Paper 54
`Trials@uspto.gov
`571-272-7822 Entered: November 7, 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, GEORGE R. HOSKINS, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 7, 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, GEORGE R. HOSKINS, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`
`
`Bestway (USA), Inc. (“Petitioner”) filed a Petition requesting
`
`post-grant review of claims 1–7, 17–22, and 30 of U.S. Patent
`
`No. 9,254,240 B2 (“the ’240 patent,” Ex. 1001). Paper 1 (“Pet.”). The
`
`Petition contains challenges identified by Petitioner as Grounds 1, 2, and 3.
`
`See, e.g., id. at ii (Table of Contents). Intex Marketing Ltd. (“Patent
`
`Owner”) filed a Preliminary Response to the Petition. Paper 7 (“PO 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 (“Inst. Dec.”), 21. 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 Petitioner’s obviousness challenge of claims 19–22 based on
`
`Peterson, Fireman, Guan ’797, and Wang ’615 (Ground 3). Id.
`
`
`
`On May 25, 2017, Petitioner filed a request for rehearing of our
`
`decision denying institution as to Grounds 2 and 3. Paper 12 (“Reh’g
`
`Req.”). We denied Petitioner’s request for rehearing on June 20, 2017.
`
`Paper 15 (“Denial of Reh’g Req.”).
`
`
`
`The parties subsequently fully briefed the issues involving Ground 1.
`
`Paper 17 (Patent Owner’s Response to the Petition, “PO Resp.”), Paper 21
`
`(Petitioner’s Reply, “Pet. Reply”). The first of two oral arguments was held
`
`on February 5, 2018, and a transcript is included in the record. Paper 29
`
`(“First Hr’g Tr.”).
`
`2
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`
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`PGR2017-00003
`Patent 9,254,240 B2
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`
`
`On April 24, 2018, the Supreme Court issued its decision in SAS Inst.,
`
`Inc. v. Iancu, 138 S. Ct. 1348 (2018). On May 2, 2018, we issued an order
`
`modifying our institution decision to institute on all of the challenged claims
`
`and all of the grounds presented in the Petition. Paper 30. An extension of
`
`the one-year period for issuing a Final Written Decision in this proceeding
`
`was granted. Paper 31 (Grant of Good Cause Extension); see also Paper 32
`
`(corresponding Order).
`
`
`
`We, thereafter, issued an order allowing any further discovery agreed-
`
`upon by the parties and authorizing additional briefing on Grounds 2 and 3.
`
`Paper 33. Specifically, we authorized Patent Owner to file either a
`
`Supplemental Response addressing Grounds 2 and 3 or a statement
`
`indicating it would rely on its arguments made in the Preliminary Response,
`
`and we authorized Petitioner to file a Supplemental Reply. Id. at 5–7.
`
`Patent Owner opted to rely on the arguments made in its Preliminary
`
`Response regarding Grounds 2 and 3 rather than filing a Supplemental
`
`Response.1 Paper 34. Petitioner filed a Supplemental Reply. Paper 41
`
`(“Pet. Supp. Reply”). A second oral argument was held on August 1, 2018,
`
`and a transcript is included in the record. Paper 50 (“Second Hr’g Tr.”).
`
`
`
`We have jurisdiction under 35 U.S.C. § 6, and this Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a). For the reasons discussed
`
`below, we determine that Petitioner has proven by a preponderance of the
`
`evidence that claims 1–7 and 17 of the ’240 patent are unpatentable. We
`
`
`
`1 We indicated that, in light of the unusual posture of this case, we would not
`deem arguments in the Patent Owner’s Preliminary Response regarding
`Grounds 2 and 3 waived for failure to file a post-institution response as to
`those grounds. Paper 33, 5.
`
`3
`
`
`
`PGR2017-00003
`Patent 9,254,240 B2
`
`
`also determine that Petitioner has not proven by a preponderance of the
`
`evidence that claims 18–22 and 30 of the ’240 patent are unpatentable.
`
`B. Related Proceedings
`
`
`
`One or both parties identify, as matters involving or related to the
`
`’240 patent, Intex Recreation Corp. v. Bestway USA, Inc. et al, Civil Action
`
`No. 2:16-cv-03950 (C.D. Cal.), Intex Recreation Corp. v. Bestway USA, Inc.
`
`et al, Civil Action No. 2:16-cv-03300 (C.D. Cal.), and Intex Recreation
`
`Corp. v. Bestway USA, Inc. et al, Civil Action No. 2:16-cv-03483 (C.D.
`
`Cal.). Pet. 2–3, Papers 5, 11.
`
`
`
`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.
`
`C. The ’240 Patent
`
`
`
`The ’240 patent is titled “Inflatable Spa.” The ’240 patent issued
`
`February 9, 2016, from U.S. Application No. 14/444,474 (“the ’474
`
`application”), filed July 28, 2014. Ex. 1001, (21), (22), (45). The ’474
`
`application is a continuation of PCT/US2014/047252, filed July 18, 2014.
`
`Id., (63), 1:6–7. The ’240 patent claims priority to several Chinese patent
`
`applications, the earliest filing date of such being July 18, 2013. Id., (30),
`
`1:9–28.2
`
`
`
`2 Because the earliest possible effective filing date for the ’240 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`
`4
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`PGR2017-00003
`Patent 9,254,240 B2
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`
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`As the title indicates, the ’240 patent is directed to an inflatable spa.
`
`Figure 1 of the ’240 patent is reproduced below:
`
`
`
`Figure 1 is an exploded perspective view of an inflatable spa, including
`
`tensioning structures. Ex. 1001, 4:27–29. The inflatable spa 100 has
`
`internal wall 106 and external wall 108 that together, along with top and
`
`bottom walls (102 and 104, respectively), define inflatable air chamber 110.
`
`Id. at 5:60–6:9. Tensioning structures 120 couple the inner and outer walls,
`
`and may have gaps at the top and bottom. Id. at 6:30–38.
`
`
`
`Figures 5 and 6 of the ’240 patent are reproduced below:
`
`
`
`the America Invents Act) and the Petition was filed within 9 months of its
`issue date, the ’240 patent is eligible for post-grant review. See 35 U.S.C.
`§ 321(c).
`
`5
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`PGR2017-00003
`Patent 9,254,240 B2
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`
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`Figures 5 and 6 are exploded perspective views of the tensioning structure
`
`including a porous layer and, respectively, two attachment layers and a
`
`single attachment layer. Id. at 4:36–39. Each tensioning structure may
`
`include “porous layer or sheet” 130 and attachment layer or sheet 132, with
`
`the porous layer sandwiched between two attachment layers (as shown in
`
`Figure 5) or attached to a single attachment layer (as shown in Figure 6). Id.
`
`at 6:39–50.
`
`
`
`Figure 4 of the ’240 patent is reproduced below:
`
`
`
`6
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`
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`PGR2017-00003
`Patent 9,254,240 B2
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`Figure 4 is an elevational view of tensioning structure 120 having
`
`attachment layer 132 and porous layer 130. Id. at 4:34–35, 6:51–57. Porous
`
`layer 132 may be formed from ligaments or frame members 134 that define
`
`holes or pores 136. Id. at 6:64–66. The porous layer may be constructed of
`
`a mesh, cloth, or screen of interwoven members. Id. at 7:39–52. “When the
`
`air chamber 110 is pressurized, frame members 134 . . . may be placed in
`
`tension to help maintain the shape of spa 100.” Id. at 6:66–7:1.
`
`
`
`In the embodiment of Figure 4, porous layer 130 includes outer
`
`perimeter 150 formed by edges 152a-d, and attachment layer 132 includes
`
`outer perimeter 154 formed by edges 156a-d. Id. at 6:53–57. “The
`
`attachment layer 132 may span across the entire porous layer 130, as shown
`
`in FIG. 4, such that the outer perimeter 154 of the attachment layer 132
`
`generally overlaps the outer perimeter 150 of the porous layer 130.” Id.
`
`at 6:57–61.
`
`D. Illustrative Claim
`
`
`
`Of the challenged claims, claim 1 is the sole independent claim. The
`
`remaining challenged and instituted claims depend directly from claim 1.
`
`Claim 1, reproduced below, is illustrative:
`
`1. An inflatable product comprising:
`
`a first wall;
`
`a second wall;
`
`an inflatable air chamber defined by the first wall and the
`second wall; and
`
`a plurality of tensioning structures located in the air
`chamber and coupled to the first wall and the second wall, each
`tensioning structure including:
`
`at least one attachment sheet having an outer perimeter;
`and
`
`7
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`PGR2017-00003
`Patent 9,254,240 B2
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`a porous sheet coupled to the at least one attachment
`
`sheet, the porous sheet having an outer perimeter that
`substantially overlaps the outer perimeter of the at least one
`attachment sheet, the porous sheet including a plurality of
`enclosed pores located entirely within the outer perimeter of the
`at least one attachment sheet and a plurality of frame members
`that intersect to define the plurality of enclosed pores.
`
`Ex. 1001, 19:2–19.
`
`E. Evidence
`
`
`
`Petitioner relies on the following prior art references:
`
`Reference
`
`Dates
`
`Peterson
`
`US 5,924,144
`
`Filed Apr. 2, 1998;
`Issued July 20, 1999
`
`Ex.
`No.
`Ex.
`1002
`
`Fireman
`
`US 2004/0040082 Al Filed Feb. 6, 2003;
`Published March 4, 2004
`
`Ex.
`1003
`
`Guan Hou-De
`(“Guan ’797”)
`
`Wang Zhi-Yue
`(“Wang ’615”)
`
`CN 2064797U
`
`CN 202051615U
`
`Filed Feb. 15, 1990;
`Published Oct. 31, 1990
`
`Filed Mar. 3, 2011;
`Published Nov. 30, 2011
`
`Ex.
`1004
`
`Ex.
`1005
`
`
`
`Petitioner also relies on the declaration of Dr. Ali M. Sadegh, dated
`
`Nov. 7, 2016, (Ex. 1011) in support of its arguments. Patent Owner relies on
`
`the declaration of Mr. Bernhard Kuchel, dated Feb. 16, 2017, (Ex. 2001) and
`
`the supplemental declaration of Mr. Bernhard Kuchel, dated Aug. 11, 2017,
`
`(Ex. 2039) in support of its arguments. The parties rely on other exhibits as
`
`discussed below.
`
`8
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`PGR2017-00003
`Patent 9,254,240 B2
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`F. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts the following grounds of unpatentability (Pet. 24):
`
`References
`
`Peterson and Fireman
`
`Basis
`
`Claims
`
`§ 103
`
`1–7, 17
`
`Peterson, Fireman, and Guan ’797
`
`§ 103
`
`18–22, 30
`
`Peterson, Fireman, Guan ’797, and Wang ’615
`
`§ 103
`
`19–22
`
`II. ANALYSIS
`
`A. Principles of Law
`
`
`
`Petitioner bears the burden of proving unpatentability of the claims
`
`challenged in the Petition, and that burden never shifts to Patent Owner. Cf.
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015) (discussing burdens in the context of inter partes review).
`
`To prevail, Petitioner must establish the facts supporting its challenge by a
`
`preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d).
`
`
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art; (3)
`
`the level of skill in the art; and (4) any objective evidence of
`
`non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`9
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`B. The Level of Ordinary Skill in the Art
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`
`
`The parties agree, as do we, that the relevant field is that pertaining to
`
`inflatable products. See PO Resp. 31; Pet. 1–2; see also Ex. 2001 ¶ 93;
`
`Ex. 1011 ¶ 36.
`
`
`
`Petitioner’s expert, Dr. Sadegh, opines that:
`
`A person of ordinary skill in the art of inflatable products would
`have at least a bachelor’s degree in mechanical engineering, or
`an equivalent field, and two to four years of practical
`experience in product design, manufacturing, and related
`materials.
`
`Ex. 1011 ¶ 37; see also Pet. 10–11. Patent Owner’s expert, Mr. Kuchel,
`
`offers an opinion that “differs slightly from Dr. Sadegh’s opinion.”
`
`Ex. 2001 ¶ 94; see also PO Resp. 31–32. Specifically, Mr. Kuchel opines
`
`that the ordinary artisan in the field of inflatable products would have either:
`
`1) a bachelor’s degree and two years of experience, or 2) an associate’s
`
`degree and four years of experience. Ex. 2001 ¶ 94.
`
`
`
`We discern no material difference between the two experts’
`
`definitions. Dr. Sadegh’s definition is consistent with the level of ordinary
`
`skill reflected in the prior art references of record. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may
`
`reflect an appropriate level of skill in the art). We adopt Dr. Sadegh’s
`
`definition of the person of ordinary skill in the art.
`
`C. Claim Construction
`
`In a post-grant review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.200(b) (2018). Under a
`
`broadest reasonable interpretation, words of the claim must be given their
`
`10
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`PGR2017-00003
`Patent 9,254,240 B2
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`plain meaning, unless such meaning is inconsistent with the specification
`
`and prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`
`(Fed. Cir. 2016). Additionally, only terms that are in controversy need to be
`
`explicitly construed, and these need be construed only to the extent
`
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
`
`Petitioner initially proposed constructions for “notches” and “notch-
`
`defining portions,” terms appearing in claims 19–22. Pet. 21–24; cf. Prelim
`
`Resp. 64–70 (Patent Owner’s discussion of the same). For the purposes of
`
`the Institution Decision, we determined that, based on the record at that time,
`
`our resolution of the issues did not turn on the meaning of those terms, and
`
`we determined that no claim term required express construction. Inst.
`
`Dec. 8. We discuss below, in the analysis of Grounds 2 and 3, Petitioner’s
`
`assertions regarding the meaning of certain claim terms. We, however,
`
`determine that no claim terms require express construction here in order to
`
`resolve the dispositive issues.
`
`D. The Alleged Obviousness of
`Claims 1–7 and 17 Over Peterson and Fireman (Ground 1)
`
`
`
`Petitioner argues that claim 1–7 and 17 of the ’240 patent would have
`
`been obvious over Peterson and Fireman. Pet. 24–45. In particular,
`
`Petitioner contends that Peterson teaches the subject matter of independent
`
`claim 1 except for the use of a multi-layer mesh material (a porous sheet) as
`
`its tensioning structure and turns to Fireman for the teaching of such a
`
`material. Pet. 24–25. Patent Owner’s arguments in response indicate that
`
`the primary disputes in this case pertain to whether one of ordinary skill in
`
`the art would have reason to combine the references’ teachings and whether
`
`11
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`PGR2017-00003
`Patent 9,254,240 B2
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`the resulting combination’s porous sheet would satisfy what Patent Owner
`
`calls “the Substantial Overlap Limitation.” See PO Resp. 32, 55.
`
`1. Peterson (Ex. 1002)
`
`
`
`Peterson discloses an inflatable swimming pool. Ex. 1002, Abstract.
`
`Figure 4 of Peterson is reproduced below:
`
`
`
`Figure 4 is a sectional view of the side of the inflatable pool. Id. at 1:55–61.
`
`The pool has “a plurality of interconnecting vertical support webs 16”
`
`connecting the inner and outer vertical side walls 12, 14. Id. at 2:4–8,
`
`Figs. 2, 4. The inner and outer side walls are attached together at their top
`
`and bottom edges 22 and 24. Id. at 2:8–11. The components of the pool,
`
`including the vertical support webs, are formed of polyvinylchloride (PVC)
`
`and are secured together by thermo-welding. Id. at 2:4–8. Peterson
`
`explains: “The support webs 16 forming the I-beam support columns
`
`provide increased strength to the inflated pool 10 so that water of greater
`
`depths can be supported within the pool 10 before the side walls 12, 14
`
`deform.” Id. at 2:25–29.
`
`12
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`2. Fireman (Ex. 1003)
`
`
`
`Fireman pertains to a self-rising swimming pool utilizing an inflatable
`
`toroidal top member that, when inflated, raises the flexible wall as water fills
`
`the pool. Ex. 1003, Abstract, ¶ 2. Fireman explains that the walls of earlier
`
`self-rising pools were constructed of thick layers of opaque material to
`
`provide the necessary strength to withstand the hydraulic pressure of the
`
`pool water and that this resulted in undesirably opaque walls. Id. ¶ 2. Such
`
`opacity prevented outside observers from seeing fully the occupants of the
`
`pool. Id. To address this, Fireman discloses “self-rising swimming pool
`
`constructions employing side walls sufficiently translucent to allow those
`
`outside the swimming pool to monitor the underwater activities of the
`
`swimming pool’s occupants.” Id. ¶ 3.
`
`
`
`Fireman teaches the use of a wall comprised of mesh interposed
`
`between two layers of translucent material of the type “used in the
`
`construction of inflatable and self-rising swimming pools,” such as PVC. Id.
`
`¶¶ 5, 19. Figure 5A of Fireman is reproduced below:
`
`Figure 5A is a schematic cutaway view of a three-layer construction of a
`
`swimming pool’s flexible side wall or side wall panels. Ex. 1003 ¶¶ 13, 19.
`
`
`
`13
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`Fireman explains: “The mesh layer 42 enhances the tensile strength of the
`
`flexible wall 12, increasing the durability of the structure and allowing larger
`
`swimming pools to be constructed, compared to flexible walls made without
`
`a reinforcing mesh layer.” Id. ¶ 19.
`
`3. The Alleged Obviousness of Claim 1
`
`a) An inflatable product with tensioning structures
`and a porous sheet coupled to attachment sheets
`
`
`
`Claim 1 recites an inflatable product having first and second walls, an
`
`inflatable air chamber defined by those walls, and a plurality of tensioning
`
`structures located within the air chamber and coupled to both of the walls.
`
`There is no dispute that Peterson teaches these limitations. Pet 24–28 (citing
`
`Ex. 1011 (Dr. Sadegh’s Declaration) ¶¶ 101–109); see PO Resp. 10;
`
`Ex. 1025, 37:1–38:19 (Patent Owner’s expert, Mr. Kuchel, agreeing that all
`
`of the limitations of claim 1, except for the “porous sheet limitations,” are
`
`disclosed by Peterson). In particular, the parties agree that Peterson’s PVC
`
`“interconnecting vertical support webs 16” constitute tensioning structures.
`
`Pet. 27; PO Resp. 12. Petitioner contends that Peterson’s tensioning
`
`structures include the recited “attachment sheet” because support webs 16
`
`attach to and interconnect the inner and outer side walls of the pool. Pet. 28
`
`(citing Ex. 1011 ¶¶ 110–111).
`
`
`
`The last recitation of claim 1, with the disputed aspect emphasized,
`
`provides:
`
`a porous sheet coupled to the at least one attachment sheet, the
`porous sheet having an outer perimeter that substantially
`overlaps the outer perimeter of the at least one attachment
`sheet, the porous sheet including a plurality of enclosed pores
`located entirely within the outer perimeter of the at least one
`
`14
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`attachment sheet and a plurality of frame members that intersect
`to define the plurality of enclosed pores.
`
`Ex. 1001, 12–19 (emphasis added). Petitioner asserts that Fireman teaches
`
`this subject matter, Pet. 29, and much of the language quoted above is not in
`
`dispute. See PO Resp. 36–37 (describing Fireman’s “3-layer composite.”).
`
`As mentioned above, Fireman discloses a material constructed of a mesh
`
`layer sandwiched between two PVC layers. Ex. 1003 ¶ 19. Petitioner
`
`contends, and we agree, that Fireman’s mesh layer corresponds to the
`
`claimed “porous sheet” and the PVC layers correspond to the “at least one
`
`attachment sheet.” Pet. 30.
`
`b) The “Substantial Overlap Limitation”
`
`
`
`The disputed limitation is that of “the porous sheet having an outer
`
`perimeter that substantially overlaps the outer perimeter of the at least one
`
`attachment sheet.” Patent Owner calls this the “Substantial Overlap
`
`Limitation.” PO Resp. 38. The Specification indicates that there are
`
`overlapping perimeters when the attachment layer spans across the entire
`
`porous layer. Ex. 1001, 6:57–61; see First Hr’g Tr. 16:18–24 (counsel for
`
`Patent Owner stating that “substantial overlap” “means that they are the
`
`same size layers, the PVC and the mesh.”).
`
`
`
`For this limitation, Petitioner relies on Fireman’s Figure 5 and the
`
`testimony of Dr. Sadegh. Pet. 29–31 (citing Ex. 1003, Fig. 5; Ex. 1011
`
`¶¶ 112–116). Dr. Sadegh testifies credibly that multi-layer materials of
`
`mesh sandwiched between solid layers were well-known in various
`
`industries, including the inflatable products industry. Ex. 1011 ¶ 113; see id.
`
`¶¶ 82–99. Dr. Sadegh explains that, “[g]iven that the layers of such
`
`multi-ply material are joined together to form a single sheet that is
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`15
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`eventually cut to the proper dimensions, each layer is similarly-sized and the
`
`outer perimeters of the two layers, therefore, substantially overlap.” Id.
`
`¶ 113. Petitioner asserts that Fireman teaches such a multi-ply material used
`
`in pools and that Fireman’s Figure 5A shows the claimed features pertaining
`
`to the porous sheet coupled to attachment sheets. Pet. 29–31. Dr. Sadegh
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`provides the following annotated version of Figure 5A:
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`
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`Ex. 1011 ¶ 115. The above annotated version of Figure 5A “illustrates a
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`schematic cutaway view of the three-layer construction [of Fireman],”
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`Ex. 1003 ¶ 19, with annotations indicating Dr. Sadegh’s opinions as to the
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`components corresponding to the attachment sheet, porous sheet, frame
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`members, and enclosed pores, Ex. 1011 ¶¶ 115–116. Dr. Sadegh testifies
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`that, “[a]s expected for this type of multi-ply material and as shown in
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`Figure 5 [of Fireman], the mesh layer extends to the edges of the solid PVC
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`sheet in order to form a single sheet of material” and, therefore, there is
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`substantial overlap in the perimeters of the multiple layers. Ex. 1011 ¶ 116.
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`We find Dr. Sadegh to testify credibly as to how fiber-reinforced
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`material used in the inflatable products industry is constructed, that one of
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`ordinary skill in the art would expect the mesh layer to extend to the edges
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`of the solid PVC sheets, and that components are cut from the formed single
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`16
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`PGR2017-00003
`Patent 9,254,240 B2
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`sheet, and, thus, would appear as shown in Fireman’s Figure 5A—with
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`coextensive mesh and PVC perimeters. Ex. 1011 ¶¶ 113, 116.3
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`
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`Patent Owner, relying on the testimony of its expert, Mr. Kuchel,
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`contends that Fireman fails to satisfy the Substantial Overlap Limitation.
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`PO Resp. 41 (citing Ex. 2001; Ex. 2039). Specifically, Patent Owner argues
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`that Fireman does not state explicitly that its layers all have the same
`
`dimensions and that Figure 5A, being a “cutaway” and “sectional view of
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`only a portion of Fireman’s wall,” does not depict the perimeters of the
`
`actual component. Id. at 40. Thus, argues Patent Owner, “because it does
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`not show the outer perimeters, it cannot teach that those perimeters
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`‘substantially overlap.’” Id. at 41 (citing Ex. 2001 ¶¶ 130–132; Ex. 2039
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`¶ 46). Similarly, Patent Owner argues that the depiction in Figure 5A of
`
`each layer cut back from the layer beneath (giving the stair-step appearance)
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`further indicates that the mesh layer does not extend the full length of the
`
`lower layer. Id. at 41–42 (citing, inter alia, Ex. 2039 ¶ 47).
`
`
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`We note that the relied-upon portions of Mr. Kuchel’s declarations
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`reflect the opinion that “Figure 5A does not expressly disclose the
`
`limitation.” Ex. 2001 ¶ 132 (emphasis added). However, the cited
`
`testimony does not appear to take into account how the person of ordinary
`
`skill in the art would understand the teachings and suggestions of Fireman
`
`and lacks credible testimony that persuades us that one of ordinary skill in
`
`
`
`3 Although Patent Owner criticizes Dr. Sadegh for allegedly “focus[ing] on
`composites,” Patent Owner does not contest Dr. Sadegh’s qualifications to
`offer expert testimony as to the understanding of the person of ordinary skill
`in the art. First Hr’g Tr. 18:9–19:11.
`
`17
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`PGR2017-00003
`Patent 9,254,240 B2
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`the art—particularly one familiar with multi-layer materials4—would read a
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`schematic depiction so literally. See Ex. 2039 ¶¶ 46–47.
`
`
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`Dr. Sadegh testified that, to one of ordinary skill in the art, Fireman’s
`
`Figure 5A is “representing that the mesh is all around between the two
`
`pieces, top and the bottom [layers], number 40.” Ex. 2038, 137:23–138:15.
`
`Mr. Kuchel, consistent with Dr. Sadegh’s position, Ex. 1011 ¶ 113, agreed
`
`that “bulk uniform mesh-reinforced laminate material was well known,”
`
`Ex. 1025, 63:8–15, and that a tensioning structure cut from a bulk sheet of
`
`uniform PVC/mesh layering would satisfy the substantial overlap limitation,
`
`id. at 40:5–42:14.
`
`
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`Patent Owner asserts that fiber-reinforced laminate sheets could be
`
`manufactured in such a manner that the mesh might not extend to the full
`
`perimeter of the other layers. PO Resp. 43–45, 47. Patent Owner argues
`
`that this proves that it is not necessarily true that mesh always has an
`
`overlapping perimeter with the attachment layers and reflects a flaw in
`
`Dr. Sadegh’s testimony as to how composite sheets are manufactured. Id.
`
`(referring to Ex. 1011 ¶ 113). However, Dr. Sadegh was, as Patent Owner
`
`acknowledges, “speaking generally” about material forming, id. at 43–44,
`
`
`
`4 Mr. Kuchel, Patent Owner’s expert, testified that persons of ordinary skill
`in the art were aware of such materials. E.g., Ex. 1025, 15:25–16:6
`(agreeing mesh-reinforced laminates were well known to inflatable products
`designers prior to 2013); Ex. 2001 ¶ 42 (“Multi-layer or multi-ply materials,
`therefore, were a natural design choice a POSA would have considered
`when designing the external flexible membrane for these types of pools.”);
`id. ¶ 54 (“a POSA would have known of the various types of above-ground
`pool options, would have known that multi-ply materials have been used in
`the walls of above-ground pools (and other structures) for over a
`decade . . . .”).
`
`18
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`Patent 9,254,240 B2
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`and, further, the existence of alternative manufacturing methods in
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`hypothetical situations does not undermine the ordinary artisan’s
`
`understanding that Fireman’s component, which would be cut from the
`
`larger sheet, would have had the requisite substantially overlapping
`
`perimeters. Similarly, Patent Owner’s arguments as to why a literal reading
`
`of Figure 5A does not inherently5 disclose the substantial overlap limitation
`
`is not persuasive. See PO Resp. 47–54.
`
`
`
`In the context of its attack on an inherency theory, Patent Owner notes
`
`that Fireman’s goal was to create a pool with a partially translucent wall
`
`such that the pool occupants might be observed from outside the pool. Id.
`
`at 49 (citing Ex. 1003, Abstract, ¶ 18). In this regard, Fireman states: “In
`
`the exemplary embodiment, at least a portion of the flexible wall 12 is made
`
`of material sufficiently translucent to allow those outside the pool to monitor
`
`the underwater activities of the swimming pool’s occupants, enhancing the
`
`safety of the swimming pool.” Ex. 1003 ¶ 18. Based on this, Patent Owner
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`argues that Fireman teaches that the mesh does not extend completely
`
`throughout the translucent portion, and further argues that having mesh
`
`coextensive with the translucent PVC layers would be contrary to Fireman’s
`
`design objectives. PO Resp. 48–50. Mr. Kuchel testifies that “the three-
`
`layer composite would, for example, hinder and obscure the view of the
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`pool’s occupants.” Ex. 2039 ¶ 48 (citing Ex. 2038, 81:23–25, 83:20–24,
`
`169:24–170:8).
`
`
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`5 Patent Owner prefaces its attack on an inherency argument in the Response
`to the Petition with an apparent acknowledgment that such an argument was
`not made in the Petition. See PO Resp. 47–48.
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`19
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`PGR2017-00003
`Patent 9,254,240 B2
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`We do not find Patent Owner’s arguments or Mr. Kuchel’s testimony
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`persuasive. Fireman’s disclosed invention is a construction “sufficiently
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`translucent to allow those outside the swimming pool to monitor the
`
`underwater activities of the swimming pool’s occupants.” Ex. 1003 ¶ 3
`
`(emphasis added). Fireman’s contribution is the replacement of the prior
`
`art’s relatively thick, opaque layers with a mesh layer in combination with
`
`transparent PVC layers. Id. ¶ 5. One of ordinary skill in the art would
`
`recognize that the presence of mesh would have resulted in some acceptable
`
`level of diminished transparency but also would provide the benefit of
`
`increased strength. See Ex. 2039, 81:15–83:24; id. at 81:15–22 (Dr. Sadegh
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`testifying that, depending on the density of the mesh, there would not be
`
`much effect on the translucence of the composite material).
`
`
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`Patent Owner further argues, still in the context of inherency, that
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`there might be a reason to not have mesh extending to the edges of the PVC
`
`sheets. PO Resp. 50–54. Patent Owner argues that there are benefits to not
`
`having coextensive mesh and PVC layers and that these benefits would have
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`deterred a person of ordinary skill in the art from pursuing a design where
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`the three layers have the same dimensions. Id. at 51 (citing Ex. 2039 ¶ 58).
`
`This deterrence theory appears to be premised on the unpersuasive view,
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`discussed above, that Fireman teaches away from using mesh with
`
`translucent PVC. See Ex. 2039 ¶ 58 (Mr. Kuchel opining that “[a] POSA
`
`would have been deterred . . ., especially in view of Fireman’s teaching.”);
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`PO Resp. 53–54 (arguing that Fireman’s “translucence goal” and statement
`
`that “at least a portion” of the pool wall may be comprised of the three-layer
`
`composite would deter a person of ordinary skill in the art from having
`
`overlapping perimeters). Patent Owner, relying on the testimony of
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`20
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`PGR2017-00003
`Patent 9,254,240 B2
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`Mr. Kuchel, argues that “raw edges” of mesh in an overlapping perimeter
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`configuration would have various problems such as wicking involving
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`“external debris and liquid” and a less clean and professional appearance.
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`PO Resp. 52–53 (citing, inter alia, Ex. 2039 ¶ 59).
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`Even if there are certain recognized problems with having coextensive
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`layers, those do not negate a finding that Fireman discloses, to a person of
`
`ordinary skill in the art, a material where a component cut therefrom would
`
`have coextensive perimeters. To the extent that Patent Owner’s arguments
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`are directed to the reason to combine the references in an obviousness
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`analysis, we do not find them persuasive. For example, neither Patent
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`Owner nor its expert explains adequately why a lack of a professional
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`appearance or wicking due to external debris and liquid would be a problem
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`for a tensioning structure located inside an air chamber.
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`
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`Having considered the parties’ arguments and the evidence, we find
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`that a person of ordinary skill in the art would understand Fireman to
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`disclose, or at least suggest, that components cut from Fireman’s mesh-
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`reinforced material would have a porous sheet with an outer perimeter that
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`substantially overlaps that of the attachment sheets. We further find that the
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`use of Fireman’s material for the support web of Peterson, as in Petitioner’s
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`proposed combination, satisfies the “tensioning structure” limitation of
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`claim 1, including the Substantial Overlap Limitation.
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`c) Reason to Combine the Referenc
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