Trials@uspto.gov Paper 9
`571-272-7822 Entered: January 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01655
`Patent 9,254,240 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
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`571-272-7822 Entered: January 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01655
`Patent 9,254,240 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
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`
`I.
`INTRODUCTION
`A. Background and Summary
`Bestway (USA), Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of U.S. Patent No. 9,254,240 B2 (“the ’240 patent,”
`Ex. 1001). Paper 1 (“Second Petition” or “Second Pet.”). The Petition
`challenges the patentability of claims 18–22 and 30 of the ’240 patent on the
`grounds of obviousness under 35 U.S.C. § 103. As discussed below, these
`claims were challenged by Petitioner in its prior petition filed in Case
`PGR2017-00003 (Paper 1, “First Petition” or “First Pet.”). Intex Marketing
`Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”).
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a). Under the circumstances of this case, for
`the reasons explained below, we exercise our discretion to not institute an
`inter partes review as to any of claims 18–22 and 30 of the ’240 patent.
`
`B. Related Proceedings
`Both parties identify, as matters involving the ’240 patent, Intex
`
`Recreation Corp. v. Bestway USA, Inc. et al, Civil Action No. 2:16-cv-
`03950 (C.D. Cal.) and Patent Trial and Appeal Board case PGR2017-00003.
`Second Pet. 3; Paper 5, 2. Petitioner also indicates that that District Court
`action has been consolidated with another case involving the parties and
`involving another patent, U.S. Patent No. 6,568,011, and that that patent is
`the subject of IPR2017-00848. Second Pet. 3.
`
`C. The ’240 Patent
`The ’240 patent is titled “Inflatable Spa.” Figure 1 of the ’240 patent
`
`is reproduced below:
`
`2
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`
`
`Figure 1 is an exploded perspective view of an inflatable spa, including
`tensioning structures. Ex. 1001, 4:27–29. The inflatable spa 100 has
`internal wall 106 and external wall 108 that together, along with top and
`bottom walls (102 and 104, respectively), define an inflatable air chamber
`110. Id. at 5:60–6:9. Tensioning structures 120 couple the inner and outer
`walls, and may have gaps at the top and bottom. Id. at 6:30–38. Figure 6 of
`the ’240 patent is reproduced below:
`
`
`Figure 6 is “an exploded perspective view of the tensioning structure
`including a porous layer and an attachment layer.” Id. at 4:38–39. Each
`
`3
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`tensioning structure may include “porous layer or sheet” 130 and attachment
`layer or sheet 132, with the porous layer sandwiched between two
`attachment layers or attached to a single attachment layer. Id. at 6:39–50.
`The porous layer may be formed from ligaments or frame members that
`define holes or pores. Id. at 6:64–66. The porous layer may be constructed
`of a mesh, cloth, or string with interwoven members. Id. at 7:39–42. “When
`the air chamber 110 is pressurized, frame members . . . may be placed in
`tension to help maintain the shape of spa 100.” Id. at 6:66–7:1.
`
`D. Illustrative Claim
`All of the claims of the ’240 patent challenged in this case are
`
`dependent claims that depend indirectly from independent claim 1.
`Claim 18 is illustrative and is reproduced below along with claims 1 and 17
`from which it depends.
`1. An inflatable product comprising:
`
`a first wall;
`
`a second wall;
`
`an inflatable air chamber defined by the first wall and the
`second wall; and
`
`a plurality of tensioning structures located in the air
`chamber and coupled to the first wall and the second wall, each
`tensioning structure including:
`
`at least one attachment sheet having an outer perimeter;
`and
`a porous sheet coupled to the at least one attachment sheet,
`
`the porous sheet having an outer perimeter that substantially
`overlaps the outer perimeter of the at least one attachment sheet,
`the porous sheet including a plurality of enclosed pores located
`entirely within the outer perimeter of the at least one attachment
`sheet and a plurality of frame members that intersect to define
`the plurality of enclosed pores.
`
`4
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`
`17. The inflatable product of claim 1, wherein the at least one
`attachment sheet is welded to the first wall along a first seam and
`welded to the second wall along a second seam and portions of
`the plurality of frame members extend diagonally relative to the
`first and second seams.
`18. The inflatable product of claim 17, wherein the first wall
`comprises an inner wall of the inflatable product and the second
`wall comprises an outer wall of the inflatable product, further
`comprising a top wall and a bottom wall cooperating with the
`inner and outer walls to define the inflatable air chamber, each
`tensioning structure and the top and bottom walls cooperate to
`define gaps therebetween.
`Ex. 1001, 19:2–19, 20:32–43.
`
`E. Procedural History and the First Petition in PGR2017-00003
`On November 8, 2016, Petitioner filed the First Petition in Case
`
`PGR2017-00003 requesting a post-grant review of claims 1–7, 17–22, and
`30 of the ’240 patent. First Pet. 1. In the First Petition, Petitioner asserted
`the following grounds of unpatentability (id. at 24):
`References
`Peterson1 and Fireman2
`Peterson, Fireman, and Guan ’7973
`Peterson, Fireman, Guan ’797, and Wang ’6154
`
`Basis Claims
`§ 103
`1–7, 17
`§ 103
`18–22, 30
`§ 103
`19–22
`
`
`1 U.S. Patent No. 5,924,144, issued July 20, 1999 (Ex. 1002).
`2 U.S. Patent Application Publication No. 2004/0040082 Al, published
`March 4, 2004 (PGR2017-00003, Ex. 1003).
`3 Chinese Patent Application Publication No. CN 2064797 U, published Oct.
`31, 1990 (PGR2017-00003, Ex. 1004).
`4 Chinese Patent Application Publication No. CN 202051615 U, published
`Nov. 30, 2011 (Ex. 1005).
`
`5
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`We, on May 11, 2017, instituted a post-grant review on the first
`
`ground—the Peterson and Fireman obviousness ground challenging claims
`1–7 and 17. PGR2017-00002, Paper 9, 21. We denied institution as to the
`other two grounds. Regarding the second ground—that involving Peterson,
`Fireman, and Guan ’797, and challenging the same claims challenged in the
`Second Petition—we found to be persuasive Patent Owner’s argument that
`Petitioner’s articulated ground was confusing. Id. at 19–20. In particular, it
`was not clear to us “whether Petitioner [was] proposing a three-reference
`combination for Ground 2 or multiple two-reference combinations.” Id.
`at 20. We also found Petitioner’s reasons to combine the references to be
`deficient, stating “if Peterson and Guan ’797 are interchangeable, as
`Petitioner asserts, we fail to see why one of ordinary skill in the art would
`have a reason to add a cumulative reference in the form of Guan ’797 to the
`existing combination of teachings.” Id. Regarding the third ground—
`adding the Wang reference and challenging dependent claims 19–22 (which
`are again challenged in the Second Petition)—we determined that the
`articulated ground did not cure the defects in the underlying second ground
`and, additionally, provided inadequate reasoning as to why one of ordinary
`skill would have found the claimed subject matter obvious. Id. at 20–21.
`
`On May 25, 2017, Petitioner filed a request for reconsideration of our
`decision denying institution as to the second and third grounds.
`PGR2017-00003, Paper 12. Petitioner argued that we overlooked that the
`Guan reference was unnecessary to the second ground and that claims 18–22
`are unpatentable over Peterson and Fireman alone. Id. at 2. Petitioner also
`argued that we overlooked arguments regarding a rationale for combining
`Peterson, Fireman, and Guan to render obvious claim 30. Id. at 4–5.
`
`6
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`We denied Petitioner’s request for reconsideration on June 20, 2017.
`
`PGR2017-00003, Paper 15. We reiterated that we denied institution as to
`the second ground because Petitioner’s reasoning to combine the references
`was deficient and because that Petitioner’s articulation of the second ground
`was confusing, and we “decline[d] to reframe Petitioner’s second ground, as
`it applies to claims 18–22, by omitting Guan.” Id. at 4–5.
`
`A week later, Petitioner filed the Second Petition again challenging
`the non-instituted claims, arguing we should not exercise our discretion to
`deny institution under 35 U.S.C. § 325(d)5 because the denial in the first
`case “necessitated a renewed search and review of the prior art” and that
`Petitioner discovered new art that “invalidates” the claims “based on a more
`concise combination of references.” Second Pet. 3–4.
`
`Petitioner soon thereafter reported to the District Court in the parallel
`litigation that Petitioner had filed the Second Petition, and stated that
`Petitioner “considered the input from the PTAB” when drafting the Second
`Petition, stated “an institution on the IPR is expected by December 2017,”
`and argued that the stay should be extended because of the filing of the
`Second Petitioner and the expected institution of the inter partes review.
`Ex. 2011, 2, 6–7.
`
`F. Asserted Grounds of Unpatentability in the Second Petition
`In its Second Petition, Petitioner asserts the following grounds of
`
`unpatentability:
`
`5 “In determining whether to institute or order a proceeding . . ., 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).
`7
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`
`References
`Peterson and Fireman
`Peterson, Fireman, and Kimbrig7
`Peterson, Fireman, and Tompkins8
`
`Basis
`§ 103
`§ 103
`§ 103
`
`Claim(s)
`18, 19, and 206
`18–22
`30
`
`II. ANALYSIS
`A. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise our discretion under 35
`
`U.S.C. § 314(a) to deny the Second Petition. Prelim. Resp. 1–2 (citing Gen.
`Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept.
`6, 2017) (Paper 19) (precedential)9 (hereinafter “General Plastic”)). Patent
`Owner, specifically referring to the Peterson and Fireman ground, argues
`[Petitioner] Bestway’s failure to articulate its argument in a clear
`and concise manner resulting in a denial of institution the first
`time does not entitle Bestway to a second bite at the apple. To
`find otherwise would award Bestway for its previous failures and
`unfairly burden [Patent Owner] Intex with expensive, time-
`consuming, distracting post-grant proceedings.
`Id. at 29 (citing Gen. Plastic, slip op. at 17). Patent Owner further argues
`“the Second Petition is the epitome of what the PTAB seeks to prevent:
`
`
`6 Although Petitioner does not identify explicitly claim 20 as subject to this
`ground, we, like Patent Owner (Prelim. Resp. 8 n.1), understand Petitioner to
`apply this two reference combination to claim 20. See Pet. 44–45 (relying
`on Kimbrig “[t]o the extent” Peterson is deemed to lack a feature).
`7 U.S. Patent No. 2,741,780, issued Apr. 17, 1956 (IPR2017-01655,
`Ex. 1004).
`8 U.S. Patent Application Publication No. 2003/0019024 A1, published Jan.
`30, 2003 (IPR2017-01655, Ex. 1005).
`9 Section II.B.4.i of General Plastic was designated precedential on
`October 18, 2017.
`
`8
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`‘follow-on petitions [that] allow petitioners the opportunity to strategically
`stage their prior art and arguments in multiple petitions, using [Board]
`decisions as a roadmap, until a ground is found that results in the grant of
`review.’” Id. at 35 (quoting General Plastic, slip. op. at 17). Petitioner
`argues that the Second Petition does not present the same arguments or the
`same combination of prior art as the First Petition and therefore we should
`not deny institution under 35 U.S.C. § 325(d). Second Pet. 3–4. Petitioner
`does not address our discretion under § 314(a) or the “substantially the
`same” aspect of § 325(d). Because, for the reasons discussed below, we
`exercise our discretion under § 314(a) to not institute an inter partes review,
`we do not reach Patent Owner’s argument (Prelim. Resp. 2) that we also
`should exercise our discretion under 35 U.S.C. § 325(d) to deny institution
`of a review.
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances); 37
`C.F.R. § 42.108(a) (stating “the Board may authorize the review to
`proceed”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). When
`determining whether to exercise our discretion under § 314(a), we consider
`the following non-exhaustive factors:
`1. whether the same petitioner previously filed a petition directed
`to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`
`9
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to
`the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic, slip. op. at 15–16 (citing NVIDIA Corp. v. Samsung Elec.
`Co., IPR2016-00134, slip op. 6–7 (PTAB May 4, 2016) (Paper 9). We
`address each of these factors in turn, but note that not all the factors need to
`weigh against institution for us to exercise our discretion under § 314(a).
`Factor 1: Whether the same petitioner previously filed a
`petition directed to the same claims of the same patent
`The same Petitioner in this case previously filed the First Petition
`
`directed to same claims of the same patent.
`Factor 2: Whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition
`or should have known of it
`The Second Petition utilizes, in its grounds, four references.
`
`Petitioner knew of the Peterson and Fireman references at the time of the
`First Petition as Petitioner expressly relied upon them in that First Petition.
`Kimbrig was issued in 1956 and Tompkins was published in 2003, and thus
`many years before the November 2016 filing of the First Petition. Petitioner
`
`10
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`does not explain why these references could not have reasonably been
`located and relied upon in the First Petition.
`Factor 3: Whether at the time of filing of the second petition
`the petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition
`At the time of the filing of the Second Petition, Petitioner had
`
`received already Patent Owner’s Preliminary Response, our decision on
`institution in Case PGR2017-00003, and our decision on Petitioner’s
`Request for Reconsideration in that case. Thus, Petitioner had the advantage
`of knowing what was in these Decisions in preparing the Second Petition. In
`arguing to the District Court that the stay should not be lifted, Petitioner
`stated that it “considered the input from the PTAB on the PGR submission,
`and [Petitioner] Bestway has requested that that the PTAB institute the IPR
`petition because Bestway is presenting different combinations of references
`and different arguments than advanced in the prior PGR Petition for claims
`18-22 and 30.” Ex. 2011, 8.
`Factor 4: The length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition
`As noted above, Petitioner was aware of both Peterson and Fireman
`
`when it filed the First Petition. In fact, Petitioner argued in its Request for
`Reconsideration that “the [First] Petition provided a detailed explanation as
`to how claims 18–22 were unpatentable over the combination of Peterson
`and Fireman, without Guan.” PGR2017-00003, Paper 12, 2 (citing the First
`Pet. at 46–58). Petitioner also argued “the [First] Petition explained that one
`of skill in the art would have been motivated to combine Peterson, Fireman,
`and Guan thereby rendering claim 30 obvious . . . .” Id. at 5.
`
`11
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`Petitioner does not specify exactly when it learned of the new prior art
`
`in this case (i.e., Kimbrig and Tomkins), but implies that it was after our
`denial of institution of the First Petition. Petitioner states that “[t]he Board
`declined to institute post-grant review of claims 18–22 and 30 . . . [and]
`[t]his necessitated a renewed search and review of the prior art [and] [n]ew
`prior art was discovered . . . .” Second Pet. 3 (citation omitted). Although
`not expressly stated by Petitioner, we assume Petitioner is referring to
`Kimbrig and Tomkins when mentioning this “renewed search.”
`Factor 5: Whether the petitioner provides adequate
`explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent
`Petitioner provides no adequate explanation as to why the timing of
`
`the second Petition is appropriate, nor does Petitioner address the various
`General Plastic factors (as first outlined in NVIDIA). Petitioner addresses
`our discretion to deny institution only briefly, and then in an incomplete
`analysis of our discretion under 35 U.S.C. § 325(d). See Second Pet. 3–4
`(arguing that neither the combinations of art nor the arguments are the same
`as in the First Petition but failing to argue that the art and arguments are not
`substantially the same). Petitioner asserts, in this context, that the Board’s
`denial of institution as to claims 18–22 and 30 “necessitated a renewed
`search and review of the prior art” and allowed Petitioner to articulate
`grounds “based on a more concise combination of references.” Id. at 3.
`Thus, Petitioner’s arguments suggest that the timing of the Second Petition
`was such that it allowed Petitioner to benefit from our earlier decisions
`pointing out the flaws in the First Petition.
`
`12
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`
`Factor 6: The finite resources of the Board, and
`Factor 7: The requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after the date
`on which the Director notices institution of review
`We conclude that these factors do not weigh significantly for or
`
`against exercising our discretion.
`Weighing the Factors for Discretionary Non-Institution
`under § 314(a)
`Upon weighing the above-discussed factors, we determine that
`
`non-institution is appropriate in the circumstances of this case. In particular,
`Petitioner’s strategic use of our decisions, and presumably Patent Owner’s
`arguments, as a roadmap to remedy deficiencies in Petitioner’s case weighs
`heavily against institution. Petitioner does not explain why it could not have
`articulated its present challenges earlier, and does not persuade us that
`institution of a trial based on the follow-on Second Petition is appropriate in
`light of the accompanying burden to the Board and Patent Owner.
`
`III. CONCLUSION
`For the reasons discussed above, we exercise our discretion to deny
`
`institution under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).
`
`IV. ORDER
`For the foregoing reasons, it is
`
`ORDERED that the Petition is denied as to the challenged claims, and
`
`no trial is instituted.
`
`
`
`
`
`13
`
`
`
`IPR2017-01655
`Patent 9,254,240 B2
`
`
`For PETITIONER:
`Michael P. Chu
`Brian A. Jones
`MCDERMOTT WILL & EMERY LLP
`mchu@mwe.com
`bajones@mwe.com
`
`
`For PATENT OWNER:
`R. Trevor Carter
`Andrew M. McCoy
`FAEGRE BAKER DANIELS LLP
`trevor.carter@faegrebd.com
`andrew.mccoy.ptab@faegrebd.com
`
`
`
`14
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
