Inter Partes Review of US. Patent No. 7,510,327
`
`Filed on behalf of Global Strategies, Inc.
`By: Daniel H. Landau (dlandauéiihayes-solowav.com)
`Todd A. Sullivan (tsullivangalhayes”solowaveom)
`Hayes Soloway PC.
`4640 E. Skyline Drive
`Tucson, AZ 85718
`
`Tel: (520) 882-7623
`Fax: (520) 882-7643
`
`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 IPR 2018-01197
`
`Patent 7,510,327
`
`Issued: March 3l, 2009
`
`Filed: March 14, 2005
`
`Title: HIGH STRENGTH RIBBON-WOVEN DISPOSABLE BAG
`
`FOR CONTAINING REFUSE
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`

`

`Inter Partes Review of US. Patent No. 7,5 I 0,32 7
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ................................................................................................ 1
`
`Background ................................................................................................ 2
`
`A. Related Matters Under 37 C.F.R. §42.8(b)(2) ...................................... 2
`
`B. Brief Description Of The ‘327 Patent ................................................... 3
`
`C. Request To Strike From The Petition ................................................... 3
`
`III. Disclaimer Of Claims 17—20 Under 35 U.S.C. 253(a) ............................... 4
`
`IV.
`
`Claim Construction .................................................................................... 4
`
`A. Legal Overview ..................................................................................... 4
`
`B. “ribbons of flat polypropylene sheet devoid of low melting
`temperature bonding layers between the crossed ribbons” .................. 5
`
`C. “wherein the stitch count for said bag is IOO per inch” ........................ 6
`
`V.
`
`Grounds Raised In The Petition ................................................................. 7
`
`VI.
`
`The Petition Fails To Demonstrate A Reasonable Likelihood Of
`
`Prevailing In Showing The Unpatentability Of Any Of The Challenged
`Claims ..................................., ..................................................................... 7
`
`A. The Petition Relies on Prior Art That is the Same as or Substantially
`the Same as Prior Art Considered in the Original Prosecution ............ 8
`
`B. The Petition Fails To Show That Claims 1-12, 14, And 16 Are
`Obvious Over The Combination Of Slawinski, Chen, Planeta “665,
`And Abele As Alleged In Ground 1 .................................................... 12
`
`C. The Petition Fails To Show That Claims 13 And 15 Are Obvious Over
`
`The Combination Of Slawinski, Chen, Planeta ‘665, Abele, And
`Planeta ‘979 As Alleged In Ground 2 ................................................. 22
`
`D. The Petition Fails To Show That Claims 17-20 Are Obvious Over The
`
`Combination Of Slawinski, Chen, Hansen, And Planeta ‘665 As
`Alleged In Ground 3 ........................................................................... 26
`
`VII. Conclusion ............................................................................................... 27
`
`ii
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`Inter Partes Review of US. Patent No. 7,510,327
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Ashland Oil, Inc. 12. Delta Resins & Refractories, 776 F. 2d 281, 294 (Fed. Cir.
`
`1985) .................................................................................................................... 18
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). ........ 5
`
`Cultec, Inc. v. Stormtech LLC, IPR2017-00777 ................................................ 10, 11
`
`Global Strategies, Inc. v. InterBalk USA, LLC d/b/a InterBulk Express, N0. 1:17—
`
`CV-12166-RGS (D. Mass) ...................................................................................... 3
`
`In re Am. Acad. ofSci., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ................................. 4
`
`In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002) ......................................................... 4
`
`In re GPAC Inc., 57 F.3d 1573, 1577-78 (Fed. Cir. 1995) ...................................... 18
`
`In re Wertlzeirn, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976) ..................... 22
`
`Intelligent Bio-Sys., Inc. v. Illamina Cambridge Ltd, 821 F.3d 1359, 1367-68 (Fed.
`
`Cir. 2016) .............................................................................................................. 20
`
`Jones v. Hardy, 727 F.2d 1524, 1530, 22 USPQ 1021, 1026 (Fed. Cir. 1984) ...... 10
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
`
`2012) ..................................................................-.................................................. 2O
`
`Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)
`
`16
`
`Stratoflex, Inc. v. Aeroquip Corp, 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983)
`
`.............................................................................................................................. 10
`
`Unified Patents, Inc. v. Berman, 1PR2016—01571 ................................................... 11
`
`WL. Gore &Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir.
`
`1983), cert. denied, 469 US. 851 (1984) ............................................................ 25
`
`iii
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`Inter Partes Review of US. Patent No. 7,510,327
`
`Rules
`
`37 C.F.R. § 42.100(b). ............................................................................................... 4
`
`37 C.F.R. § 42.104(b)(2) ........................................................................................... 3
`
`37 C.F.R. § 42.107 ..................................................................................................... 2
`
`37 C.F.R. §42.107(e) ................................................................................................. 4
`
`37 C.F.R. §42.8(b)(2) ................................................................................................. 2
`
`MPEP 2141 02(1) ..................................................................................................... 10
`
`MPEP 2141.02(H) ................................................................................................... 10
`
`MPEP 2141 .02(V1) .................................................................................................. 25
`
`MPEP 2163.(I)(A) ................................................................................................... 21
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) 4
`
`Statutes
`
`35 U.S.C. § 103 ..................................................................................................... 7, 9
`
`35 U.S.C. § 253(a) ..................................................................................................... 4
`
`35 U.S.C. § 313 ......................................................................................................... 2
`
`35 U.S.C. § 314(a) (2013) ......................................................................................... 8
`
`35 U.S.C. § 325(d) ............................................................................................... 1,10
`
`35 U.S.C. §314(a) ................................................................................................ 7, 27
`
`35 U.S.C. §325(d) ...................................................................................................... 1
`
`iV
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`

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`Inter Partes Review of US. Patent No. 7,5 I 0,32 7
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`EXHIBIT LIST 137 C.F.R. § 42.631en
`
`
`
`l
`Exhibit
`l
`Description
`
`l
`Exhibit 2001
`Stipulation of Dismissal of Related Litigation
`l
`Exhibit 2002
`Statutory Disclaimer of Claims 17—20
`
`fihibit 2003 l Website Describing Valeron Manufacturing Process
`
`
`
`
`

`

`Inter Partes Review of US. Patent No. 7,510,32 7
`
`I.
`
`Introduction
`
`lnterbulk USA, LLC (Interbulk) (“Petitioner”) filed a Petition for Inter
`
`Partes Review (Petition) of US. Patent No. 7,510,327, “High-Strength Ribbon-
`
`Woven Disposable Bag for Containing Refuse”, on June 5, 2018. Global
`
`Strategies, Inc. (GSI) (“Patent Owner”) hereby respectfully submits this
`
`Preliminary Response to the Petition setting f01th the reasons why the requested
`
`review should not be instituted.
`
`The following is a brief summary of Patent Owner’s arguments in support of
`
`its position that inter partes review should not be instituted.
`
`Four of the six cited pieces of alleged prior art on which Petitioner relies
`
`were already considered during the prosecution of the ‘327 Patent, and thus, most
`
`of the theoretical combinations Petitioner now asserts are the same as those
`
`considered and overcome during prosecution. Petitioner’s reliance on those
`
`previously-considered references raises no new issue in favor of institution. The
`
`Petition should be denied under 35 U.S.C. §325(d) as relying on the same or
`
`substantially the same prior art that was previously considered by the Office.
`
`With respect to Petitioner’s challenge in Ground 1 based on alleged
`
`obviousness of independent claim 1 and dependent claims 2-12, 14, and 16, the
`
`combination of references relied upon by Petitioner fails to disclose a ribbon—
`
`woven bag having crossed woven ribbons of flat polypropylene sheet devoid of
`
`l
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`

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`Inter Partes Review of US. Patent No. 7,510,327
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`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. In particular, none of the references teaches a
`
`bag devoid of low temperature bonding materials that is also tear-resistant and
`
`puncture—resistant. Therefore, Petitioner’s challenge in Ground 1 fails.
`
`With respect to Petitioner’s challenge in Ground 2 based on the obviousness
`
`of dependent claims 13 and 15, the combination of references relied upon by
`
`Petitioner fails to teach or suggest the requirements of claims 13 and 15. With
`
`particular regard to claim 15, Petitioner and Petitioner’s Expert have applied the
`
`reference to Planeta ‘979 out of context. When Planeta ‘979 is understood
`
`accurately, none of the references teach the requirements of claim 15. Therefore,
`
`Petitioner’s challenge in Ground 2 fails.
`
`With respect to Petitioner’s challenge in Ground 3 based on the obviousness
`
`of independent claim 17 and dependent claims 18-20, Patent Owner has disclaimed
`
`claims 17-20. As such, Ground 3 is moot.
`
`This filing is timely under 35 U.S.C. § 313 and 37 CPR. § 42.107, as it is
`
`being filed within three months of Notice dated July 18, 2018.
`
`11.
`
`Background
`
`A. Related Matters Under 37 C.F.R. §42.8(b)(2)
`
`

`

`Inter Partes Review of US. Patent No. 7,5 I 0,32 7
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`Patent Owner and Petitioner had previously been involved in patent
`
`infringement litigation regarding the ‘327 Patent. See Global Strategies, Inc. v.
`
`InterBulk USA, LLC d/b/a [nterBul/c Express, No. l:l7-CV—lZl66-RGS (D. Mass)
`
`(the “Massachusetts Litigation”). Patent Owner and Petitioner stipulated to a
`
`dismissal of all patent claims, without prejudice, on August 28, 2018. See EX.
`
`2001. There are currently no pending matters related to the ‘327 Patent or this
`
`action.
`
`B. Brief Description Of The ‘327 Patent
`
`The “327 Patent relates to woven bags of polypropylene ribbon, said bags
`
`being particularly useful to contain heavy refuse having pointed or sharp edges
`
`without rupturing, tearing, or disintegrating. The bags are formed using cross
`
`woven ribbons of flat polypropylene with a weave density or stitch count of 100
`
`per square inCh. The crossed woven ribbons are devoid of low melting temperature
`
`bonding layers. In some embodiments, the bags include a liquid-tight layer
`
`laminated thereto.
`
`C. Request To Strike From The Petition
`
`Petitioner alleges claim 1 of the ‘327 Patent is indefinite. See Paper 1, p. 18.
`
`Such an argument is outside the proper scope of inter partes review, and may be an
`, improper attempt to influence the Board to institute interpartes review. See 37
`
`C.F.R. 42.104(b)(2). Accordingly, Patent Owner requests that the paragraph
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`

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`Inter Partes Review of US. Patent No. 7,510,327
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`beginning with “Claim 1 recites ‘a ribbon-woven bag’. . .”, and any other portions
`
`of the Petition that the Board may find to be improper, be stricken from the
`
`Petition.
`
`llI. Disclaimer Of Claims 17—20 Under 35 U.S.C. 253(a)
`
`Patent Owner has filed a statutory disclaimer, disclaiming claims 17-20 of
`
`the ‘327 Patent on October 16, 2018. See Ex. 2002. Therefore, these claims are no
`
`longer at issue in this Inter Partes Review. “No inter partes review will be
`
`instituted based on disclaimed claims.” 37 C.F.R. §42.lO7(e).
`
`IV. Claim Construction
`
`A. Legal Overview
`
`Except as noted below, all claims carry their ordinary and customary
`
`meanings. Consistent with the statute and the legislative history of the America
`
`Invents Act, the Board construes the claims using the “broadest reasonable
`
`interpretation” standard. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). The claim language,
`
`however, must be read in light of the specification as it would be interpreted by one
`
`of ordinary skill in the art. In re Am. Acad. 0fSci., 367 F.3d 1359, 1364 (Fed. Cir.
`
`2004). The Office must apply the broadest reasonable meaning to the claim
`
`language, taking into account any definitions presented in the specification. Id.
`
`(Citing In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
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`

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`Inter Partes Review of US. Patent No. 7,5 I 0,32 7
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`B. “ribbons of flat polypropylene sheet devoid of low melting
`
`temperature bonding layers between the crossed ribbons”
`
`Construction of the requirement “ribbons. . .devoid of low melting
`
`temperature bonding layers between the crossed ribbons” requires construction of
`
`the Claim terms “devoid” and “low melting temperature bonding layers.” There is a
`
`“heavy presumption” that a claim term carries its ordinary and customary meaning.
`
`CCS Fitness, Inc. v. Brunswick Corp, 288 F.3d 1359, 1366 (Fed. Cir. 2002). The
`
`term “devoid is defined in the Oxford English Dictionary as “entirely lacking or
`
`free from.” The prosecution history of the “327 Patent supports this use of devoid.
`
`See Ex. 1010, p. 51 (Patent Owner establishing that the ‘327 Patent “does not need,
`
`require or otherwise provide anything which sticks one ribbon or strip to the
`
`other”). The term “low melting temperature bonding layers” was incorporated in
`
`an amendment in order to distinguish the ‘327 Patent from Planeta “665. The term
`
`“low melting temperature bonding layers” is defined in Planeta ‘665: “The layer
`
`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.” Ex. 1006, p.5, 1:57—64. One skilled in the art
`
`of making woven polypropylene bags would understand low melting temperature
`
`bonding layers to consist of the materials within this group. Therefore, an
`
`5
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`Inter Partes Review of US. Patent No. 7, 510,32 7
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`apparatus devoid of low melting temperature bonding layers lacks any layers of
`
`material from the above group.
`
`Accordingly, the broadest reasonable construction of “ribbons. . .devoid of
`
`low melting temperature bonding layers between the crossed ribbons” is
`
`“ribbons. . .with no low temperature bonding layer materials,” as defined above.
`
`C. “wherein the stitch count for said bag is 100 per inch”
`
`Under the broadest reasonable interpretation, the term “wherein the stitch
`
`count for said bag is 100 per inch” should be interpreted as “wherein the stitch
`
`count for said bag is 100 per square inch.” The stitch count refers to the number of
`
`over/under weaves, or points at which the ribbons cross. The Patent Owner and the
`
`Petitioner agree on this construction.
`
`, It should be noted that in Petitioner’s claim construction, Petitioner argues
`
`that the limitations of claim 2, namely that “the width of said ribbons is between 3
`
`and 6 millimeters,” leads to a density of between 4.25 and 8.5 ribbons per linear
`
`inch. See Paper 1, p.20. This may appear contrary to the “100 stitches per square
`
`inch” requirement of claim 1, as even 8.5 ribbons in both longitudinal and
`
`latitudinal directions falls short of l 00 stitches per square inch. However, Patent
`
`Owner notes that it is known in the industry that flat ribbons can be compressed
`
`during a weaving process such that the density of the actual stitch of the woven
`
`material is greater than the apparent density that ribbons of a particular width can
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`

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`Inter Partes Review of US. Patent No. 7,510,32 7
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`produce. Accordingly, ribbons of between 3 and 6 millimeters wide can be
`
`compressed during assembly, such that a density of 100 stitches per square inch
`
`may be achieved. Thus, claim 2 is not contrary to the proposed claim construction
`
`here.
`
`V.
`
`Grounds Raised In The Petition
`
`The Petition raises the following grounds of invalidity:
`
`Ground 1 — Claims 1—12, 13, and 16 are “obvious” within the meaning of 35
`
`U.S.C. §103 over the combination ofSlawinski, Chen, Planeta “665, and Abele.
`
`Ground 2 -— Claims 13 and 15 are “obvious” within the meaning of 35 U.S.C.
`
`§103 over the combination of Slawinski, Chen, Planeta “665, Abele, and Planeta
`
`‘979.
`
`Ground 3 — Claims 17-20 are “obvious” within the meaning of 35 U.S.C.
`
`§103 over the combination of Slawinski, Chen, Hansen, and Planeta ‘665.
`
`‘ 7‘.”
`V1.
`
`1.-
`ml
`inne Petition Faiis T
`
`“10“‘strate A neaSOi able Likelihood 0f
`
`Prevailing In Showing The Unpatentability Of Any Of The
`
`Challenged Claims
`
`35 U.S.C. §3 14(a) sets the threshold test which a Petitioner must meet before
`
`the Board can institute an inter partes review. “The Director may not authorize an
`
`inter partes review to be instituted unless the Director determines that the
`
`information presented in the petition filed under section 311 and any response
`
`under section 313 shows that there is a reasonable likelihood that the petitioner
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`7
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`Inter Partes Review of US. Patent No. 7,510,327
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`would prevail with respect to at least 1 of the claims challenged in the petition.” 35
`
`U.S.C. § 314(a) (2013). Petitioner’s asserted new serial combinations, built one on
`
`top of another, fail to demonstrate a reasonable likelihood of prevailing with
`
`respect to at least one claim of the ‘327 Patent.
`
`A. The Petition Relies on Prior Art That is the Same or Substantially
`
`the Same as Prior Art Considered in the Original Prosecution
`
`Petitioner argues that claims 1—12, 14, and 16 are obvious over the
`
`combination of Slawinski, Chen, Planeta ‘665, and Abele, while claims 13 and 15
`
`are obvious over the combination of Slawinski, Chen, Planeta ‘665, Abele, and
`
`Planeta ‘979. See Paper 1, p. 9. Planeta ‘665, Abele, and Planeta ‘979 were all
`
`cited by the Examiner during prosecution of the ‘327 Patent. The prosecution
`
`history of the ‘327 Patent indicates that in an Office Action mailed February 19,
`
`2008, the Examiner rejected the originally-filed application claims 1—18 as
`
`anticipated by or obvious from some combination of Planeta ‘665, Planeta ‘979,
`
`and Abelel. See Ex. 1010, pp. 33-37. In response to the Office Action, the
`
`Applicant filed an amendment to application claim 1 on August 1, 2008,
`
`incorporating the language “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.” See Ex. 1010, p. 46—50. The Examiner issued a Notice of
`
`1 Originally filed claims 1—2 and 4- l7 correspond to allowed claims 1-16, at issue
`here.
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`Inter Partes Review of US. Patent No. 7,510,327
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`Allowance on November 17, 2008. See EX. 1010, p. 59. An Examiner’s
`
`amendment followed on December 9, 2008, incorporating the language “wherein
`
`the stitch count for said bag is 100 per inch.”2 See EX. 1010, p. 78.
`
`Contrary to Petitioner’s assertion that “the claims were eventually allowed
`
`only with the limitation that ‘the ribbons [sic] stitch count for said bag is 100 per
`
`inch,” suggesting that the Examiner considered this to be a point of novelty,” no
`
`formal Office Action was issued after the Amendment of August 1, 2008. Paper 1,
`
`p. 16. There is simply no indication in the prosecution history that the Examiner
`
`did not consider the substantive limitations of the August 1, 2008, Amendment to
`
`be the point of novelty, and Petitioner cannot point to any indication that the stitch
`
`count was considered the point of novelty. In fact, originally filed application
`
`claim 3, which contained the stitch count language, was rejected in the Office
`
`Action as obvious from Planeta ‘665. See EX. l0l0‘, p. 34. Therefore, the
`
`prosecution history clearly suggests that the stitch count language was not
`
`considered to be the only point of novelty.
`
`Moreover, Petitioner is incorrect in contending that a single point of novelty
`
`overcame an obviousness rejection. “In determining the differences between the
`
`prior art and the claims, the question under 35 U.S.C. 103 is not whether the
`
`differences themselves would have been obvious, but whether the claimed
`
`2 This was the substantive limitation of originally filed application claim 3.
`
`9
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`Inter Partes Review of US. Patent No. 7,510,327
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`invention as a whole would have been obvious.” MPEP 2141.02(l) (quoting
`
`Stratoflex, Inc. v. Aemquz'p Corp, 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983))
`
`(emphasis in original). The Examiner would not have considered the amended
`
`requirements by themselves when determining whether the claims of the ‘327
`
`Patent were obvious in light of the prior art references. Instead, the Examiner
`
`would have considered each claim as a whole, in accordance with the MPEP.
`
`Petitioner’s suggested, truncated treatment of the amended claim language is
`
`expressly contraindicated. See MPEP 2141 02(11). “Treating the advantage as the
`
`invention disregards [the] statutory requirement that the invention be viewed “as a
`
`whole.”9 Id. (quoting Jones v. Hardy, 727 F.2d 1524, 1530, 22 USPQ 1021, 1026
`
`(Fed. Cir. 1984)). Therefore, the amended claims as a whole would have been
`
`considered to overcome the prior art, not just one or more points of novelty.
`
`More importantly, the prosecution history shows that Planeta ‘665, Planeta
`
`“979, and Abele were all considered by the Examiner during prosecution of the
`
`‘327 Patent. “In determining whether to institute or order a proceeding under this
`
`chapter, chapter 30, or chapter 31, the Director may take into account whether, and
`
`reject the petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Petitioner
`
`argues that Cultec, Inc. v. Stormtech LLC, 1PR201 7-00777 allows previously—
`
`examined references to be considered when combined with new references. See
`
`10
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`Inter Partes Review of US. Patent No. 7,510,327
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`Paper 1, p. 7. But Cultec does not hold that previously-considered references that
`
`were overcome during prosecution can be re-argued during inter partes review. To
`
`the contrary, the Board found that the grounds of unpatentability based upon the
`
`previously—considered and overcome references were not sufficient to institute
`
`inter partes review. See Cultec, Paper 7, p. 13 (PTAB Aug. 22, 2017).
`
`Additionally, in Unified Patents, Inc. v. Berman, IPR2016—0157l, the Board found
`
`that references cited during prosecution, but not explicitly used to reject certain
`
`claims, had been considered once the claims became allowable. See Unified
`
`Patents, Ina, Paper 10, p. 11 (PTAB Dec. 14, 2016). The Board denied institution
`
`of inter partes review on the relevant claims as well. See Id, p. 16.
`
`Planeta ‘665, Planeta ‘979, and Abele were already considered by the
`
`Examiner during prosecution of the ‘327 Patent. Each of the references was
`
`considered, both explicitly in the Office Action, and implicitly in light of the
`
`claims becoming allowable. Therefore, Petitioner cannot rely on Planeta ‘665,
`
`Planeta ‘979, and Abele to re—argue rejections that were overcome during
`
`prosecution. However, the Petition reprises such arguments numerous times,
`
`including:
`
`o Arguing that Planeta ‘665 teaches devoid oflow melting temperature
`
`bonding layers between the crossed ribbans. See Paper 1, p. 28.
`
`ll
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`Inter Partes Review of US. Patent No. 7,510,327
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`0 Arguing that Abele teaches devoid of low melting temperature
`
`bonding layers between the crossed ribbons. See Paper 1, p. 29.
`
`0 Arguing that Abele teaches said bagformed in a cylinder and stitched
`
`at one end to complete the bag. See Paper 1, p. 29.
`
`0 Arguing that Planeta “665 teaches said bagformed in a cylinder and
`
`stitched at one end to complete the bag. See Paper 1, p. 30.
`
`0 Arguing that Planeta “665 teaches wherein the stitch countfor said
`
`bag is 100per inch. See Paper 1, p. 3 l.
`
`o Arguing that Abele teaches wherein the stitch countfor said bag is
`
`IOOper inch. See Paper 1, p. 32.
`
`The Examiner allowed the ‘327 Patent after all of these requirements were
`
`added to claim 1 by amendment. See Ex. 1010, p. 80. They were not rejected, and
`
`indeed overcame the rejections made within the only issued Office Action.
`
`Therefore, they have been previously considered, and cannot be argued again in
`
`this Inter Partes Review. Accordingly, the Board should not institute inter partes
`
`review based on any of Petitioner’s above arguments.
`
`B. The Petition Fails To Show That Claims 1-12, 14, And 16 Are
`
`Obvious Over The Combination Of Slawinski, Chen, Planeta ‘665,
`
`And Abele As Alleged In Ground 1
`
`Petitioner argues that claims 1-12, 14, and 16 are obvious over the
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`combination of Slawinski, Chen, Planeta ‘665, and Abele. See Paper 1, p. 21.
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`Inter Partes Review of US. Patent No. 7,510,327
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`Claim 1 is an independent claim upon which claims 2-12, 14, and 16 depend,
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`directly or indirectly. Claim 1 requires:
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`“an ultra strong, tear—resistant, puncture-resistant bag having a high tear
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`strength,” which Petitioner calls Limitation [a];
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`0
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`“a ribbon-woven bag having crossed woven ribbons of flat polypropylene
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`sheet devoid of low melting temperature bonding layers between the
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`crossed ribbons,” which Petitioner calls Limitation l[b];
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`0
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`“said bag formed in a cylinder and stitched at one end to complete the
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`bag,” which Petitioner calls Limitation l[c]; and
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`0
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`“wherein the stitch count for said bag is 100 per inch,” which Petitioner
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`calls Limitation l[d].
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`Planeta ‘665 and Abele were previously considered by the Examiner during
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`prosecution of the ‘327 Patent. Claim 1 was found to be allowable over Planeta
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`‘665 and Abele in light of Limitations l[b], l[c], and l[d]. Therefore, Petitioner
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`cannot now re-argue these references with respect to these claim limitations. The
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`new references Slawinski and Chen do not teach or suggest all of Limitations l[b]—
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`l[d].
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`Turning to Limitation l[b], neither Slawinski nor Chen teaches a ribbon-
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`woven bag. . .devoid of low melting temperature bonding layers between the
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`crossed ribbons. Slawinsky does not teach a ribbon—woven bag, but a three—layer
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`Inter Partes Review of US. Patent No. 7, 510,32 7
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`bag having a woven structural outer layer, an oil-resistant intermediate layer, and a
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`sealing film inner layer. See Ex. 1004, col. 3, lines 1-65. The three layers are
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`laminated together to form a 3—ply unitaryfilm for packaging explosives. See Ex.
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`1004, col. 1, line 65 — col. 2, line 2. A 3-ply unitary laminated film is not
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`analogous or equivalent to a ribbon—woven bag. Even if film and ribbon-woven
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`bags were analogous, Slawinsky does not teach a bag devoid of low melting
`temperature bonding layers. As construed above, “devoid” means “entirely
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`lacking or free from,” and “low temperature bonding layers” comprises synthetic
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`plastic material selected from the group consisting of linear low density
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`polyethylene, ionomers (for example surlyn), polyvinyl chloride, ethyl vinyl
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`acetate, ethyl propyl copolymers, polyethylene copolymers, low density
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`polyethylene, their copolymers, vinyl copolymers, and mixtures thereof” (emphasis
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`added). Slawinsky teaches that “low density polyethylene is preferred” for the
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`sealing film when the structural film is fabricated from polyethylene. Ex. 1004,
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`col. 3, lines 53—54. Slawinsky’s Table 1 gives six examples of laminate films, all
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`of which comprise low density polyethylene or polyethylene copolymers. See Ex.
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`1004, col. 4, lines 5-34. Further still, Slawinsky teaches that the outer structural
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`layer is a cross oriented laminate “manufactured by a process whereby two or more
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`oriented high density polyethylene films are laminated together.” Ex. 1004, col. 3,
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`lines 12—14. The example given by Slawinsky, a material called Valeron®, is made
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`Inter Partes Review of US. Patent No. 7,510,32 7
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`in such a way, with multiple layers of high density polyethylene laminated using
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`polyethylene. See EX. 2003. The polyethylene lamination process naturally
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`includes low melting temperature bonding. Nowhere in Slawinsky is it taught that
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`a ribbon—woven bag is devoid of low melting temperature bonding layers. To the
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`contrary, Slawinsky teaches a 3-ply laminated film bag formed from a number of
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`low melting temperature bonding materials used in each part of his laminated film
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`bag. Therefore, Slawinsky does not teach Limitation l[b].
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`Chen does not teach Limitation l[b] when viewed in accordance with
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`Limitation l[a]. Chen teaches a woven bag but fails to provide any relevant
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`teachings on the materials with which the bag is woven with the exception of one
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`brief mention of polypropylene strips. See EX. 1005, col. 4, lines 11-13. Without
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`more, it is purely Petitioner’s speculation whether Chen’s bag is “an ultra strong,
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`tear-resistant, puncture—resistant bag having a high tear strength,” as alleged in the
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`Petition. Paper 1, p. 26. Chen teaches that the bag is “for use in the transport and
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`delivery of postal materials.” Ex. 1005, col. 1, lines 7-9. The bag in the ‘327
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`Patent is designed to contain “bricks, drywall pieces, two-by—fours with ...nails
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`protruding therefrom,” and other sharp, bulky objects, such as pipe, wire, metal, or
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`glass shards. EX. 1001, col. 1, lines 23—27. There is nothing in Chen suggesting a
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`bag capable of resisting punctures and tears from such material. Chen does not
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`provide any detail about the process for creating the polypropylene strips — how
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`Inter Partes Review of US. Patent No. 7,510,32 7
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`they are made, the width and thickness of each strip, or how they are known to
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`perform. Since Chen is silent as to any appreciable detail other than the base
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`material of the bag, Chen cannot be said to teach Limitation l[a].
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`It follows, then, that Chen cannot be said to teach Limitation l[b] when
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`viewed in accordance with Limitation l[a]. Petitioner further alleges that “Chen
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`does not mention nor require the use of bonding layers in the disclosed ribbons.”
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`Paper 1, p. 27. But by adopting such a narrow claim construction, Petitioner
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`impermissibly conflates not mentioning bonding layers with requiring a
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`bag...devoid ofbonding layers. In other words, Petitioner equates silence on a
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`negative claim limitation with an affirmative teaching of the negative claim
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`limitation. This would effectively render the term devoid of low melting
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`temperature bonding layers moot, as literally any reference that does not mention
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`low melting temperature bonding layers could be seen to teach the term devoid of
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`low melting temperature bonding layers. In order for a reference to teach a
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`missing characteristic, one skilled in the art should understand that missing
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`characteristic to be necessarily present in the reference. See Scliering Corp. v.
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`Geneva Pharms., Inc, 339 F.3d 1373, 1377 (Fed. Cir. 2003). Petitioner has
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`presented no evidence that a POSITA would understand Chen to require a bag
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`devoid of low melting temperature bonding layers. Instead, Petitioner simply
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`argues that the negative limitation is not present in Chen. See Paper 1, p. 28.
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`Inter Partes Review of US. Patent No. 7,510,327
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`Petitioner’s assertions alone are not sufficient to prove that Chen teaches
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`Limitation l[b].
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`Turning to Limitation, l[d], Slawinsky does not teach “wherein the stitch
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`count for said bag is 100 per square inch.” Petitioner argues that “Slawinsky
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`teaches that ‘[s]uitable grades of high density polyethylene include 8x8, lOXlO,
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`9x12 and 12X12 woven polyethylene,’ and that ‘[s]imilar types of polypropylene
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`can also be used as structural films.” Paper 1, p. 3l. In support of the Petition, a
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`Declaration from Mirek Planeta merely reiterates Petitioner’s arguments, stating,
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`“[a] woven ‘lel 0’