Paper No. 40
`Trials@uspto.gov
`571.272.7822 Filed: July 12, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00003
`Patent 9,254,240 B2
`____________
`
`
`
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion to File Supplemental Information
`37 C.F.R. § 42.223(a)
`
`
`Trials@uspto.gov
`571.272.7822 Filed: July 12, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BESTWAY (USA), INC.,
`Petitioner,
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00003
`Patent 9,254,240 B2
`____________
`
`
`
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion to File Supplemental Information
`37 C.F.R. § 42.223(a)
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`Introduction and Summary of the Decision
`
`
`
`Petitioner filed, on June 18, 2018, a Motion to File Supplemental
`
`Information Pursuant to 37 C.F.R. § 42.223(a). Paper 37 (Mot. to Supp.).
`
`Petitioner seeks to submit supplemental information concerning one of its
`
`own products, which allegedly was unavailable to Petitioner until last year.
`
`Mot. to Supp. 1. Specifically, Petitioner proposes to submit a physical
`
`sample of an inflatable mattress and four declarations. Id. at 2–3,
`
`Appendix A. Patent Owner opposes Petitioner’s motion. Paper 38 (Opp. to
`
`Mot. to Supp.). For the reasons that follow, we deny Petitioner’s motion.1
`
`Procedural Posture
`
`
`
`Bestway (USA), Inc. (“Petitioner”) filed a Petition requesting
`
`post-grant review of U.S. Patent No. 9,254,240 B2 (“the ’240 patent,”
`
`Ex. 1001). Paper 1 (“Pet.”). The Petition challenged the patentability of
`
`claims 1–7, 17–22, and 30 of the ’240 patent on the grounds of obviousness
`
`under 35 U.S.C. § 103. Intex Marketing Ltd. (“Patent Owner”) filed a
`
`Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”).
`
`
`
`On May 11, 2017, a post-grant review was instituted on Petitioner’s
`
`challenge of claims 1–7 and 17 under 35 U.S.C. § 103 as unpatentable over
`
`Peterson and Fireman (“Ground 1”). Paper 9. However, the instituted
`
`review did not include Petitioner’s obviousness challenge of claims 18–22
`
`and 30 based on Peterson, Fireman, and Guan ’797 (“Ground 2”), or
`
`
`
`1 Petitioner attached to the motion certain exhibits containing proposed
`supplemental information. We will allow those documents to remain in the
`record for purposes of any appeal of the denial of this motion, but we will
`not consider the information in determining the merits of Petitioner’s
`patentability challenges.
`
`2
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`Petitioner’s obviousness challenge of claims 18–22 based on Peterson,
`
`Fireman, Guan ’797, and Wang ’615 (“Ground 3”). We indicated, inter alia,
`
`that Petitioner’s Ground 2 is fatally confusing and that both Grounds 2 and 3
`
`lack an adequately articulated reason to combine the teachings of the cited
`
`prior art references. Paper 9, 19–21. We denied Petitioner’s request for
`
`rehearing in which Petitioner requested that we institute a post-grant review
`
`of Ground 2. Papers 12, 15.
`
`
`
`Petitioner filed another petition seeking inter partes review of
`
`claims 18–22 and 30 of the ’240 patent in Patent Trial and Appeal Board
`
`Case IPR2017-01655 (Paper 1). In that case, the Board exercised its
`
`discretion under 35 U.S.C. § 314(a) to not institute an inter partes review.
`
`IPR2017-01655, Paper 9.
`
`
`
`On May 2, 2018, we modified our institution decision in this case to
`
`institute on all of the challenged claims and all of the grounds presented in
`
`the Petition. Paper 30; see Guidance on the Impact of SAS2 on AIA Trial
`
`Proceedings (April 26, 2018).3 An extension of the one-year period for
`
`issuing a Final Written Decision in this proceeding has been granted.
`
`Paper 31 (Grant of Good Cause Extension); see also Paper 32
`
`(corresponding Order).
`
`
`
`We authorized additional briefing and discovery by both parties
`
`regarding only Grounds 2 and 3. Paper 33. That round of briefing and
`
`discovery is nearing completion or has been completed.
`
`
`
`2 SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`3 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`
`3
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`
`
`The rule under which Petitioner filed its motion provides:
`
`Discussion
`
`(a) Motion to submit supplemental information. Once a trial has
`been instituted, a party may file a motion to submit supplemental
`information in accordance with the following requirements:
`
`(1) A request for the authorization to file a motion to
`submit supplemental information is made within one
`month of the date the trial is instituted.
`
`(2) The supplemental information must be relevant to a
`claim for which the trial has been instituted.
`
`37 C.F.R. 42.223(a). Thus, Rule 42.223(a) sets forth the requirements of
`
`timeliness of the request and of relevance. However, satisfaction of those
`
`requirements does not guarantee that a motion will be granted. See Redline
`
`Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445–449 (Fed. Cir.
`
`2015) (discussing the similar rule, 42.123(a), which is applicable to inter
`
`partes reviews). The Federal Circuit, in discussing the corresponding statute
`
`and rule applicable to inter partes reviews (IPRs), stated: “The guiding
`
`principle for the PTAB in making any determination is to ‘ensure efficient
`
`administration of the Office and the ability of the Office to complete IPR
`
`proceedings in a timely manner.’ . . . Requiring admission of supplemental
`
`information so long as it was timely submitted and relevant to the IPR
`
`proceeding would cut against this mandate and alter the intended purpose of
`
`IPR proceedings.” Id. at 445 (citations omitted); see 35 U.S.C § 326(b) (“In
`
`prescribing regulations under this section [concerning post-grant reviews],
`
`the Director shall consider the effect of any such regulation on the economy,
`
`the integrity of the patent system, the efficient administration of the Office,
`
`and the ability of the Office to timely complete proceedings instituted under
`
`this chapter.”).
`
`4
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`Timeliness
`
`
`
`This is not the typical case and we must be mindful of the effect of
`
`delays at the late stage of this proceeding. As mentioned, Petitioner chose to
`
`file its motion under 37 C.F.R. § 42.223(a). That rule required Petitioner to
`
`request authorization to file the motion within one month of institution. The
`
`requirement of requesting to submit the information soon after institution is
`
`to allow the patent owner sufficient time to address any new information
`
`submitted by the petitioner. 77 Fed. Reg. 48,680, 48,707 (Aug. 14, 2012).
`
`In this case, Petitioner’s request was made concurrently with Patent Owner’s
`
`notification that it would rest on its arguments made in the Preliminary
`
`Response regarding Grounds 2 and 3, and therefore would not be filing
`
`another substantive response to the Petition. See Paper 34. Thus, Petitioner,
`
`effectively, is—after the close of Patent Owner’s case—seeking to
`
`supplement the evidence for its prima facie case as set forth in the Petition,
`
`which was filed over a year and a half ago.
`
`
`
`While Petitioner characterizes the proposed supplemental evidence as
`
`relevant to Grounds 2 and 3—which pertain only to dependent claims—
`
`Petitioner does not assert that the information is not relevant also to Ground
`
`1—pertaining, inter alia, to independent claim 1—for which we instituted a
`
`trial over a year ago. In other words, Petitioner has not explained adequately
`
`why the proposed supplemental information only became relevant upon the
`
`inclusion of Grounds 2 and 3 in this proceeding. Compare Pet. 7
`
`(characterizing independent claim 1 as reciting an “inflatable pool that uses
`
`this multi-ply, reinforced material for internal support structures”) with Mot.
`
`to Supp., Appendix A (Fumagalli Decl.) ¶ 3 and Ex. A (referring to the
`
`5
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`reinforced, 3-ply material used for the internal beams of the ComfortQuest
`
`product). Accordingly, we are not persuaded that the request is timely.
`
`
`
`Additionally, the parties suggest that entry of the proposed
`
`supplemental evidence will add further delays to reaching a final
`
`determination in this case. Petitioner hints that it would like yet another
`
`round of briefing to address for the first time the supplemental evidence.
`
`See Mot. to Supp. 5 (asserting that the grant of an extension of time would
`
`give the parties sufficient time to address the supplemental information); id.
`
`(seeking the last word should Patent Owner be given an opportunity to
`
`address the proposed supplemental information). Patent Owner, for its part,
`
`asserts that, before it could respond to the supplemental information, it
`
`“would need to incur considerable time and expense deposing witnesses
`
`across at least three continents, and investigating a new product heretofore
`
`not part of this proceeding.” Opp. to Mot. to Supp. 5. We determine that
`
`entry into the record of the proposed supplemental information at this late
`
`stage of the case would be detrimental to the efficient administration of this
`
`proceeding and adversely affect our ability to timely complete the instituted
`
`proceeding.
`
`Relevance
`
`
`
`Petitioner has not explained sufficiently how the proffered
`
`supplemental information is relevant to a claim for which the trial has been
`
`instituted. Petitioner offers a series of conclusory assertions of relevance,
`
`coupled with snippets from various other cases, without developing
`
`adequately any particular reason or comparing the facts of this case to those
`
`of the quoted cases. See Mot. to Supp. 3–5. Additionally, we find to be
`
`persuasive Patent Owner’s argument that Petitioner is attempting to use the
`
`6
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`proposed supplemental information to cure deficiencies identified by the
`
`Board’s institution decision. Opp. to Mot. to Supp. 2–3.
`
`
`
`As an initial matter, Petitioner does not describe with any detail the
`
`purportedly pertinent aspects of the proposed supplemental information,
`
`making an analysis of relevance difficult. As best, we understand the
`
`proposed supplemental information to pertain to an inflatable mattress, the
`
`ComfortQuest, having what Petitioner characterizes as a “notched tensioning
`
`structure.” Mot. to Supp. 2. We note that the claims subject to Grounds 2
`
`and 3 (dependent claims 18–22 and 30) recite gaps or notches at the top and
`
`bottom of a tensioning structure, which is in contrast to what appears to be
`
`gaps at the sides of some structure in the ComfortQuest mattress. Mot. to
`
`Supp., Appendix, Ex. G. We also note that Petitioner already identified in
`
`the Petition other references purportedly disclosing tensioning structures
`
`having gaps or notches at the top and bottom. See, e.g., Pet. 47–51. Thus, it
`
`appears that more pertinent art already is in the record, and we are left to
`
`speculate as to what Petitioner considers the pertinent aspects of the
`
`proposed supplemental information.
`
`
`
`Petitioner asserts that “[t]he proposed supplemental information
`
`authenticates the ComfortQuest product, establishes that it was
`
`commercially available prior art, and demonstrates its relevance to the
`
`Petition.” Id. at 3; see also id. at 1 (asserting that the proposed supplemental
`
`information was uncovered in a search for prior art). The Petition did not
`
`rely on the ComfortQuest product in its articulation of the obviousness
`
`challenges, and therefore the addition of that new prior art reference would
`
`modify an articulated ground. Thus, supplemental information
`
`authenticating a new prior art reference is not relevant to a pre-existing,
`
`7
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`articulated ground based on other references. Additionally, Petitioner’s
`
`suggestion that the proposed supplemental information, after being admitted,
`
`would demonstrate its own relevance does not persuade us that the motion
`
`itself demonstrates the pre-requisite of relevance.
`
`
`
`Similarly, we are not persuaded by Petitioner’s implied argument that
`
`the proposed supplemental information evidences a motivation to combine
`
`and “builds upon the reasons to combine the prior art references that are
`
`already present in the record.” Mot. to Supp. 4–5 (parenthetically quoting
`
`from various PTAB decisions). Petitioner argues “the ComfortQuest
`
`product shows that one of ordinary skill in the art knew how to combine—
`
`and indeed did combine—the additional features related to Grounds 2
`
`and 3.” Id. at 4. Petitioner does not elaborate on this assertion, and, as
`
`indicated above, the “additional features” of the challenged dependent
`
`claims include gaps at the top and bottom, not at the sides as appears to be
`
`the configuration in the ComfortQuest product. We decline to speculate as
`
`to Petitioner’s theory of how a new prior art reference, one that apparently is
`
`less pertinent than art already in the record, supports an articulated
`
`motivation to combine found in the Petition. For similar reasons, we are not
`
`persuaded by Petitioner’s conclusory argument that the side-gapped
`
`ComfortQuest airbed is “evidence [that] is relevant to simultaneous
`
`invention” of a claim reciting gaps at the top and bottom. Id.
`
`It is
`
`Order
`
`ORDERED that Petitioner’s Motion to File Supplemental Information
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.223(a) is denied.
`
`
`
`
`
`8
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`
`
`For PETITIONER:
`
`Michael Chu
`mchu@mwe.com
`
`Brian Jones
`bajones@mwe.com
`
`
`For PATENT OWNER:
`
`Trevor Carter
`Trevor.carter@faegrebd.com
`
`Andrew McCoy
`Andrew.mccoy.ptab@faegrebd.com
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
