Paper 7
`Trials@uspto.gov
`Entered: January 11, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTERBULK USA, LLC d/b/a INTERBULK EXPRESS,
`Petitioner,
`v.
`GLOBAL STRATEGIES, INC.,
`Patent Owner.
`
`Case IPR2018-01197
`Patent 7,510,327 B2
`
`
`
`
`
`
`
`
`
`Before NEIL T. POWELL, GEORGE R. HOSKINS, and
`JAMES A. WORTH, Administrative Patent Judges.
`WORTH, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`I.
`INTRODUCTION
`On June 5, 2018, InterBulk USA, LLC d/b/a InterBulk Express
`(“InterBulk” or “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent
`No. 7,510,327 B2 (Ex. 1001, “the ’327 patent”). On October 18, 2018,
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`Global Strategies, Inc. (“GSI” or “Patent Owner”) filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under [35 U.S.C. §] 311 and any
`response filed under [35 U.S.C. §] 313 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). For the reasons set
`forth below, we determine that Petitioner has not met its burden for
`instituting review.
`
`A. Related Matters
`The parties note as related the following district court litigation:
`Global Strategies, Inc. v. InterBulk USA, LLC d/b/a InterBulk Express, No.
`1:17-cv-12166-RGS (D. Mass, filed Nov. 3, 2017). Pet. 1; Paper 3, 1;
`Prelim. Resp. 3.
`
`B. The ’327 Patent (Ex. 1001)
`The ’327 patent is titled “High Strength Ribbon-Woven Disposable
`Bag for Containing Refuse” and relates to “disposable bags and more
`particularly to a polypropylene ribbon-woven bag of sufficient strength to
`contain heavy refuse having pointed or sharp edges without rupture, tearing
`or disintegration.” Ex. 1001, [54], 1:6–10. The ’327 patent describes a
`problem with prior art refuse bags, involving 3-mil polyethylene films,
`which were limited in the weight of the contents to normally 20–25 pounds,
`leaving a large majority of the bag unfilled. Id. at 1:14–22. Further, such
`bags were liable to fail by stretching or rupture, puncturing, slicing, or
`piercing, when used on construction sites. Id. at 1:22–33. The ’327 patent
`describes a problem with alternatives such as rubberized barrels, which were
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`expensive, heavy, required storage between use, and could become stuck or
`temporarily stuck together if nested when stored. See id. at 1:34–45.
`The Specification describes the subject invention as an improved high
`strength bag composed of woven material where the woven material is
`ribbon, as opposed to woven cord or strand. Id. at 1:53–58. According to
`the Specification, bags so composed will safely contain refuse weighing in
`excess of 125 pounds for 40″x29″ bags. Id. at 1:59–61. The Specification
`discloses that such bags are tear resistant and cut resistant, and a piercing of
`the woven structure does not creep or travel due to the woven nature of the
`material. Id. at 1:61–64. The tear strength or modulus in one embodiment is
`35 warp pounds or 32 filling pounds according to ASTM 5587. Id. at 1:64–
`66.
`
`The disposable bags are typically made of polypropylene but other
`materials may be used. See id. at 3:13–22. In one embodiment, the bag is
`made by heating and melting polypropylene pellets, extruding a web that is
`relatively flat, cutting the web longitudinally to make ribbons, winding the
`ribbons onto spools, and then weaving the ribbons using a loom or weaving
`machine such that an under/over weave is produced, in which flat ribbons
`are clearly visible. Id. at 2:5–11, 4:54–57. The structure is woven
`cylindrical, then flattened, cut along a transverse line, and stitched to form
`the bottom of the bag. Id. at 2:24–30. In one embodiment, the ribbons are
`3–6 mm wide with a stitch count of 100 per inch. Id. at 2:12–14. In one
`embodiment a liquid-tight bag is provided by laminating a polypropylene
`film to the outside of the bag. Id. at 2:15–23.
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`C. Illustrative Claim
`Claims 1 and 17 are the independent claims contested in the Petition.
`Claim 1, reproduced below, is illustrative of the subject matter at issue:
`1.
`An ultra strong, tear-resistant, puncture-resistant bag
`having a high tear strength, comprising:
`a ribbon-woven bag having crossed woven ribbons of flat
`polypropylene sheet devoid of low melting temperature bonding
`layers between the crossed ribbons, said bag formed in a cylinder
`and stitched at one end to complete the bag, wherein the stitch
`count for said bag is 100 per inch.
`
`Ex. 1001, 5:30–37.
`
`D. The Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 4,205,611, iss. June 3, 1980 (Ex. 1004,
`“Slawinski”);
`U.S. Patent No. 4,373,979, iss. Feb. 15, 1983 (Ex. 1008,
`“Planeta ’979”);
`U.S. Patent No. 4,505,201, iss. Mar. 19, 1985 (Ex. 1007,
`“Abele”);
`U.S. Patent No. 5,830,119, iss. Nov. 3, 1998 (Ex. 1005,
`“Chen”);
`U.S. Patent No. 5,251,761, iss. Oct. 12, 1993 (Ex. 1009,
`“Hansen”);
`U.S. Patent No. 5,395,665, iss. Mar. 7, 1995 (Ex. 1006,
`“Planeta ’665”).
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`E. The Alleged Grounds of Unpatentability
`Petitioner challenges claims 1–20 of the ’327 patent as unpatentable
`under 35 U.S.C. § 103(a):
`
`References
`Slawinski, Chen, Planeta ’665,
`Abele
`Slawinski, Chen, Planeta ’665,
`Abele, Planeta ’979
`Slawinski, Chen, Hansen,
`Planeta ’665
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Claims challenged
`1–12, 14, 16
`
`13, 15
`
`17–20
`
`II. ANALYSIS
`A. Claim Construction
`In this inter partes review, filed June 5, 2018,1 a claim in an unexpired
`patent shall be given its broadest reasonable construction in light of the
`specification of the patent in which it appears. 37 C.F.R. § 42.100(b)
`(2016); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016) (affirming that USPTO has statutory authority to construe claims
`according to 37 C.F.R. § 42.100(b)). Under that standard, and absent any
`special definitions, we give claim terms their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art at the
`time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Any special definitions for claim terms must be set forth
`
`
`1 The claim construction standard to be employed in inter partes reviews has
`changed for proceedings in which the petition was filed on or after
`November 13, 2018. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Nov. 13, 2018) (to be codified at 37 C.F.R. pt.
`42).
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`with reasonable clarity, deliberateness, and precision. See In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner requests construction of the following limitations: “ribbons
`. . . devoid of low melting temperature bonding layers between the crossed
`ribbons” and “wherein the stitch count for said bag is 100 per inch.” Pet.
`18–20. Patent Owner disputes Petitioner’s proposed construction of
`“ribbons . . . devoid of low melting temperature bonding layers between the
`crossed ribbons.” Prelim. Resp. 5–7. Patent Owner does not dispute
`Petitioner’s proposed construction of “wherein the stitch count for said bag
`is 100 per inch” but disputes Petitioner’s explanation therefor. Id. at 6–7.
`Patent Owner does not request any additional claim construction.
`We observe that both parties treat the preamble of claim 1 as limiting,
`i.e., “An ultra strong, tear-resistant, puncture resistant bag having a high tear
`strength. . . .” Ex. 1001, 5:30–31; see Pet. 25–26; Prelim. Resp. 13. For
`purposes of this Decision, we treat the preamble of claim 1 as limiting, based
`on the common treatment of the parties.
`For the purposes of this Decision, we determine that no other claim
`limitation needs express interpretation. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
`B. Obviousness of Claims 1–12, 14, and 16 over Slawinski,
`Chen, Planeta ’665, and Abele
`Petitioner contends that claims 1–12, 14, and 16 are unpatentable as
`obvious over Slawinski, Chen, Planeta ’665, and Abele. Pet. 21–44. Patent
`Owner opposes. Prelim. Resp. 12–22.
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`1. Overview of Slawinski
`Slawinski is titled “Plastic Laminate Explosive Emulsion Package”
`and relates to “[t]he packaging of slurry explosive compositions in plastic
`bags . . . for distributing such explosives as saleable products.” See Ex.
`1004, [54], 1:6–8. Slawinski discloses that prior art devices included skin-
`tight plastic bags fabricated with side sealing, and in particular, a flexible
`polyvinyl chloride film had been used to package water-in-oil emulsion type
`slurry explosive compositions. See id. at 1:7–15. Slawinski discloses that
`then-new explosive emulsion compositions were being processed at higher
`temperatures of 150–200°F, and describes a need for packaging materials
`that can withstand higher temperatures of 150–200°F without degradation.
`See id. at 1:17–41. According to Slawinski, previously known polyvinyl
`chloride films were subject to swelling and sagging, which may affect the
`propagation of explosives from one container to the next. Id. at 1:30–36.
`Slawinski also describes a requirement for packaging films for emulsion
`explosive compositions, i.e., that such films be resistant to degradation when
`there is contact with an external oil phase of such explosive compositions.
`Id. at 1:41–50.
`Slawinski discloses producing laminate film packaged explosives by
`laminating an inner sealing film, an intermediate oil barrier, and an outer
`structural film. See id. at 1:63–2:2, 3:2–4:40. These layers are depicted in
`the drawing figure of Slawinski (see id.):
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`Slawinski’s drawing figure depicts the laminate packing.
`Inner sealing film 3 can comprise a low density polyolefin film, such
`as low density polyethylene. Id. at 3:49–55.
`Intermediate layer 2 is an oil resistant barrier that may consist of a
`thin nylon film, polyester film, polyurethane (or urethane bond adhesives),
`oil resistant primers, polyesters, saran, polyvinylidene chloride, cellophane,
`and/or an oil retardant surface treatment. Id. at 3:27–48.
`
`Outer structural film 1 is a polyolefin film, which is either of the cross
`oriented laminate or woven variety. Id. at 1:67–2:2, 3:6–10. Examples of
`outer structural film 1 include high density polyethylene film and
`polypropylene. Id. at 3:10–20.
`
`2. Overview of Chen
`Chen is titled “Bag With Closure Tie and Method of Making” and
`relates to the construction and manufacture of a bag with a tie for selective
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`closure, e.g., for use in the transport and delivery of postal materials. Ex.
`1005, [54], 1:5–9. Chen describes a problem with prior art bulk bags for
`mail transport, i.e., that considerable material costs and manual labor were
`expended for bags that were “essentially utilized on a one-way basis and not
`returned.” Id. at 1:12–22. Chen discloses a double-ended bag having first
`and second bag panels defining a bag interior and a bag opening at one end
`communicating with the bag interior. Id. at 1:32–34. The bag additionally
`includes an elongated flexible tie located adjacent to the bag opening for
`selectively closing the bag opening. Id. at 1:34–36.
`The method of manufacturing Chen’s bag includes the step of tubular
`weaving a sheet of flexible material to form an elongated tube comprised of
`woven warp and weft strands, the tube having a primary axis. Id. at 1:37–
`40. During said tubular weaving step, first and second tie segments are
`woven into said strands, said first and second tie segments extending along
`said tube in the direction of said primary axis. Id. at 1:41–44. An elongated
`opening is formed in said tube extending along said tube in the direction of
`said primary axis and adjacent to said first and second tie segments. Id. at
`1:45–47. The tube material is severed along spaced lines of cut transverse to
`said primary axis to form tube material segments, each tube material
`segment comprising two bag panels, with each bag panel having a panel top
`end, a panel bottom end and two spaced panel side edges extending between
`the panel top end and the panel bottom end, and each panel having a tie
`segment connected thereto and woven therein. Id. at 1:48–55. The two bag
`panels are brought together into substantial registration with the panels
`extending from a fold, and the tie segments connected thereto are brought
`into substantial registry. Id. at 1:56–60. The bag panels are sewn together,
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`with the panel top ends being unsecured and forming an opening with
`adjacent ties. Id. at 1:62–65.
`Typical materials include polypropylene for warp and weft, and
`polyurethane may also be used. See id. at 4:6–13, 5:3–5.
`
`3. Overview of Planeta ’665
`Planeta ’665 is titled “Woven Plastic Material” and “relates to woven
`synthetic plastic material [that] may be produced as a tubular sleeve from
`which bags may be made or may be produced in sheet form for various other
`uses.” Ex. 1006, [54], 1:4–7. Planeta ’665 describes prior art production of
`and filling of bags by the following method: a tubular sleeve is constructed
`of woven strips of synthetic plastic material, the tubular material is cut into
`lengths, each length is sealed at one end to form a bag, the bag is filled, and
`then the bag is sealed at the other end. See id. at 1:8–13. According to
`Planeta ’665, such bags had a tendency to unravel prior to closure making
`satisfactory closure difficult. Id. at 1:13–15. Some prior art attempts were
`made to extrusion coat the woven material to prevent unraveling, but coated
`bags lacked the porosity desired to prevent the contents of the bag from
`deteriorating. Id. at 1:16–23.
`In order to provide resistance to unraveling and to maintain porosity,
`Planeta ’665 discloses woven plastic material comprising woven strips of
`plastic film having a first melting temperature, the strips comprising
`longitudinally-extending strips and transversely-extending strips interwoven
`therewith. Id. at 1:24–33, 1:40–43. Each strip is preferably molecularly
`oriented substantially in the direction of the length of the strip. Id. at 1:47–
`48. Each strip may be a synthetic plastic material selected from the group
`consisting of polypropylene, polyethylene, linear low density polyethylene,
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`polyamides, high density polyethylene, polyesters, polystyrene, polyvinyl
`chloride, their copolymers and mixtures thereof. Id. at 1:48–53.
`At least some of the strips carry a layer of bonding material on at least
`one surface thereof, the bonding material having a second melting
`temperature lower than the first melting temperature. Id. at 1:33–35. The
`longitudinally-extending strips and transversely-extending strips are bonded
`together by the bonding material at crossing locations where at least one
`strip has a bonding there adjacent to the other strip. Id. at 1:36–39. The
`layers of bonding material may comprise synthetic plastic material selected
`from the group consisting of linear low density polyethylene, ionomers (for
`example surlyn), polyvinyl chloride, ethyl vinyl acetate, ethyl propyl
`copolymers, polyethylene copolymers, low density polyethylene, their
`copolymers, vinyl copolymers and mixtures thereof. Id. at 1:57–64. The
`bonding material may contain one or more additives to improve welding and
`adhesion. Id. at 1:64–66.
`
`4. Overview of Abele
`Abele is titled “Impact Resistant Bag With Increased Circumferential
`Yarn Strength” and “relates to woven bags and similar containers designed
`for granular and liquid substances,” “to impact resistant bags made of a
`woven plastic fabric,” and “to a bag for containing explosives for use in
`boreholes.” Ex. 1007, [54], 1:7–12. Abele describes a problem in the prior
`art with premature explosive bag rupture when bags were dropped in deep
`boreholes, i.e., the bags were at risk for rupturing when impacting the
`bottom of a borehole. See id. at 1:14–31.
`Abele describes requirements for “toughness” (for impact resistance)
`of a circumferential yarn, defined in terms of the area under the stress-strain
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`curve for yarns stressed to failure, and which is a function of elongation and
`tensile strength. Id. at 1:50–65. According to Abele, the radial forces are
`substantially higher than the longitudinal forces due to the nonisotropic
`effect of liquids in longitudinal containers subject to impact. Id. at 1:66–2:4.
`Further, the impact resistance of filled bags is a function of the energy
`absorption property of the woven fabric used in the bag, and toughness of
`the woven yarns is a measure of the energy absorption capabilities of the
`fabric. Id. at 2:9–2:12.
`Abele discloses a circular weave having a circumferential yarn of
`sufficient size and toughness to absorb hydraulic shock resulting from
`dropping the bag, and a longitudinal yarn having a toughness of between
`about 20 and about 60 percent (preferably 40–60) of that of the
`circumferential yarn. Id. at 2:21–26. In particular, Abele discloses an inner
`liner may be made of polyethylene film or other plastic which are
`substantially water impermeable and resistant to the explosives contained
`therein; and an outer woven fabric, which may be polypropylene or any
`other plastic film, yarn or ribbon capable of being woven continuously. Id.
`at 2:29–40.
`Preferred materials for the inner liner include films of homopolymers
`and copolymers of alpha-olefins and blends of such homopolymers and
`copolymers such as polyethylene and polypropylene. Id. at 3:18–22. A
`preferred film is polyethylene and/or blends of polyethylene and ethylene
`copolymers such as EVA. Id. at 3:22–24. “Polyethylene includes
`conventional LDPE, HDPE, MDPE, copolymers of ethylene and alpha-
`olefins, (LLDPE), EV A copolymers, and blends of these.” Id. at 3:24–27.
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`The outer woven fabric is made of yarns including plastic materials
`such as polyolefins, nylon, polyesters, etc. Id. at 3:46–4:40. The polyolefins
`are preferred, and specific polyolefins include polypropylene, LDPE, HDPE,
`MDPE, LLDPE and blends of these materials with one another or other
`polymers such as EVA. Id. at 4:41–46.
`
`5. Analysis
`In its Petition, Petitioner sets forth its contentions as to how the
`limitations of claims 1–12, 14, and 16 are disclosed in, or obvious over, the
`combination of Slawinski, Chen, Planeta ’665, and Abele. Pet. 21–44.
`Petitioner relies on the declaration of Mirek Planeta (hereinafter,
`“Petitioner’s Declarant”). Ex. 1013. Patent Owner opposes. Prelim. Resp.
`12–22.
`
`a. Independent Claim 1
`Petitioner sets forth at least two different approaches for mapping the
`limitations of independent claim 1 to the prior art.
`In four sections relating to the limitations of claim 1, Petitioner relies
`on multiple prior art references for each limitation of claim 1. Petitioner
`asserts that Slawinski, Chen, Planeta ’665, and Abele each disclose tear
`resistant bags, as recited by independent claim 1, i.e., “[a]n ultra strong, tear-
`resistant, puncture-resistant bag having a high tear strength.” Pet. 25–26.
`Petitioner also asserts that Slawinski, Chen, Planeta ’665, and Abele each
`disclose the woven polypropylene ribbons, as recited in independent claim 1,
`i.e., “a ribbon-woven bag having crossed woven ribbons of flat
`polypropylene sheet devoid of low melting temperature bonding layers
`between the crossed ribbons[.]” Pet. 27–29. Petitioner asserts that Chen and
`Abele disclose stitching at one end of the bag, as recited in independent
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`claim 1, i.e., “said bag formed in a cylinder and stitched at one end to
`complete the bag[.]” Pet. 29–31. Petitioner asserts that Slawinski, Planeta
`’665, and Abele disclose “wherein the stitch count for said bag is 100 per
`inch.” Pet. 31–32.
`Then, in a section explaining that a person of ordinary skill would
`have been motivated to combine the prior art references, Petitioner relies on
`Slawinski’s bag, modified by stitching one end, as taught by Chen and
`Abele. Pet. 43. Petitioner indicates that Slawinski’s bag does not disclose
`bonding layers. Pet. 43. Petitioner optionally relies on other prior art (e.g.,
`Chen and Planeta ’665) for the lack of bonding layers, observing that Abele
`refers to Planeta ’665. See Pet. 43–44.
`In this manner, Petitioner sets forth different possible approaches for
`combining references and appears to be arguing the combination of prior art
`references by relying on references in the alternative.
`Patent Owner argues, inter alia, that there is insufficient evidence that
`Chen’s bag is tear resistant, and in any event that Petitioner’s assertion that a
`person of ordinary skill would have combined the various references in the
`manner proposed is based on impermissible hindsight. See Prelim. Resp.
`15, 18–22. We agree with Patent Owner that Petitioner has not set forth
`adequate evidence and reasoning for the asserted combination in its Petition
`and accompanying Declaration, as explained below. In particular, we
`determine that Petitioner has not stated adequate reasoning for modifying the
`closure of Slawinski’s bag with that of Chen or Abele.
`Patent Owner’s argument that Chen’s bag is not tear resistant
`First, we agree with Patent Owner that there is insufficient evidence
`that Chen’s bag is tear resistant. Petitioner pertinently asserts as follows:
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`Chen teaches a bag “formed of woven flexible material with
`warp and weft strands,” for use in storing and transporting bulk
`materials, such as mail. (Ex. 1005, col. 1, lines 5-8.) Chen notes
`that “[a] material which has been found to be particularly suitable
`in the practice of the present invention is polypropylene in the
`form of narrow, thin strips.” (Ex. 1005, col. 4, lines 6-13.) A
`POSITA would understand that such a bag would be ultra strong,
`tear-resistant, puncture-resistant, and would have a high tear
`strength. (Ex. 1013, ¶ 83.)
`
`
`Pet. 26. Petitioner’s Declarant similarly states that Chen’s material is
`polypropylene in the form of narrow, thin strips (citing Ex. 1005, 4:6–13)
`and states an opinion that “such a bag would be [understood to be] ultra-
`strong, tear-resistant, puncture-resistant, and would have high tear strength.”
`Ex. 1013 ¶ 83. However, Petitioner’s Declarant does not provide the basis
`for this opinion. Patent Owner asserts that Chen teaches that the bag is “for
`use in the transport and delivery of postal materials,” and that there is no
`disclosure in Chen that suggests its bag is capable of resisting punctures and
`tears. Prelim. Resp. 15 (citing Ex. 1005, 1:7–9). We agree with Patent
`Owner that a bag used for the transport of mail is not necessarily tear
`resistant and puncture resistant.2
`
`
`2
`Although not argued by Petitioner nor relied on by Petitioner’s
`Declarant for claim 1, we observe on this record that Hansen discloses that
`woven polypropylene bags, “if sufficiently porous,” have been shown to
`withstand forces experienced under compaction, transfer, and dumping
`under actual test conditions with a 95% survival rate. See Ex. 1009, 3:15–
`26. However, neither Petitioner nor Petitioner’s Declarant have provided an
`explanation comparing Chen’s woven polypropylene bag with Hansen’s
`sufficiently porous woven polypropylene bag to demonstrate that Chen’s bag
`would behave similarly to Hansen’s bag. See id.
`The Specification of the ’327 patent also describes a benefit of woven
`material for tear resistance (Ex. 1001, 1:61–64), but it is not clear on this
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`We recognize that the Petition may be read to be relying on Chen (or
`Abele) only for the stitching required to close a bag, and to be otherwise
`relying on Slawinski’s woven bag as being tear resistant and puncture
`resistant. See Pet. 43–44. We proceed to analyze Petitioner’s reliance on
`Slawinski for the bag material.
`Patent Owner’s arguments that Slawinski is not analogous art
`Slawinski discloses a three layer bag and Petitioner relies on the outer
`structural layer, which Slawinski refers to as “structural film 1,” for the
`crossed woven ribbons recited in claim 1. See Pet. 27 (citing Ex. 1004,
`3:17–26); Ex. 1004, 3:2–26, Fig. Patent Owner argues that Slawinski’s three
`layers are laminated together to form a 3-ply unitary film for packaging
`explosives, and that a 3-ply unitary laminated film is not analogous or
`equivalent to a ribbon-woven bag. Prelim. Resp. 14 (citing Ex. 1004, 1:65–
`2:2).
`Although we agree with Patent Owner that Petitioner is in a sense
`picking and choosing layers from Slawinski, we determine that Slawinski
`describes certain advantages for its outer structural layer. Slawinski
`discloses that “structural film 1 is provided for the purpose of imparting
`structural strength to the packaged explosive composition such that the
`finished package will not rupture, crack, or otherwise burst, during normal
`handling conditions, or during use in the field.” Ex. 1004, 3:7–10.
`Slawinski also discloses that the purpose of the outer structural layer is to
`“provide strength for the package so as to resist rupture or deformation
`
`
`record that we could resort to reliance on the Specification of the ’327 patent
`for this purpose without hindsight analysis.
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`during storage and use of the packaged emulsion explosive composition and
`to provide a surface which can be easily sealed using conventional
`packaging equipment.” Ex. 1004, 3:21–26.
`As to Patent Owner’s argument that Slawinski is not analogous art,
`prior art is analogous when it is (1) from the same field of endeavor as the
`claimed invention; or (2) reasonably pertinent to the particular problem
`faced by the inventor, if the art is not from the same field of endeavor. See
`In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004).
`First, Slawinski is directed to the field of handling explosives which is
`a different field of use than refuse disposal, to which the ’327 patent is
`directed. See Ex. 1004, [54], 1:6–15. As such, we determine that Petitioner
`has not established that Slawinski is analogous art on this basis.
`Second, we determine for purposes of this discussion that Slawinski’s
`outer layer is reasonably pertinent to the ’327 patent inventors’ problem of
`manufacturing a bag with material strength. We note that neither Petitioner
`nor Petitioner’s Declarant explains the relationship between burst resistance
`(a purpose of Slawinski, see Ex. 1004, 1:51–54, 3:5–6) and tear resistance,
`as recited in claim 1. On the one hand, a purpose of Slawinski is to prevent
`breakage upon impact, e.g., when a bag is dropped into a borehole. See Ex.
`1004, 1:51–54, 2:27–34.3 On the other hand, the ’327 patent states that the
`
`
`3 On this record, Abele is directed to a similar problem as Slawinski, i.e.,
`preventing rupture when a bag containing explosives is dropped in a
`borehole, and Abele explains that the impact resistance of filled bags is a
`function of the energy absorption property of woven fabric to withstand
`shockwave stress, where it is preferred that the toughness of the longitudinal
`yarns be 40–60 percent of the toughness of circumferential yarns. Ex. 1007,
`2:4–15; see also id. at 1:6–16.
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`“invention relates to disposable bags and more particularly to a
`polypropylene ribbon-woven bag of sufficient strength to contain heavy
`refuse having pointed or sharp edges without rupture, tearing, or
`disintegration.” In other words, the purpose of Slawinski is to prevent a bag
`from bursting when it impacts objects outside the bag, whereas the purpose
`of the bag of the ’327 patent is to prevent rupture or tearing caused by an
`object within the bag. Nevertheless, for purposes of this discussion, we may
`treat the burst resistance of Slawinski’s bag as addressing a sufficiently
`similar problem to that addressed by the ’327 patent, i.e., the tear resistance,
`because both Slawinski and the ’327 patent address the problem of material
`strength. Accordingly, we determine that Slawinski is analogous art to the
`’327 patent.
`Patent Owner’s argument that Slawinski expresses a preference for
`polyethylene
`Petitioner relies in particular on Slawinski’s disclosure of a woven
`layer composed of woven polyethylene. Pet. 27 (citing Ex. 1004, 3:17–26).
`Petitioner also quotes Slawinski’s statement that “[s]imilar types of
`polypropylene can also be used as structural films.” Id. Patent Owner
`argues that the example provided in Slawinski is of layers of cross-oriented
`polyethylene laminated together, and specifically a material called Valeron®
`(as opposed to woven polypropylene). See Prelim. Resp. 14–15 (citing Ex.
`1004, 3:12–14).
`Slawinski discloses that structural film 1 is preferably a polyolefin and
`is preferably either of the cross oriented laminate or woven variety. Ex.
`1004, 3:7–10. The portion of Slawinski relied on by Petitioner reads as
`follows:
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`Suitable grades of woven high density polyethylene include 8 X
`8, 10 X 10, 9 X 12 and 12 X 12 woven polyethylene. Similar
`types of polypropylene can also be used as structural films. As
`set forth above, the function which the outer structural, film 1
`(see drawing) serves is to provide strength for the package so as
`to resist rupture or deformation during storage and use of the
`packaged emulsion explosive composition and to provide a
`surface which can be easily sealed using conventional packaging
`equipment.
`
`Ex. 1004, 3:17–26.
`Petitioner appears to be arguing either that Slawinski discloses woven
`polypropylene or that Slawinski suggests substituting polypropylene for
`polyethylene in the example with woven polyethylene. See Pet. 27, 42.
`Petitioner does not explain whether it is asserting that Slawinski expressly
`discloses or suggests the use of polypropylene in a woven structure (as
`opposed to a cross oriented laminate film). See id. Indeed, it is not entirely
`clear from Slawinski whether Slawinski intends to use polypropylene as a
`cross oriented laminate film or a woven material. See Ex. 1004, 3:7–21.
`Petitioner also does not explain why a person of ordinary skill in the art
`would have chosen polypropylene as opposed to polyethylene. We note that
`Petitioner’s Declarant explains that woven polypropylene was known in the
`art (Ex. 1013 ¶ 45), and Petitioner’s Declarant understands Slawinski to
`disclose benefits of woven structural film (see Ex. 1013 ¶ 56). Despite the
`lack of clarity in the Petition regarding Petitioner’s specific contention(s) in
`this regard, we determine that Petitioner has shown that polypropylene was
`known in the art of bag manufacture, and Petitioner has made an adequate
`showing that Slawinski suggests that woven polypropylene may be
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`substituted for Slawinski’s preferred woven polyethylene in Slawinski’s bag.
`See Ex. 1004, 3:17–21.
`Patent Owner’s argument that the asserted modification of Slawinski’s
`closure method is based on hindsight
`Petitioner contends that “[m]odifying the bag of Slawinski so that one
`end was stitched, as taught by Chen and Abele, instead of clipped would be
`well within the skills of a POSITA, and would simply be substituting one
`well-known