Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HEINEKEN N.V.,
`Petitioner,
`v.
`ANHEUSER-BUSCH INBEV S.A.,
`Patent Owner.
`
`
`Case IPR2018-01663
`Patent 9,944,453 B2
`
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HEINEKEN N.V.,
`Petitioner,
`v.
`ANHEUSER-BUSCH INBEV S.A.,
`Patent Owner.
`
`
`Case IPR2018-01663
`Patent 9,944,453 B2
`
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`IPR2018-01663
`Patent 9,944,453 B2
`
`I.
`INTRODUCTION
`Heineken N.V. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–7 of U.S. Patent
`No. 9,944,453 B2 (Ex. 1001, “the ’453 patent”). Anheuser-Busch
`InBev S.A. (“Patent Owner”) filed a Preliminary Response to the Petition
`(Paper 6, “Prelim. Resp.”). Upon Board authorization, Petitioner also filed a
`Reply (Paper 8) to the Preliminary Response and Patent Owner filed a Sur-
`Reply (Paper 9).
`To institute an inter partes review, we must determine that the
`information presented in the Petition shows “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 discussed
`below, after considering the parties’ submissions and the evidence of record,
`we determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing with respect to at least one claim of the ’453 patent. Thus, we do
`not institute an inter partes review.
`
`A. Related Proceedings
`The parties identify Anheuser-Busch InBev S.A. v. Heineken USA Inc.,
`No. 18-cv-3856 (S.D.N.Y.) and Certain Blow-Molded Bag-in-Container
`Devices, Associated Components, and End Products Containing or Using
`Same, Inv. No. 337-TA-1115 (International Trade Commission) as related
`matters. Pet. 1; Paper 4, 2. Patent Owner also notes that a related patent is
`being challenged in IPR2018-01669, and that Petitioner challenges
`additional patents owned by Patent Owner in IPR2018-01665 and IPR2018-
`01667. Paper 4, 1.
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`Patent 9,944,453 B2
`
`B. The ’453 Patent
`The ’453 patent relates to bag-in-containers and, in particular, “to
`integrally blow-moulded1 bag-in-containers made of a single material.”
`Ex. 1001, 1:15–18. The ’453 patent explains that bag-in-containers, also
`called bag-in-bottles or bag-in-boxes depending on the geometry of the outer
`vessel, encompass “a family of liquid dispensing packaging consisting of an
`outer container comprising an opening to the atmosphere—the mouth—and
`which contains a collapsible inner bag joined to said container and opening
`to the atmosphere at the region of said mouth.” Id. at 1:25–33.
`Figures 1A and 2A of the ’453 patent are reproduced below:
`
`
`
`
`1 The art uses the terms “moulded” and “molded” interchangeably. We do
`so as well.
`
`3
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`IPR2018-01663
`Patent 9,944,453 B2
`Figure 1A is a schematic cross-sectional representation of a two layer
`preform suitable for blow moulding a container. Id. at 3:32–34. Figure 2A
`is a schematic cross-sectional representation of a container obtained by blow
`moulding the preform of Figure 1A. Id. at 3:39–41. As shown in
`Figure 1A, preform 1 comprises inner layer 11 and outer layer 12. Id. at
`3:54–59. The region between inner and outer layers 11 and 12 is
`interface 14, where the two layers substantially contact each other. Id. at
`3:59–62.
`
`Bag-in-container 2 is formed by bringing the preform of Figure 1A to
`a blow-moulding temperature, fixing the heated preform at the level of the
`neck region, and blow moulding the heated preform. Id. at 5:7–12. As
`shown in Figure 2A, inner layer 21 and outer layer 22 of the blow moulded
`container are connected by interface 24 over substantially the whole of the
`inner surface of the outer layer, and interface 24 is in fluid communication
`with the atmosphere through vents 3. Id. at 5:12–17.
`The ’453 patent explains that “[o]ne redundant problem with
`integrally blow-moulded bag-in-containers is the choice of materials for the
`inner and outer layers, which must be selected according to strict criteria.”
`Id. at 2:26–29. Specifically, the two layers must be compatible in terms of
`processing, but incompatible in terms of adhesion. Id. at 2:29–31. Materials
`used in the prior art for this purpose were, for example, PET or EVOH2 for
`the outer layer, and polyethylene for the inner layer. Id. at 2:38–41.
`The ’453 patent explains that use of these materials is advantageous for
`injection molding of the preforms, but “far from optimal for the blow-
`
`
`2 PET is polyethylene terephthalate and EVOH is ethylene vinyl alcohol.
`Ex. 1001, 7:17–18, 7:21.
`
`4
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`IPR2018-01663
`Patent 9,944,453 B2
`moulding step since polyethylene and PET are characterized by different
`blow-moulding temperatures.” Id. at 2:41–45.
`The ’453 patent reports that “it has surprisingly been discovered that
`excellent delamination results between the inner and outer layers can be
`obtained” when the preforms for both the inner and outer layers consist of
`the same material. Id. at 4:34–38. In one method for successfully using
`such layers made of the same material, gas is first blown into the space
`defined by the inner layer to stretch the preform. Id. at 5:41–42. This gas is
`retained within the gap separating the inner and outer layers of the preform
`until the pressure in said gap reaches a predetermined value, at which point a
`valve is opened allowing evacuation of the gas. Id. at 5:42–49. “By this
`method, the inner layer is prevented from entering into contact with the outer
`layer by the air cushion enclosed within the gap separating the two layers
`when their respective temperatures are the highest,” and the layers only
`come into contact “when their respective temperatures have dropped to a
`level where adhesion between the layers cannot build up to any substantial
`level.” Id. at 5:50–60.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–7 of the ’453 patent. Independent
`claim 1 is illustrative of the challenged claims and is reproduced below:
`
`1. An integrally blow-moulded dispensing bag-in-
`container having a body and a neck region, said bag-in-
`container comprising:
`a single layer inner bag which is collapsible and
`comprises an opening to an outer atmosphere defined
`by a lip;
`a single layer outer container;
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`IPR2018-01663
`Patent 9,944,453 B2
`a vent disposed in the neck region; said vent between the
`inner bag and outer container, which opens to the
`atmosphere; and
`a source of pressurized gas releasably attached to the
`vent, wherein:
`the inner bag and the outer container comprise a same
`polymer,
`said inner bag is adjacent to and in direct contact with
`said outer container forming an interface therebetween,
`said inner bag and said outer container have said same
`polymer over substantially the entirety of the interface,
`and
`said dispensing bag-in-container being suitable for
`dispensing a liquid contained in an inner bag by
`pressurizing with the source of pressurized gas the
`interface between said inner bag and said outer
`container.
`Ex. 1001, 6:56–7:11.
`D. The Asserted Grounds of Unpatentability
`Petitioner contends claims 1–7 of the ’453 patent would have been
`obvious in view of the following grounds of unpatentability (Pet. 4):
`References
`Basis
`Claims
`Challenged
`1–7
`
`Butterworth,3 Beyens,4 and/or Schmidt5
`
`§ 103
`
`Brady6 and Takakusagi7
`
`§ 103
`
`1–7
`
`
`3 WO 91/08099, published June 13, 1992 (Ex. 1005).
`4 EP 0389191, published September 26, 1990 (Ex. 1006).
`5 US 5,301,838, issued April 12, 1994 (Ex. 1007).
`6 US 6,066,287, issued May 23, 2000 (Ex. 1008).
`7 JP App. Pub. H6-345069, published December 20, 1994 (Ex. 1010, English
`translation).
`
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`Patent 9,944,453 B2
`
`References
`
`Beyens, Keisuke,8 and/or Richter9
`
`Keisuke, Beyens, and/or Schmidt
`
`Basis
`
`§ 103
`
`§ 103
`
`Claims
`Challenged
`1–7
`
`1–7
`
`In support of its obviousness arguments, Petitioner relies on the
`declaration testimony of Dr. Maureen Reitman. Ex. 1002. In opposition to
`the Petition, Patent Owner relies on the testimony of Dr. Paul Koch.
`Ex. 2001.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2017).10 In determining the broadest reasonable construction, we presume
`that claim terms carry their ordinary and customary meaning. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee
`may define a claim term in a manner that differs from its ordinary meaning;
`however, any special definitions must be set forth in the specification with
`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`8 JP App. Pub. H06-039906 A, published February 15, 1994 (Ex. 1012,
`English translation).
`9 US 5,242,085, issued September 7, 1993 (Ex. 1013).
`10 A recent amendment to this rule does not apply here, because the Petition
`was filed before 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 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
`
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`Patent 9,944,453 B2
`Petitioner and Patent Owner do not identify any claim terms that are
`in need of express construction. Pet. 5; Prelim. Resp. 8. Upon review of the
`parties’ arguments and the prior art of record, we agree with the parties that
`no claim terms of the ’453 patent require express construction for purposes
`of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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 in view of Butterworth, Beyens, and/or Schmidt
`Petitioner contends the subject matter of claims 1–7 would have been
`obvious over the combined disclosures of Butterworth, Beyens, and/or
`Schmidt. Pet. 26–42.
`
`1. Butterworth
`Butterworth discloses a preform for a blown container that is injection
`molded as two separate pieces and subsequently fitted together before the
`preform is blown to form the container. Ex. 1005, 3:29–32. The containers
`of Butterworth may have a capacity of up to three liters. Id. at 5:19–27.
`Figure 4 of Butterworth is reproduced below:
`
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`IPR2018-01663
`Patent 9,944,453 B2
`
`
`Figure 4 is a longitudinal section through a fourth example preform of
`Butterworth. Id. at 14:25–26, 15:23. The preform of Figure 4 has inner
`shell 1, outer shell 4, and longitudinally extending channels 7, which provide
`venting for the space between the two shells after the bottle has been
`formed. Id. at 15:28–36. Both the inner and outer shell are made of PET,
`but outer shell 4 “has a very much greater wall thickness than the inner
`shell 1.” Id. at 15:28–30.
`Butterworth explains that channels 7 allow “the liner formed by the
`inner shell 1 to be collapsed by applying a vacuum to the neck of the bottle.”
`Id. at 15:36–16:1. The resulting liner-less bottle may then be re-lined and
`re-used. Id. at 11:24–33, 16:1–2.
`
`2. Beyens
`Beyens discloses containers for transport, storage, and dispensing of
`beverages, including beverages that are dispensed from the container under
`pressure. Ex. 1006, 1:2–6. Beyens explains that PET containers have been
`developed for use with beverages such as beer or soft drinks, but “such
`
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`IPR2018-01663
`Patent 9,944,453 B2
`containers have the disadvantages that PET is not completely impervious to
`oxygen.” Id. at 1:16–22. Thus, Beyens provides a container having an outer
`container made of, for example, PET, and an “inner bag of flexible air-tight
`or gas-tight material.” Id. at 1:45–48, 2:15–18.
`Figure 1 of Beyens is reproduced below:
`
`
`Figure 1 is a diagrammatic cross-section through a container of Beyens,
`showing the container connected to a dispensing tap and a source of
`pressurized gas. Id. at 2:22–25. Beyens explains that outer container 10 is
`formed of PET and inner bag 20 is formed of a material that is suitable for
`contact with the stored beverage, such as layered polyethylene. Id. at 2:40–
`41, 2:50–55. A source of pressurized gas 82 is connected through gas
`line 78 and provides gas to the space between outer container 10 and inner
`bag 20, which forces the contents of the bag to flow out through dispensing
`line 66 when the tap is opened. Id. at 4:36–50.
`
`10
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`Patent 9,944,453 B2
`
`3. Schmidt
`Schmidt discloses a multi-layer plastic container for use with either a
`positive or negative pressure dispensing system. Ex. 1007, Abstract. The
`multi-layer container of Schmidt is blow molded from a multi-layer
`polymeric preform having an inner layer made of a material that has
`“no tendency to form primary chemical bonds with the outer layer” and thus
`is “not substantially melt soluble in the polymer of the outer layer.”
`Id. at 1:50–56. “As such, the dissimilar layers may be separated through the
`application of force.” Id. at 1:58–60, 1:61–64 (using a positive pressure
`of 20 psi to delaminate the inner layer and dispense a product).
`
`4. Analysis
`Petitioner contends that Butterworth teaches applying a vacuum to the
`mouth of the container, and that one of ordinary skill in the art would have
`understood that such a vacuum creates a “pressure differential to collapse the
`bag and dispense the liquid.” Pet. 33. Petitioner further contends that
`because the vacuum of Butterworth would bring the liquid into contact with
`the atmosphere, one of ordinary skill in the art would have sought to use the
`positive pressure systems of Beyens and/or Schmidt to dispense the liquids
`of Butterworth. Id. at 33–36.
`Contrary to Petitioner’s arguments, we are directed to no disclosure in
`Butterworth of using negative pressure to dispense liquids from a container.
`As noted by Patent Owner, the vacuum of Butterworth is applied only after
`the contents of the container have been removed. Prelim. Resp. 41 (citing
`Ex. 1005, 11:24–12:19); Ex. 1005, 11:29–33 (“However, after use of such a
`container the inner layer of the container, since it is not bonded to the outer
`layer, can be removed by, for example, applying a vacuum to the inner part
`
`11
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`IPR2018-01663
`Patent 9,944,453 B2
`of the container and allowing air to flow through the vents into the interface
`between the two parts.”) (emphasis added), 15:36–16:2 (“This allows the
`liner formed by the inner shell 1 to be collapsed by applying a vacuum to the
`neck of the bottle. The resulting bottle may be re-lined before being re-
`used.”). Thus, it is not evident from Petitioner’s arguments why one of
`ordinary skill in the art would have sought to apply the positive pressure
`systems of Beyens and/or Schmidt, which apply positive pressure to the
`interior of a container in order to dispense beverages, to the system of
`Butterworth, which applies a vacuum to collapse the liner of a container
`once it is empty.
`In view of the foregoing, Petitioner has not demonstrated a reasonable
`likelihood that claim 1 of the ’453 patent would have been obvious over the
`combined disclosures of Butterworth, Beyens, and/or Schmidt. Petitioner
`also does not present any arguments or evidence with respect to dependent
`claims 2–7 that would remedy the defects noted above with respect to
`claim 1. Thus, Petitioner has not demonstrated a reasonable likelihood that
`the subject matter of claims 1–7 would have been obvious over the
`combined disclosures of Butterworth, Beyens, and/or Schmidt.
`
`C. Obviousness in view of Brady and Takakusagi
`Petitioner contends the subject matter of claims 1–7 would have been
`obvious over the combined disclosures of Brady and Takakusagi. Pet. 43–
`56.
`
`1. Brady
`Brady is directed to a gas assist injection molding process for forming
`a multi-layered plastic bottle. Ex. 1008, 1:12–14. In this process, a double-
`
`12
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`IPR2018-01663
`Patent 9,944,453 B2
`layered plastic parison is formed, preferably from PET, and then blow
`molded to form a double-layered container. Id. at 1:53–56, 2:3–6.
`Figures 1 and 2 of Brady are reproduced below:
`
`
`
`Figure 1 is an elevational, sectional view of the double-walled parison of
`Brady, and Figure 2 is an elevational, sectional view of the double-walled
`container formed from the parison of Figure 1. Id. at 1:38–46. As shown in
`Figure 1, the double-walled parison has inner container 14 and outer
`container 16. Id. at 2:9–13. The double-walled parison also contains
`aperture 20, which allows back pressure to be provided to space or void 18
`between inner container 14 and outer container 16. Id. at 2:30–35.
`
`As shown in Figure 2, use of back pressure during the blow molding
`process allows inner container 14 to be formed into a different shape than
`outer container 16, i.e., “inner container 14 need not conform to the outer
`container 16 during the blow molding process.” Id. at 2:30–37. Brady
`explains that after blow molding inner and outer layers 14 and 16 into their
`final shape, carbon dioxide may be inserted into void 18 between the inner
`
`13
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`IPR2018-01663
`Patent 9,944,453 B2
`and outer containers. Id. at 2:41–43. This gas creates a barrier to the
`diffusion of materials through the wall of inner container 14 and is retained
`within void 18 “by means of, for example, a plastic plug 28.” Id. at 2:43–46.
`Brady explains that the container may also be modified by (1) injecting a
`water-soluble colored fluid between the layers of the container; (2) creating
`a vacuum between the container layers to provide a container with improved
`insulating properties; or (3) creating an aerosol container by pressurizing the
`void space between the container layers. Id. at 1:57–62, 3:5–55.
`
`2. Takakusagi
`Takakusagi discloses a bottle that is comprised of at least an outside
`layer and an inside layer that are freely separable. Ex. 1010 ¶ 8. The inside
`layer of Takakusagi is formed from a different synthetic resin material with
`a higher melting point than the outside layer. Id. ¶¶ 8, 10.
`Figure 1 of Takakusagi is reproduced below:
`
`
`Figure 1 of Takakusagi is a side-by-side cross-section/front view of a
`laminated separable bottle. Id. at 5 (“Brief Description of the Drawings”).
`
`14
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`IPR2018-01663
`Patent 9,944,453 B2
`As shown in Figure 1, the bottle of Takakusagi is composed of outside
`layer 1, inside layer 2, and atmosphere introduction holes 3, which are
`“formed at the bottle mouth where the cap is fitted so as to not be
`conspicuous.” Id. ¶¶ 13, 16. Takakusagi explains that atmosphere
`introduction holes 3 can also be formed “at the body part, the bottom part or
`any other place where air can flow in.” Id. ¶ 16.
`
`3. Analysis
`Claim 1 requires that the inner bag and outer container comprise the
`same polymer and that the inner bag is adjacent and in direct contact with
`the outer container, “forming an interface therebetween.” Ex. 1001, 7:1–7.
`Petitioner contends Brady discloses that its preform is composed of two
`layers of the same material, preferably PET, and asserts Brady’s disclosure
`that “inner container 14 need not conform to the outer container 16 during
`the blow molding process” inherently discloses that the two layers may
`conform to each other during this process. Pet. 48–49 (citing Ex. 1008, 2:4–
`5, 2:35–37; Ex. 1002 ¶ 110) (emphasis added). To the extent Brady does not
`disclose two layers that are in direct contact to form an interface, Petitioner
`contends one of ordinary skill in the art would have sought to use the “freely
`separable layers disclosed in Takakusagi with the aforementioned features of
`Brady.” Id. at 49–50.
`Patent Owner contends Petitioner has not demonstrated sufficiently
`that the inner and outer layers of Brady are in direct contact, and contends
`Petitioner’s reliance on Takakusagi is misplaced. Prelim. Resp. 48.
`We agree.
`Brady discloses introducing back pressure to void 18 between the
`inner and outer layers of the preform during the blow molding step
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`so that the inner container 14 may be formed to a different shape
`than the outer container 16. Thus, the inner container 14 need
`not conform to the outer container 16 during the blow molding
`process. In this way, for example, a double-walled container 22
`may be formed wherein the outer container 16 has a flat circular
`base 24 while the inner container 14 has a convex hemispherical
`base 26.
`Ex. 1008, 2:30–40. During this process, void 18 is maintained, and later
`may be filled with carbon dioxide or any other gas. Id. at 2:30–46.
`
`Petitioner does not adequately explain why Brady’s discussion of
`successfully preventing the inner and outer layers from conforming to each
`other during the blow molding process would teach or suggest conforming
`the inner and outer layers during the blow molding process. Indeed, both
`Petitioner and Brady rely on void 18 being maintained during the blow
`molding process in order to allow carbon dioxide or a colored liquid to be
`injected between the inner and outer layers of the container. Pet. 48 (citing
`Ex. 1008, 2:30–33 (providing back pressure to space or void 18 “so that the
`inner container 14 may be formed to a different shape than the outer
`container 16”), 2:41–43 (“Carbon dioxide or any other gas may be inserted
`into the void 18 between the inner and outer containers 14 and 16,
`respectively.”), 3:5–9 (“As will be readily apparent to one ordinarily skilled
`in the art, the carbon dioxide inserted into the void 18 may be at atmospheric
`pressure, or may be at an elevated pressure.”)). Thus, we are not persuaded
`that Brady teaches or suggests a container having inner and outer layers that
`conform, as asserted by Petitioner.
`
`As noted by Petitioner, Takakusagi discloses inner and outer layers
`that are “freely separable” and in direct contact. Pet. 49–50; Ex. 1010 ¶ 8,
`Fig. 1. These layers, however, are formed of different materials.
`
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`Ex. 1010 ¶ 10 (“The method for manufacturing a laminated separable bottle
`of the present invention is characterized in that” the bottle is formed using
`“at least two separable layers” that are “formed from different synthetic
`materials”). Thus, to the extent Petitioner contends one of ordinary skill in
`the art would have sought to use the “freely separable” layers of Takakusagi
`in Brady, it does not explain adequately why the proposed combination
`would provide an inner bag and outer container that comprise the same
`polymer. See Pet. 51 (relying on the composition of Brady’s inner and outer
`layers to satisfy the limitation: “said inner bag and said outer container have
`said same polymer over substantially the entirety of the interface”).
`Moreover, to the extent Petitioner proposes to form Brady’s PET layers in
`contact, the orientation disclosed in Takakusagi, it does not adequately
`explain how the inner and outer layers of Brady could be formed of the same
`polymer, blow molded in a conforming manner, and successfully
`delaminated using gas pressure. Id. at 49–50.
`In view of the foregoing, Petitioner has not demonstrated a reasonable
`likelihood that claim 1 of the ’453 patent would have been obvious over the
`combined disclosures of Brady and Takakusagi. Petitioner also does not
`present any arguments or evidence with respect to dependent claims 2–7 that
`would remedy the defects noted above with respect to claim 1. Thus,
`Petitioner has not demonstrated a reasonable likelihood that the subject
`matter of claims 1–7 would have been obvious over the combined
`disclosures of Brady and Takakusagi.
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`
`D. Obviousness in view of Beyens, Keisuke, and/or Richter
`Petitioner contends the subject matter of claims 1–7 would have been
`obvious over the combined disclosures of Beyens, Keisuke, and/or Richter.
`Pet. 56–71.
`
`1. Keisuke
`Keisuke is directed to “a multi-layer molded container having easy
`interlayer separability.” Ex. 1012 ¶ 1. Figure 1 of Keisuke is reproduced
`below.
`
`
`Figure 1 of Keisuke depicts a multi-layer molded container having outer
`layer 1 and inner layer 2. Id. ¶ 28. Keisuke explains that outer layer 1 and
`inner layer 2 are both made of PET, but the PET of inner layer 2 is
`“combined with an aliphatic polyamide with aromatic rings,” or a
`“multilayer of an ethylene/vinyl alcohol copolymer and polyolefin such as
`polypropylene” is added to act “as a functional film to improve gas barrier
`properties.” Id.
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`
`2. Richter
`Richter discloses a syrup dispensing system that includes a blow
`molded, multi-layer PET container. Ex. 1013, Abstract. The PET container
`of Richter “includes a release agent such as a layer of EVOH located outside
`of the inner PET layer . . . so that the inner PET layer can separate from the
`remainder of the wall and collapse around the remaining syrup as it is
`withdrawn.” Id.
`
`3. Analysis
`Petitioner contends that Beyens discloses an outer container made of
`PET and an inner bag “made from any suitable material which is approved
`for use with beverages,” and asserts that Keisuke and Richter teach that PET
`is suitable for use as the inner bag of Beyens. Pet. 61 (citing Ex. 1006,
`2:15–18; Ex. 1012 ¶¶ 1, 28; Ex. 1013, 4:29–31). Specifically, Petitioner
`contends Richter discloses that using PET for both inner and outer layers
`makes the whole container recyclable, and Keisuke discloses that PET has
`“good pressure resistance, rigidity, clarity, moisture absorption, water
`resistance, and gas barrier properties.” Id. (citing Ex. 1013, 2:6–7; Ex. 1012
`¶ 28). We do not find Petitioner’s arguments persuasive for the reasons
`discussed below.
`Beyens discloses that PET containers have the disadvantage “that PET
`is not completely impervious to oxygen, so that beverages such as beer
`which deteriorate rapidly on exposure to oxygen, can only be stored for short
`periods.” Ex. 1006, 1:16–24. Beyens therefore expressly avoids the use of
`PET for its inner container, requiring instead an inner bag that is made from
`a flexible air-tight or gas-tight material. Compare id. at 2:45–48 (“This
`invention consists in a container . . . comprising an outer container [and] an
`
`19
`
`
`
`IPR2018-01663
`Patent 9,944,453 B2
`inner bag of flexible air-tight or gas-tight material.”), 2:50–53 (“The inner
`bag 20 is formed of a material which is impervious to air or carbon dioxide
`and which is suitable for contact with the beverage to be contained.”) with
`id. at 1:21–22 (“PET is not completely impervious to oxygen . . . .”). Given
`that Beyens expressly avoids using PET for its inner container, Petitioner
`has not explained why a person of ordinary skill in the art would have
`nevertheless considered the PET layers of Richter or Keisuke “suitable” for
`use as the inner layer of Beyens.
`Petitioner also has not demonstrated that use of either Keisuke’s or
`Richter’s PET layers would satisfy the requirements of claim 1. First,
`Richter uses a release layer disposed between the inner and outer layers of
`its PET container, and Petitioner does not explain sufficiently how direct
`contact between the PET layers would be achieved if this intervening layer
`were applied in Beyens. Ex. 1013, Abstract (“The PET container includes a
`release agent such as a layer of EVOH located outside of the inner PET
`layer.”); Pet. 62 (relying on the freely separable layers of Richter); Prelim.
`Resp. 56.
`Further, as discussed above, Keisuke discloses using an outer layer of
`PET and either an inner layer of PET that has been combined with an
`aliphatic polyamide with aromatic rings or an inner layer of PET that has an
`additional multilayer film disposed thereon to improve the overall gas
`barrier properties of the container. Ex. 1012 ¶ 28; Pet. 61 (relying on
`paragraph 28 of Keisuke for the disclosure of inner and outer layers made of
`the same material). Petitioner provides no persuasive explanation as to why
`either the modified PET layer of Keisuke or its intervening gas barrier film
`would provide direct contact between the “same polymer” over
`
`20
`
`
`
`IPR2018-01663
`Patent 9,944,453 B2
`“substantially the entirety of the interface,” as required by claim 1. See Ex.
`1001, 4:48–62 (providing the circumstances in which the “same polymer is
`considered in contact on either side of the interface between the inner and
`outer layers”), 7:1–7.
`In view of the foregoing, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that the subject matter of claim 1
`would have been obvious over the combined disclosures of Beyens,
`Keisuke, and/or Richter. And because challenged claims 2–7 all depend,
`directly or indirectly, from claim 1, and because Petitioner’s arguments with
`respect to these claims do not resolve the deficiencies noted above,
`Petitioner has not demonstrated a reasonable likelihood that claims 1–7
`would have been obvious over the combined disclosures of Beyens,
`Keisuke, and/or Richter.
`
`E. Obviousness in view of Keisuke, Beyens, and/or Schmidt
`Petitioner contends the subject matter of claims 1–7 would have been
`obvious over the combined disclosures of Keisuke, Beyens, and/or Schmidt.
`Pet. 71–86.
`
`In this ground, Petitioner contends Keisuke discloses an inner bag and
`an outer container that are in direct contact and comprise the same polymer.
`Id. at 79–80 (citing Ex. 1012 ¶¶ 11, 28, Fig. 1). As discussed above,
`however, Petitioner has not explained why the modified PET layer of
`Keisuke would allow the “same polymer” to be in direct contact over
`substantially the entire interface, or why the intervening gas barrier film of
`Keisuke would allow direct contact between the two PET layers. See supra
`Section II.D.3. Accordingly, we are not persuaded that the subject matter of
`
`21
`
`
`
`IPR2018-01663
`Patent 9,944,453 B2
`claims 1–7 would have been obvious in view of the combined disclosures of
`Keisuke, Beyens, and/or Schmidt.
`III. CONCLUSION
`For the reasons set forth above, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing with respect to at least
`one claim of the ’453 patent. Thus, we do not institute an inter partes
`review.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’453 patent.
`
`
`22
`
`
`
`IPR2018-01663
`Patent 9,944,453 B2
`PETITIONER:
`
`Joseph A. Loy, P.C.
`Nathan S. Mammen
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`joseph.loy@kirkland.com
`nathan.mammen@kirkland.com
`eugene.goryunov@kirkland.com
`
`PATENT OWNER:
`
`Dorothy R. Auth, Ph.D.
`Danielle Tully
`Andrew Fessak, Ph.D.
`CADWALADER, WICKERSHAM & TAFT LLP
`dorothy.auth@cwt.com
`danielle.tully@cwt.com
`andrew.fessak@cwt.com
`
`
`23
`
`
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