Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`
`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
`
`Patent No. 7,510,327
`Filing Date: Mar. 14, 2005
`Issue Date: Mar. 31, 2009
`HIGH-STRENGTH RIBBON-WOVEN DISPOSABLE BAG FOR
`CONTAINING REFUSE
`
`Inter Partes Review No. ________________
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`
`Table of Contents
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ........................... 1
`
`A. Real Party‐in‐interest under 37 C.F.R. § 42.8(b)(1)................................. 1
`C. Lead and Back‐Up Counsel under 37 C.F.R. § 42.8(b)(3) ...................... 2
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`
`D. Service Information .................................................................................. 2
`E. Power of Attorney .................................................................................... 3
`PAYMENT OF FEES ‐ 37 C.F.R. § 42.103 ..................................................... 3
`II.
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104 AND 42.108 ..................................................................................... 3
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ................................. 3
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................... 3
`C. Requirements for Inter Partes Review 37 C.F.R. § 42.108(c) .............. 10
`IV. DESCRIPTION OF THE CHALLENGED CLAIMS .................................... 10
`V.
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3) .................... 17
`A. Legal Overview ...................................................................................... 17
`B.
`“ribbons . . . devoid of low melting temperature bonding layers
`between the crossed ribbons” ............................................................... 18
`“wherein the stitch count for said bag is 100 per inch” ......................... 19
`C.
`VI. CLAIMS 1-20 OF THE ‘327 PATENT ARE INVALID ............................... 21
`A. Ground 1 – Claims 1-12, 14, and 16 are Obvious over Slawinski,
`Chen, Planeta ’665, and Abele under 35 U.S.C. § 103 ........................ 21
`B. Ground 2 - Claims 13 and 15 are Obvious over Slawinski, Chen,
`Planeta ’665, Abele, and Planeta ’979 Under 35 U.S.C. § 103 ............ 44
`C. Ground 3 - Claims 17-20 are Obvious over Slawinski, Chen,
`Hansen, and Planeta ’665 Under 35 U.S.C. § 103 ............................... 49
`VII. CONCLUSION ............................................................................................... 65
`
`
`i
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`List of Exhibits
`
`
`
`Ex. 1001 – U.S. Patent No. 7,510,327 to Williams et al. (issued Mar. 31,
`2009) (the “’327 Patent”)
`
`Ex. 1002 – First Amended Complaint for Patent Infringement, Global
`Strategies, Inc. v. InterBulk USA, LLC d/b/a InterBulk Express,
`No. 1:17-cv-12166-RGS (D. Mass Jan. 3, 2018) (Dkt. No. 15)
`(the “Massachusetts Litigation”)
`
`Ex. 1003 – Listing of Challenged Claims
`
`Ex. 1004 – U.S. Patent No. 4,205,611 to Slawinski (issued June 3,1980)
`
`Ex. 1005 – U.S. Patent No. 5,830,119 to Chen (issued November 3, 1998)
`
`Ex. 1006 – U.S. Patent No. 5,395,665 to Planeta (issued March 7, 1995)
`
`Ex. 1007 – U.S. Patent No. 4,505,201 to Abele (issued March 19, 1985)
`
`Ex. 1008 – U.S. Patent No. 4,373,979 to Planeta (issued Feb. 15, 1983)
`
`Ex. 1009 – U.S. Patent No. 5,251,761 to Hansen et al. (issued Oct. 12,
`1993)
`
`Ex. 1010 – File History of the ’327 Patent
`
`Ex. 1011 - Memorandum in Support of Plaintiff’s Motion for a Preliminary
`Injunction Enjoining Defendant’s Infringement, Massachusetts
`Litigation (Nov. 7, 2017) (Dkt. No. 7)
`
`Ex. 1012 – Declaration of Daniel H. Landau in Support of Plaintiff’s
`Motion for a Preliminary Injunction, Massachusetts Litigation
`(Nov. 7, 2017) (Dkt. No. 7-3)
`
`Ex. 1013 – Expert Declaration of Mirek Planeta (June 5, 2018)
`
`
`
`ii
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`Table of Authorities
`
`
`
`Cases
`Cultec, Inc. v. Stormtech LLC, IPR2017-00777, Paper 7 (PTAB Aug. 22,
`2017) ...................................................................................................................8
`Gardner v. TEC Syst., Inc., 725 F.2d 1338,
`
`220 USPQ 777 (Fed. Cir. 1984) .............................................................. Passim
`In re Swanson, 540 F.3d 1368, 88 USPQ 2d 1196, (Fed. Cir. 2008) ................... 18
`Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015) ................................ 18
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................................. 43
`Statutes
`35 U.S.C. § 102(a)(pre‐AIA) .......................................................................... 4, 5, 6
`35 U.S.C. § 312(a)(1) ..............................................................................................3
`35 U.S.C. §§ 311‐319 ..............................................................................................1
`35 U.S.C. §102(e)(2) ........................................................................................ 9, 10
`Rules
`§ 42.8(a)(1) ..............................................................................................................1
`35 U.S.C. § 314(a) ................................................................................................ 10
`37 C.F.R, § 42.10(b). ...............................................................................................3
`37 C.F.R. § 42.100(b) ........................................................................................... 17
`37 C.F.R. § 42.103 ...................................................................................................3
`37 C.F.R. § 42.104(a ................................................................................................3
`37 C.F.R. § 42.104(b) ..............................................................................................3
`37 C.F.R. § 42.104(b)(3) ...................................................................................... 17
`37 C.F.R. § 42.108(c) ........................................................................................... 10
`37 C.F.R. § 42.8(b)(1) .............................................................................................1
`37 C.F.R. § 42.8(b)(2) .............................................................................................1
`37 C.F.R. § 42.8(b)(3) .............................................................................................2
`37 C.F.R. §§ 42.104 .................................................................................................3
`iii
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`37 C.F.R. 42.108 ......................................................................................................3
`
`
`iv
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`Petitioner InterBulk USA, LLC d/b/a InterBulk Express (“Petitioner” or
`
`
`
`“InterBulk”) respectfully petitions for inter partes review, under 35 U.S.C. §§ 311‐
`
`319 and 37 C.F.R. § 42, of claims 1-20 of U.S. Patent No. 7,510,327 (Ex. 1001)
`
`(“the ’327 Patent”).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. Real Party‐in‐interest under 37 C.F.R. § 42.8(b)(1)
`
`InterBulk is the real party in interest. Founded in 2002, InterBulk is a
`
`supplier of Flexible Intermediate Bulk Containers (FIBC). FIBCs, also known as
`
`bulk bags, are flexible woven polypropylene bags used for shipping, handling, and
`
`storing dry-flowable and fluid products.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`Patent Owner Global Strategies, Inc. (“Patent Owner” or “Global”) filed a
`
`patent infringement action on November 3, 2017, asserting the ’327 Patent against
`
`InterBulk. See Global Strategies, Inc. v. InterBulk USA, LLC d/b/a InterBulk
`
`Express, No. 1:17-cv-12166-RGS (D. Mass) (the “Massachusetts Litigation”). On
`
`January 3, 2018, Global filed a First Amended Complaint, asserting that InterBulk
`
`infringes claims 1 and 17 of the ’327 Patent. (See Ex. 1002.)
`
`InterBulk has denied infringement, and asserts that the claims of the ’327
`
`Patent are invalid. In fact, the court recently denied Global’s motion for a
`
`preliminary injunction, finding it unlikely that Global would prevail on the merits.
`
`1
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`(Massachusetts Litigation, Dkt. No. 25.) The Court found there was a “substantial
`
`question” of the validity of the claims of the ’327 Patent. (Id.) It noted Interbulk’s
`
`assertion that “the combination of prior art and common sense would render the
`
`claims obvious,” and agreed, with respect to claim 17, that “using the bag for claim
`
`1 to remove sharp-edged refuse, is likely a common-sense application of the bag.”
`
`(Id.)
`
`C. Lead and Back‐Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner designates the following counsel:
`LEAD COUNSEL
`Craig R. Smith (Reg. No. 45,113)
`LANDO & ANASTASI LLP
`One Main Street
`Cambridge, MA 02142
`Main: (617) 395-7081
`Fax: (617) 395-7070
`csmith@lalaw.com
`
`D.
`
`BACK‐UP COUNSEL
`Nathan T. Harris (Reg. No. 66,451)
`LANDO & ANASTASI LLP
`One Main Street
`Cambridge, MA 02142
`Main: (617) 395-7013
`Fax: (617) 395-7070
`nharris@lalaw.com
`
`Service Information
`
`The Petition is being served by overnight mail to the attorney of record for
`
`the ’327 Patent, Robert K. Tendler, Esq., 65 Atlantic Avenue, Boston
`
`Massachusetts 02110.
`
`A courtesy copy of the Petition is being served by e-mail on Global
`
`Strategy’s counsel in the district court action, David A. Conti of Godbout Law
`
`PLLC, 33 Broad Street, 11th Floor, Boston, Massachusetts 02109
`
`(dave@bjgalaw.com).
`
`2
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`Petitioner may be served at the address provided in Section I.C. For purposes
`
`
`
`of this proceeding, Petitioner consents to electronic service by e‐mail.
`
`E.
`
`Power of Attorney
`
`A Power of Attorney is filed concurrently in accordance with 37 C.F.R. §
`
`42.10(b).
`
`II.
`
`PAYMENT OF FEES ‐ 37 C.F.R. § 42.103
`
`This Petition requests review of claims 1-20 of the ’327 Patent and is
`
`accompanied by a payment of $15,500. 37 C.F.R. § 42.15(a)(1); 35 U.S.C. §
`
`312(a)(1).
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104 AND 42.108
`
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`
`The ’327 Patent is eligible for inter partes review. Petitioner certifies that it
`
`is not barred or otherwise estopped from requesting inter partes review of the
`
`identified claims on the present grounds.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`
`Petitioner requests that the Board institute inter partes review of claims 1-20
`
`of the ’327 Patent and find each claim unpatentable. This Petition relies on the
`
`following six prior art references:
`
`• U.S. Patent No. 4,205,611 to Slawinski (issued Jun. 3, 1980)
`(“Slawinski”) (Ex. 1004)
`
`3
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`• U.S. Patent No. 5,830,119 to Chen (issued November 3, 1998)
`(“Chen”) (Ex. 1005)
`
`• U.S. Patent No. 5,395,665 to Planeta (issued Mar. 7, 1995)
`(“Planeta ’665”) (Ex. 1006)
`
`• U.S. Patent No. 4,505,201 to Abele (issued Mar. 19, 1985)
`(“Abele”) (Ex. 1007)
`
`
`
`
`
`• U.S. Patent No. 4,373,979 to Planeta (issued Feb. 15, 1983)
`(“Planeta ’979”) (Ex. 1008)
`
`• U.S. Patent No. 5,251,761 to Hansen et al. (issued Oct. 12,
`1993) (“Hansen”) (Ex. 1009)
`
`1)
`
`
`Slawinski is prior art to the ’327 Patent
`
`The Slawinski patent qualifies as prior art to the ‘327 Patent under 35 U.S.C.
`
`§ 102(b) (pre‐AIA) because it issued on June 3, 1980, more than one year prior to
`
`the March 14, 2005 application filing date of the ’327 Patent. (Ex. 1004, at 1.)
`
`Slawinski was not made of record or otherwise considered during
`
`prosecution of the application for the’327 Patent. (See Ex. 1001, at 1.)
`
`2)
`
`
`Chen is prior art to the ’327 Patent
`
`The Chen patent qualifies as prior art to the ‘327 Patent under 35 U.S.C. §
`
`102(b) (pre‐AIA) because it issued on November 3, 1998, more than one year prior
`
`to the March 14, 2005 application filing date of the ’327 Patent. (Ex. 1005, at 1.)
`
`Chen was not made of record or otherwise considered during prosecution of
`
`4
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`the application for the’327 Patent. (See Ex. 1001, at 1.)
`
`3)
`
`
`Planeta ’665 is prior art to the ’327 Patent
`
`The Planeta ’665 patent qualifies as prior art to the ‘327 Patent under 35
`
`U.S.C. § 102(b) (pre‐AIA) because it issued on March 7, 1995, more than one year
`
`prior to the March 14, 2005 application filing date of the ’327 Patent. (Ex. 1006, at
`
`1.)
`
`Planeta ’665 was considered and applied during prosecution of the
`
`application that issued as the ’327 Patent. But as discussed below in Section
`
`III.B.7, Petitioner is proposing different combinations than those considered during
`
`prosecution. In particular, Planeta ’665 is being used here to modify the primary
`
`references Slawinski and Chen—which were not cited or discussed during
`
`prosecution. (See, e.g., Ex. 1013, ¶¶ 80-106.)
`
`4)
`
`
`Abele is prior art to the ’327 Patent
`
`The Abele patent qualifies as prior art to the ‘327 Patent under 35 U.S.C. §
`
`102(b) (pre‐AIA) because it issued on March 19, 1985, more than one year prior to
`
`the March 14, 2005 application filing date of the ’327 Patent. (Ex. 1007, at 1.)
`
`Abele was considered and applied during prosecution of the application that
`
`issued as the ’327 Patent. Yet as discussed below in Section III.B.7, Petitioner is
`
`proposing different combinations than those considered during prosecution. In
`
`particular, Abele is being used here to modify the primary references Slawinski and
`
`5
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`Chen—which were not cited or discussed during prosecution. (See, e.g., Ex. 1013,
`
`¶¶ 80-106.)
`
`5)
`
`
`Planeta ’979 is prior art to the ’327 Patent
`
`The Planeta ’979 patent qualifies as prior art to the ‘327 Patent under 35
`
`U.S.C. § 102(b) (pre‐AIA) because it issued on February 15, 1983, more than one
`
`year prior to the March 14, 2005 application filing date of the ’327 Patent. (Ex.
`
`1008, at 1.)
`
`Planeta ’979 was considered and applied during prosecution of the
`
`application that issued as the ’327 Patent. Yet as discussed below in Section
`
`III.B.7, Petitioner is proposing different combinations than those considered during
`
`prosecution. In particular, Planeta ’979 is being used here to modify the primary
`
`references Slawinski and Chen—which were not cited or discussed during
`
`prosecution. (See, e.g., Ex. 1013, ¶¶ 80-106.) There is nothing to suggest that the
`
`Examiner considered or applied Planeta ’979 to either of the independent claims, as
`
`proposed here.
`
`
`
` Hansen is prior art to the ’327 Patent 6)
`
`The Hansen patent qualifies as prior art to the ‘327 Patent under 35 U.S.C. §
`
`102(b) (pre‐AIA) because it issued on October 12, 1993, more than one year prior
`
`to the March 14, 2005 application filing date of the ’327 Patent. (Ex. 1009, at 1.)
`
`Hansen was considered and applied during prosecution of the application
`
`6
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`that issued as the ’327 Patent. Yet as discussed below in Section VI.B.7, Petitioner
`
`is proposing different combinations than those considered during prosecution. In
`
`particular, Hansen is being used here to modify the primary references Slawinski
`
`and Chen—which were not cited or discussed during prosecution. (See, e.g., Ex.
`
`1013, ¶¶ 80-106.)
`
`7)
`
`
`The grounds proposed here are not the same or
`substantially the same as those considered during
`prosecution.
`
`35 U.S.C. § 325(d) provides that in determining whether to institute an IPR
`
`proceeding, the Board may consider whether “the same or substantially the same
`
`prior art or arguments previously were presented to the Office.” While Planeta
`
`’665, Abele, Planeta ’979, and Hansen were considered during prosecution, the
`
`grounds presented here are different from those considered by the Examiner during
`
`prosecution.
`
`During prosecution, the Examiner asserted that Planeta ’665 anticipated
`
`claim 1 as filed. (Ex. 1010, at 33-35.) No obviousness combination was applied
`
`against claim 1. (Id.) In this Petition, however, Petitioner is asserting new primary
`
`references—Slawinski and Chen—not cited or discussed during prosecution. (Ex.
`
`1010, at 33.) The previously cited references are being asserted here in
`
`combination with Slawinski and Chen. These different combinations constitute
`
`different grounds from those considered during prosecution. See Cultec, Inc. v.
`
`7
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`Stormtech LLC, IPR2017-00777, Paper 7 at 12 (PTAB Aug. 22, 2017) (granting
`
`institution where primary reference was previously relied upon by the examiner,
`
`because proposed grounds of invalidity also included additional references not
`
`before the examiner).
`
`Slawinski and Chen are not duplicative of references considered during
`
`prosecution. For example, though the Patent Owner filed a response to an Office
`
`Action and entered certain claim amendments (Ex. 1010, at 47-50), the Examiner
`
`apparently found those amendments insufficient to overcome the prior art of
`
`record. (Ex. 1010, at 59-78.) The claims were only found allowable when
`
`independent claims 1 and 17 were amended to recite that “the stitch count for said
`
`bag is 100 per inch.” (Ex. 1010, at 59-78.)
`
`Patent Owner has recently proposed that this limitation should be construed
`
`as “100 stitches per square inch.” (See Ex. 1011, at 7; Ex. 1012, at 8.) Slawinski,
`
`however—which was not considered during prosecution—explicitly discloses a
`
`bag of “woven high density polyethylene includ[ing] 8×8, 10×10, 9×12 and 12×12
`
`woven polyethylene,” and noted that [s]imilar types of polypropylene can also be
`
`used.” (Ex. 1004, col. 3, lines 17-26 (emphasis added); Ex. 1013, ¶ 51.) A 10x10
`
`weave is equivalent to 100 stitches per square inch. (Id..) Whereas the Examiner
`
`allowed the ’327 Patent on the understanding that the references did not disclose
`
`that “the stitch count for said bag is 100 per inch,” Slawinski clearly meets this
`
`8
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`limitation. (Ex. 1013, ¶ 103.)
`
`Furthermore, during prosecution, Patent Owner amended the claims to recite
`
`that the bag was constructed of “ribbons . . . devoid of low melting temperature
`
`bonding layers between the crossed ribbons,” and argued that both Planeta ’665
`
`and Planeta ’979 require ribbons having such bonding layers, and “teach away”
`
`from such a limitation. (Ex. 1010, at 51.) The Examiner did not disagree.
`
`Neither Slawinski nor Chen were considered during prosecution, and, as
`
`discussed below, each teaches the construction of a bag using ribbons without
`
`bonding layers. (Ex. 1013, ¶¶ 86-90.) Petitioner has furthermore identified an
`
`embodiment of Planeta ’665 in which at least some ribbons specifically “may have
`
`no bonding layers 18.” (Ex. 1006, col. 3, lines 28-36 (emphasis added); Ex. 1013, ¶
`
`47.) Planeta ’979 is completely silent as to bonding layers, and therefore
`
`contemplates the use of ribbons devoid of bonding layers. (Ex. 1008; Ex. 1013, ¶
`
`48.)
`
`For at least these reasons, the prior art combinations and arguments
`
`presented here are different than those considered during prosecution.
`
`The grounds on which this Petition is based are listed in the following table:
`
`Ground Claims Basis for Invalidity
`1
`1-12, 14,
`Obvious over Slawinski, Chen, Planeta ’665, and Abele under
`16
`35 U.S.C. § 103
`13, 15 Obvious over Slawinski, Chen, Planeta ’665, Abele, and
`Planeta ’979 under 35 U.S.C. § 103
`
`2
`
`9
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`3
`17-20
`Obvious over Slawinski, Chen, Hansen, and Planeta ’665
`under 35 U.S.C. § 103
`
`A detailed explanation of why each claim is unpatentable under the statutory
`
`grounds identified above is provided in Part VI below.
`
`C. Requirements for Inter Partes Review 37 C.F.R. § 42.108(c)
`
`Inter partes review of claims 1-20 should be instituted because this Petition
`
`establishes a reasonable likelihood that Petitioner will prevail with respect to at
`
`least one of the claims challenged. See 35 U.S.C. § 314(a). Each limitation of the
`
`challenged claims is disclosed or suggested by the prior art references discussed
`
`herein. Where appropriate, this Petition identifies reasons to combine the
`
`references.
`
`IV. DESCRIPTION OF THE CHALLENGED CLAIMS
`
`A.
`
`The ’327 Patent
`
`The ’327 Patent (Ex. 1001), titled “High Strength Ribbon-Woven
`
`Disposable Bag for Containing Refuse,” was filed on March 14, 2005 without a
`
`priority claim. (Ex. 1001, at 1.) The ’327 Patent is directed to a bag formed from
`
`woven polypropylene ribbons. (Ex. 1001, Abstract.)
`
`10
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`
`
`
`
`
`
`Excerpt of Fig. 1
`’327 Patent
`
`
`
`Fig. 2
`’327 Patent
`
` The bag (shown at numeral 10 in the figures) is formed by weaving
`
`longitudinal and latitudinal polypropylene ribbons (26 and 28, respectively) into a
`
`cylinder, then cutting transversely across the cylinder to create a bag open at both
`
`ends. (Ex. 1001, col. 4, lines 16-22 (Ex. 1013, ¶¶ 67, 68.) One end (32) of the bag
`
`is folded over itself and stitched (32) to seal that end. (Id.) The mouth (30) of the
`
`bag remains open to receive refuse 14. (Id.)
`
`The bag is intended to be “ultra-strong tear resistant, cut resistant, [and]
`
`puncture resistant.” (Ex. 1001, Abstract; Ex. 1013, ¶ 69.) The ’327 Patent
`
`contemplates that the bag could be used on construction sites “for carting away
`
`demolition products such as bricks, wood, nails, and glass.” (Ex. 1001, col. 1, lines
`
`11
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`
`53-58.) The bag is proposed as a disposable alternative to weaker continuous-film
`
`(i.e., non-woven) bags, or to expensive reusable barrels that are cumbersome to
`
`move, bulky to store, and prone to theft from jobsites. (Ex. 1001, col. 1, lines 14-
`
`49; col. 2, lines 35-37.)
`
`The ’327 Patent asserts that, while the bag does stretch when loaded, “any
`
`piercing of the woven structure does not creep or otherwise travel due to the woven
`
`nature of the bag, making the bag both tear resistant and cut resistant[.]” (Ex. 1001,
`
`col. 1, line 61 – col. 2, line 4; Ex. 1013, ¶ 70.)
`
`According to the ’327 Patent, a sample bag of 40” x 29” was constructed in
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`the described manner, using ribbons 6 mm wide, and was conditioned and tested in
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`the Standard Atmosphere for Testing Textiles, according to methods set forth by
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`ASTM standards. (Ex. 1001, col. 2, lines 38-63; col 4, lines 23-25, 45-52; Ex.
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`1013, ¶ 71.) The ’327 Patent includes a table reproducing those test results,
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`showing the inherent features of a bag constructed in this manner:
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
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`Ex. 1001, col. 2, lines 38-63
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`(Ex. 1001, col. 2, lines 38-63; see also Ex. 1010, at 51 (Applicant referring
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`to the “test results in the Specification.”).)
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`Claim 1 of the ’327 Patent recites a “ribbon-woven bag having crossed
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`woven ribbons of flat polypropylene sheet devoid of low melting temperature
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`bonding layers between the crossed ribbons, said bag formed in a cylinder and
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`stitched at one end to complete the bag, wherein the stitch count for said bag is 100
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`per inch.” (Ex. 1001, col. 5, lines 30-37; Ex. 1013, ¶ 72.) The limitation that the
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
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`ribbons be “devoid of low melting temperature bonding layers between the crossed
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`ribbons” was added in response to a prior art rejection during prosecution. (Ex.
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`1010, at 47-50.) Notably, there is not a single mention in the specification of such
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`bonding layers. (Ex. 1013, ¶ 72.) The limitation that the stitch count be “100 per
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`inch” was originally presented in a dependent claim with the application as filed.
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`(Ex. 1010, at 12.) The limitation was incorporated into present claims 1 and 17 by
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`Examiner’s Amendment shortly before those claims were found allowable. (Ex.
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`1010, at 59-78.)
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`
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`Dependent claim 2 recites that the width of the ribbons is between 3 and 6
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`mm. (Ex. 1001, col. 5, lines 38-39.) Claim 3 recites the limitation that the ribbons
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`have a 4-millimeter thickness. (Ex. 1001, col. 5, lines 40-41.)
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`Claims 4-11 and 20 each depend from claim 2, and recite verbatim the
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`inherent characteristics of the sample bag, as tested and reported in the ’327 patent.
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`(Ex. 1001, col. 5, line 42 – col. 6, line 14; Ex. 1013, ¶¶ 74, 113-19.) The
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`measurements recited in those claims are taken directly from Table I in the ’327
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`Patent. (Ex. 1001, col. 2, lines 38-63.)
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`Claims 12 through 15 add the further limitations of a liquid tight layer
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`laminated to the bag (claim 12), including to the exterior of the bag (claim 13); the
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`layer may be a sheet of polypropylene film (claim 14) that is heat sealed to the bag
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`(claim 15). (Ex. 1001, col. 5, lines 15-23.)
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`14
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
`Claim 16 recites the dimensions (40x29”) and references the weight (85
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`
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`grams) of the tested sample bag. (Ex. 1001, col. 5, lines 24-25; Ex. 1013, ¶ 75.)
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`Independent claim 17 recites a method for “removing refuse having sharp
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`points or edges in an economical fashion, comprising the step of locating the refuse
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`in” the bag described in claim 1. (Ex. 1001, col. 26-35.) Dependent claims 18-20
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`include identical limitations to those founds in claims 2-4, respectively.
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`For convenience, the limitations of the challenged claims are broken up and
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`separately labeled (e.g., [1a], [2], etc.) to facilitate easier comparison between the
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`claim limitations and the prior art discussed herein. The separately-labeled claim
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`limitations are listed in Ex. 1003.
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`B.
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`The State of the Art in 2005
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`The subject matter of the ’327 Patent was disclosed and well-known decades
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`before the application for the ’327 Patent was filed in 2005. The claimed materials
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`and methods used to construct woven bags, and the characteristics such bags would
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`have, were well-known by 2005, and had been described both in references that
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`were not considered during prosecution, as well as in references that were before
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`the Examiner. (See, e.g., Ex. 1004; Ex. 1013, ¶¶ 44-46.)
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`In particular, bags had been woven of polypropylene ribbons for many years
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`prior to 2005. (Id.) Before the advent of polypropylene, such bags were woven of
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`jute, an organic fiber. (Ex. 1013, ¶ 45.) Such jute-woven bags did not (and could
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
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`not) include bonding layers. (Id.) When the industry began weaving bags from
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`polypropylene ribbons, bags continued to be woven without bonding layers, as
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`they were previously. (Id.)
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`During prosecution, claim 1 was initially rejected as anticipated by Planta
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`’665. (Ex. 1010, at 33.) In response, the Patent Owner amended the claims to recite
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`that the ribbons were “devoid of low melting temperature bonding layers,” and
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`asserted that neither Planeta ’665 nor Planeta ’979 discloses such a limitation. (Ex.
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`1010, at 51.) For example, the Patent Owner argued that Planeta ’665 “insists on
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`having each strip coated with an inner layer of synthetic material that has a melting
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`temperature lower than that of the strip[.]” (Ex. 1010, at 51.) That is not true. In
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`fact, Planeta ’665 discloses that “some longitudinal strips 12 may have no
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`bonding layers 18” and that “[s]imilar comments apply to the transverse strips
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`14.” (Ex. 1006, col. 3, lines 28-36; Ex. 1013, ¶¶ 47, 48.) Planeta ’979 is completely
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`silent as to bonding layers, and therefore contemplates the use of ribbons devoid of
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`bonding layers. (Ex. 1008; Ex. 1013, ¶¶ 47, 48.)
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`The claims were eventually allowed only with the limitation that “the
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`ribbons stitch count for said bag is 100 per inch,” suggesting that the Examiner
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`considered this to be a point of novelty. (Ex. 1010, at 59-78.) Yet this limitation
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`was also well-known in the art. (Ex. 1013, ¶¶ 47-51.) Slawinski, a patent issued 25
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`years before the application date of the ’327 Patent, discloses a bag of “woven high
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
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`density polyethylene includ[ing] 8×8, 10×10, 9×12 and 12×12 woven
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`polyethylene,” and noted that [s]imilar types of polypropylene can also be used.”
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`(Ex. 1004, col. 3, lines 17-26.) A 10x10 weave is equivalent to 100 stitches per
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`square inch. (Id.; Ex. 1013, ¶¶ 47-51.)
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`Even the references consider by the Examiner teach bags having a stitch
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`count of 100 stitches per inch. For example, Planeta ’665 discloses ribbons having
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`widths ranging from about 0.0005 (i.e., 2000 per linear inch) to about 2 inches (i.e.,
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`0.5 per linear inch), encompassing a “100 per inch” stitch count under any reading
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`of that limitation. (Ex. 1006, col. 1, lines 54-55; Ex. 1013, ¶ 51.)
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`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
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`A. Legal Overview
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`A claim subject to inter partes review is given its “broadest reasonable
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`construction in light of the specification of the patent in which it appears.” 37
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`C.F.R. § 42.100(b). Claim terms that would benefit from construction are
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`identified below. For all other claim terms, Petitioner has applied the broadest
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`reasonable construction based on the plain and ordinary meaning to a person of
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`ordinary skill in the art (POSITA) at the time of invention.
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`A POSITA on March 14, 2005 (the filing date of the ’327 Patent) would
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`have been someone with at least two or three years of experience designing and/or
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`manufacturing bags of woven polypropylene or other plastic materials. (Ex. 1013,
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
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`¶¶ 29-30.)
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`The broadest reasonable construction is fundamentally different from the
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`scope of a claim construed during litigation. See In re Swanson, 540 F.3d 1368,
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`1377‐78 (Fed. Cir. 2008). By identifying the broadest reasonable construction for
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`certain terms here, Petitioner is not conceding the correctness or reasonableness of
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`any construction for any purpose beyond this proceeding.
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`B.
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`“ribbons . . . devoid of low melting temperature bonding layers
`between the crossed ribbons”
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`Claim 1 recites “a ribbon-woven bag having crossed woven ribbons of flat
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`polypropylene sheet devoid of low melting temperature bonding layers between
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`the crossed ribbon[.]” (Ex. 1001, col. 5, lines 30-37.) The specification of the ’327
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`Patent is completely silent as to ribbons having bonding layers; there is not a single
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`mention of ribbons having such layers, or bags made of such ribbons. (Ex. 1013, ¶
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`32.) For that reason, the claim is indefinite; even a negative limitation such as this
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`must find some support in the specification. Inphi Corp. v. Netlist, Inc., 805 F.3d
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`1350, 1356 (Fed. Cir. 2015) (holding that a negative limitation must be supported
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`by at least “properly describing alternative features of the patented invention”).
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`Without waiving Petitioner’s right to assert that the claim is indefinite, the
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`Patent Owner characterized this term during the prosecution of the ’327 Patent. In
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`particular, the Patent Owner argued that the limitation distinguished over Planeta
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`18
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`Petition for Inter Partes Review of
`U.S. Patent No. 7,510,327
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`’665, which it asserted required “ribbons with layers of low-temperature melting
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`material to get crossed ribbons to stick to each other.” (Ex. 1009, at 52.) The Patent
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`Owner did not assert that the specification of the ’327 patent expressly excludes
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`the use of ribbons with bonding layers, discusses the advantage of excluding
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`bonding layers, or discusses the disadvantages of bonding layers. Indeed, there is
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`no mention of bonding layers. (Ex. 1013, ¶ 33.) Rather, the Patent Owner as