mattress comprises two walls 1, 2 of gummed or rubberized
`fabric interconnected by ties 4. Id. at 2:43–48.
`
`In FIG. 2, the tie thread is a continuous thread wound in
`the form of a helix around bands 6,7 of gummed or rubberized
`fabric. The portions 11a, 11b of the coils 11 which extend across
`the bands are fastened to the latter by complementary bands 12,
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`13 of gum or rubber which are adhered to the respective bands
`6,7 between the coils l1 and to the corresponding wall 1 or 2.
`The portions 11a, 11b of the thread are thus pinched and retained
`between the bands 6,12 and 7,13 respectively.
`Id. at 2:53–62 (emphasis added). Pennel states that the “two bands 6,7 of
`gummed or rubberized fabric [are] adhered to the respective walls 1,2.” Id.
`at 2:50–52 (emphasis added).
`
`As mentioned above, Claim 1 recites weld strips “welded together”
`with the tensile sheet. Ex. 1001, 18:67–19:2, 19:6–8. For these limitations,
`Petitioner points to Pennel’s disclosure of “complementary bands 12, 13 of
`gum or rubber which are adhered to the respective bands 6, 7 between the
`coils 11.” Pet. 38 (quoting Ex. 1002, 2:56–59). Petitioner contends that
`“Pennel disclosed fixedly connecting (i.e., welding) each pair of bands with
`the thread loops sandwiched between each pair, as illustrated in Figure 5,
`where the two pairs of bands and the set of threads pass between the rollers
`(64 and 66) and ‘converge toward the bite or pinching portion . . . of a small
`pressure-applying and driving press device 67.’” Id. at 39 (quoting Ex. 1002
`at 3:58–60). According to Petitioner, “[t]his ‘pinching portion’ is what
`welds the . . . bands together with the set of threads positioned in between.”
`Id. at 40 (citing Ex. 1014 ¶ 104).
`
`Claim 1 also recites steps calling for the “welding” of the tensioning
`structures to the upper and lower sheets of the mattress via “welding” the
`weld strips to those sheets. Ex. 1001, 19:10–15. For these limitations,
`Petitioner contends “Pennel disclosed that ‘two gummed bands . . . are
`adapted to be connected to the walls of the inflatable structure,’” and also
`points to the disclosure of “bands 6, 7 of gummed or rubberized fabric
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`adhered to the respective walls 1, 2.” Pet. 40–41 (quoting Ex. 1002, 2:2–4,
`50–52).
`
`Petitioner’s arguments as to these “welded” and “welding” limitations
`and the corresponding declaration testimony of Dr. Sadegh are based on an
`unreasonably broad construction of “welding.” See Pet. 39 (equating
`“fixedly connecting” with “welding”), 40–41 (equating connecting and
`adhering to “welding”); Ex. 1014 ¶¶ 103–109. Petitioner does not direct our
`attention to any persuasive evidence that a person of ordinary skill in the art
`would understand Pennel to disclose that the components identified as weld
`strips are “welded together” with a tensile sheet or are attached by “welding”
`to the mattress’s upper and lower sheets. At most, Petitioner has shown that
`the components are adhered to each other. This is inadequate to demonstrate
`a reasonable likelihood of prevailing on the ground of anticipation of
`claim 1.
`
`The other challenged independent claims contain the same or similar
`limitations directed to “welding,” and the remaining challenged claims each
`depend from one of these independent claims. For these remaining claims,
`Petitioner relies on its unpersuasive welding-related arguments made for
`claim 14. See, e.g., Pet. 44, 45. Accordingly, Petitioner has not
`
`
`4 We acknowledge Petitioner’s arguments for claim 12 regarding the
`purported disclosure in Pennel of weld strips “made of weldable plastic”
`because the materials “can be adhered to one another” or “can be fixedly
`connected to one another through the application of heat, pressure, or
`adhesives.” Pet. 44; see also id. at 35 (discussing weldable upper and lower
`sheets of claim 1). Even if we were to accept as correct Petitioner’s
`contentions, the disclosure of a material capable of being welded does not, in
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`demonstrated a reasonable likelihood of prevailing on the ground of
`anticipation by Pennel as to any challenged claim.
`
`E. The Alleged Obviousness of Claim 1 and 6–29
`in View of Pennel and Harris GB’023
`Petitioner argues that the same claims that are subject to the
`
`anticipation ground also would have been obvious over Pennel (Ex. 1002)
`and Harris GB’023 (Ex. 1008). Pet. 64. For reasons discussed below,
`Petitioner has not shown a reasonable likelihood that it would prevail in
`establishing unpatentability of claims 1 and 6–29 as obvious over Pennel and
`Harris GB’023.
`
`Pennel has been discussed above. Harris GB’023 discloses an air
`cushion subdivided by partitions to permit the slow passage of air from one
`compartment to another. Ex. 1008, 1, ll. 54–60. Figure 6 is shown below.
`
`
`Figure 6 depicts an embodiment of the method of constructing the partition.
`Id. at 1, ll. 83–84. Outer wall a “is made of inextendable or extensible
`material, made of rubber proofed canvas or rubber sheet.” Id. at 1, ll. 85–88.
`Partitions d include insertions g of canvas or linen permeable to air. Id. at 2,
`
`
`this case, rise to the level of an adequate disclosure of the performance of the
`step of actually “welding” those materials.
`18
`
`
`
`IPR2017-01396
`Patent 9,156,203 B2
`
`ll. 2, 10–13. “The partition may be attached to the cover by webs
`comprising several layers of rubber, canvas or linen, h, i, j.” Id. at 2, ll. 14–
`16.
`Petitioner offers this ground in the alternative to the Pennel
`
`anticipation ground discussed above. See Pet. 65. Petitioner contends
`Harris GB’023 discloses an inflation/deflation valve and weld strips located
`on two sides of a tensile sheet. Pet. 66–69. Petitioner further argues,
`regarding the claim term “weldable plastic,” that it would have been obvious
`“to make a simple substitution of the ‘gum or rubber’ materials taught in
`Pennel with any other known material” and that “[o]ne of skill in the art at
`the time would have recognized that any weldable plastic, such as PVC,
`could have been used not only for the mattress sheets, but also for the
`‘bands.’” Id. at 69–70 (citations omitted).
`
`Petitioner’s articulation of this obviousness ground based on the
`combination of Pennel and Harris GB’023 does not cure the defect in the
`underlying Pennel anticipation ground, namely the failure to identify a
`disclosure related to components that have been welded and to the steps of
`welding. See Prelim. Resp. 64 (Patent Owner arguing that Petitioner fails to
`explain how Harris GB’023 discloses weld strips welded together).
`Although Petitioner argues that it would have been obvious to use weldable
`plastic for certain components, Petitioner—presumably continuing to rely on
`its overly broad construction of “welding”—stops short of addressing the
`actual welding of those components. See Pet. 65–70 (Petitioner’s
`obviousness analysis for all the challenged independent claims.).
`
`19
`
`
`
`IPR2017-01396
`Patent 9,156,203 B2
`
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`
`as to any challenged claim on the ground of obviousness over Pennel and
`Harris GB’023.
`
`F. The Alleged Obviousness of Claims 6, 13–15, and 20–23
`Over Pennel, Harris GB’023, and Stutz
`Claims 6, 13–15, and 20–23 each depends directly or indirectly from
`
`one of the challenged independent claims. Petitioner argues that these
`claims would have been obvious over Pennel, Harris GB’023, and Stutz.
`Pet. 32, 72. Petitioner offers this ground in the alternative to the grounds
`addressed above, arguing that Stutz teaches any limitations of these
`challenged dependent claims that might be missing from Pennel and Harris
`GB’023. Id. at 72.
`
`Stutz pertains to a non-woven fabric that “has its fibers laid out in grid
`form with the fibers being bound together at their points of contact thereby
`giving the fabric good tensile strength with porosity, air-permeability,
`flexibility, softness and the appearance and hand of a woven fabric.”
`Ex. 1009, 1:11–12, 21–28. Petitioner argues that Stutz teaches a method of
`manufacturing a strong, lightweight material suitable for use as a tensioning
`structure in an inflatable product. Pet. 73.
`
`Petitioner’s arguments against these claims refer to and rely on the
`same contentions discussed above regarding the alleged anticipation by
`Pennel and the alleged obviousness, based on Pennel and Harris GB’023, of
`the independent claims. See, e.g., Pet. 79 (Petitioner arguing, for dependent
`claims 20–21, “Pennel taught every feature of [independent] claim 19 for the
`reasons stated in Sections IX.A.1 and IX.A.2, supra.”). Petitioner does not
`rely on Stutz in any persuasive manner that cures the underlying defects in
`
`20
`
`
`
`IPR2017-01396
`Patent 9,156,203 B2
`
`the articulations of the grounds of alleged anticipation and obviousness of
`the independent claims5. See, e.g., Prelim. Resp. 73 (Patent Owner arguing
`that Petitioner fails to explain how Stutz’s teaches tensioning structures
`being welded to the top and bottom sheets of an air mattress.). Thus, for the
`same reasons discussed above, Petitioner has not shown a reasonable
`likelihood of prevailing in showing that claims 6, 13–15, and 20–23 would
`have been obvious over Pennel, Harris GB’023, and Stutz.
`
`III. CONCLUSION
`Petitioner has not demonstrated that there is a reasonable likelihood of
`
`establishing the unpatentability of any of claims 1 and 6–29 of the ’203
`patent.
`
`IV. ORDER
`For the foregoing reasons, it is
`
`ORDERED that the Petition is denied as to the challenged claims, and
`
`no trial is instituted.
`
`
`
`
`
`
`
`5 For dependent claim 21, Petitioner asserts, without elaboration, that Stutz’s
`evaporator is the claimed “welder.” Pet. 79 (“the weft fibers (12) remains
`stationary with respect to the evaporator (50) (i.e., the claimed welder)”).
`As discussed above, Petitioner’s applied construction of “welder” is
`unreasonably broad.
`
`21
`
`
`
`IPR2017-01396
`Patent 9,156,203 B2
`
`For PETITIONER:
`Michael P. Chu
`Brian A. Jones
`MCDERMOTT WILL & EMERY
`mchu@mwe.com
`bajones@mwe.com
`
`
`For PATENT OWNER:
`Trevor Carter
`Andrew M. McCoy
`FAEGRE BAKER DANIELS
`trevor.carter@faegrebd.com
`andrew.mccoy.ptab@faegrebd.com
`
`
`22
`
`
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