Pacific Market International, LLCv.Ignite USA, LLC

Patent Trial and Appeal Board

Sep 28, 2015

12456192 (P.T.A.B. Sep. 28, 2015)

Trials@uspto.gov Paper 56
Tel: 571-272-7822 Entered: September 28, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PACIFIC MARKET INTERNATIONAL, LLC,
Petitioner,
v.
IGNITE USA, LLC,
Patent Owner.

Case IPR2014-00561
Patent 7,997,442 B2

Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and
JAMES A. WORTH, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 318(a)
I. INTRODUCTION
A. BACKGROUND
Pacific Market International, LLC (“PMI”) filed a Petition (Paper 1,
“Pet.”) requesting an inter partes review of claims 1–19 of U.S. Patent No.
7,997,442 B2 (Ex. 1006, “the ’442 patent”). PMI supported the Petition
with a declaration from Aron D. Dahlgren, P.E. (Ex. 1014). Ignite USA,
LLC (“Ignite”) timely filed a Preliminary Response. Paper 8 (“Prelim.
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Resp.”). On Septermber 30, 2014, based on the record before us at the time,
we instituted an inter partes review of claims 1, 2, 4–10, and 14–19, Paper 9
(“Institution Decision” or “Dec.”), on the following grounds:
References Basis Claims
U.S. Patent No. 3,967,748 (“Albert ’748”) (Ex. 1001) § 103 1, 2, 4–8, 10,
14, and 15
U.S. Patent No. 4,303,173 (“Nergard”) (Ex. 1003) in
view of Albert ’748
§ 103 16–19
U.S. Patent No. 4,136,799 (“Albert ’799”) (Ex. 1005) § 103 9
Dec. 21.
After we instituted review, PMI Ignite filed a Patent Owner Response,
Paper 28 (“Resp.”), in opposition to the Petition and supported by the
declaration of Lee A. Swanger, Ph.D., P.E. (Ex. 2008). PMI filed a Reply in
support of the Petition, Paper 32 (“Reply”), supported by three additional
declarations from Mr. Dahlgren (Exs. 1022–24).
Ignite also filed a Motion to Exclude certain evidence proffered by
PMI. Paper 44 (“Motion” or “Motion to Exclude”). PMI opposed the
Motion to Exclude. Paper 49 (“Mot. Opp.”). Ignite filed a Reply in support
of the Motion. Paper 52 (“Mot. Reply”). Ignite did not move to amend any
claim in the ’442 patent.
Oral argument was conducted on June 17, 2015. A transcript is
entered as Paper 55 (“Tr.”).
For the reasons expressed below, we conclude that PMI has
demonstrated, by a preponderance of evidence, that all claims for which
review has been instituted are unpatentable as obvious under 35 U.S.C.
§ 103. We also deny Ignite’s Motion.
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B. RELATED MATTERS
PMI identified, as a related proceeding, the co-pending lawsuit, Ignite
USA, LLC v. Pacific Market International, LLC, No. 14-cv-856 (N.D. Ill.
Feb. 7, 2014). Pet. 1.
C. THE ’442 PATENT
The ’442 patent relates to a sealed drink container with at least two
trigger-actuated apertures in the lid, one through which the user drinks the
beverage and another for venting pressure. Ex. 1006, 15:44–59. When the
user presses the trigger, the pressure vent opens first and then the drink
aperture opens. Id. at 20:40–50, Figs. 16–18. The sequential opening of
these two apertures releases any hot gases inside the container through the
vent rather than the drink aperture. Id. at 20:8–13. PMI and Ignite refer to
the opening of a vent before opening the drink aperture as “pre-venting.”
E.g., Pet. 3, Resp. 39.
Claims 1, 8, and 16, which are independent and representative, recite:
1. A drinking container comprising:
a container body having a cavity;
a removable lid covering the cavity, the lid having a drink
aperture and a separate vent aperture; and,
a trigger mechanism mechanically connected to a drink aperture
shutter and to a vent seal, the trigger mechanism moving the
shutter and the vent seal from a closed position to an open
position,
wherein the trigger mechanism has an actuation stroke,
wherein the vent seal is initially actuated during a first portion
of the actuation stroke of the trigger mechanism, and
wherein the shutter is initially actuated during a second portion
of the actuation stroke of the trigger mechanism, the first
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portion of the actuation stroke being initiated prior in time to
the initiation of the second portion of the actuation stroke.
Ex. 1006, 23:33–47 (with line breaks added for clarity).
8. A drinking container comprising:
a container body having a cavity;
a removable lid covering the cavity of the container body, the
lid having a drink aperture and a vent aperture, a shutter that
is moveable between a closed position and an open position,
and a vent seal that is moveable between a closed position
and an open position; and
a trigger mechanically connected to the shutter and the vent
seal, the trigger having an actuation stroke,
wherein the vent seal is actuated during a first portion of the
actuation stroke of the trigger,
wherein the shutter is actuated during a second portion of the
actuation stroke of the trigger, and
wherein the first portion of the actuation stroke is initiated prior
in time to the initiation of second portion of the actuation
stroke.
Id. at 24:4–19 (with line breaks added for clarity).
16. A drinking container comprising:
a container body having a cavity and
a removable lid covering the cavity, the lid having
a drink aperture and a vent aperture,
a shutter operably closing the drink aperture from the cavity,
a vent seal operably closing the vent aperture from the
cavity,
the lid further having a push-button trigger that has a linear
actuation stroke transverse to a longitudinal axis of the
container body, the trigger being mechanically connected
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to the shutter and the vent seal to open and close the
shutter and vent seal during actuation of the trigger,
wherein the vent seal is initially actuated during a first portion
of the actuation stroke of the trigger,
wherein the shutter is initially actuated during a second portion
of the actuation stroke of the trigger.
Id. at 24:49–64 (with line breaks added for clarity).
II. CLAIM INTERPRETATION
“A claim in an unexpired patent shall be given its broadest reasonable
construction in light of the specification of the patent in which it appears.”
37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d
1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress implicitly
approved the broadest reasonable interpretation standard in enacting the
AIA.”). When applying that standard, we interpret the claim language as it
would be understood by one of ordinary skill in the art in light of the
specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
2010). Thus, we give claim terms their ordinary and customary meaning.
See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The
ordinary and customary meaning is the meaning that the term would have to
a person of ordinary skill in the art in question.” (internal quotation marks
omitted)). Only terms which are in controversy need to be construed, and
then only to the extent necessary to resolve the controversy. Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
A. OUR PRIOR INTERPRETATION OF CLAIM TERMS
At the urging of one or both of the parties, we interpreted a number of
claim terms as expressed in the Institution Decision including “shutter,”
“transverse,” “seal,” “actuation stroke,” and “push-button trigger.” Dec. 4–
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8. After our Institution Decision, the parties dispute only our prior
interpretation of “push-button trigger.” Resp. 7–11; Reply 4–6. For the
purposes of this Final Written Decision, we maintain our prior
interpretations of “shutter,” “transverse,” “seal,” and “actuation stroke,” and
we address only the parties’ arguments regarding “push-button trigger”
below.
B. PUSH-BUTTON TRIGGER
Independent claim 16 is the only claim that expressly recites a “push-
button trigger.” In our Institution Decision, we adopted Ignite’s proposed
interpretation of “push-button trigger” as meaning “a trigger that is operated
by pushing a button.” Dec. 8. Ignite seeks to clarify its initially proposed
interpretation such that “push-button trigger” means “a push-button that
operates in a linear fashion transferring the input force to the trigger
mechanism along the same direction, i.e., perpendicular to the touch surface
of the push-button (or transverse to the longitudinal axis of the container
recited in the claims).” Resp. 11. Ignite proposes its clarification out of
concern that PMI seeks to “stretch the term beyond its broadest reasonable
interpretation.” Resp. 8. Ignite cites as the basis for its concern that Mr.
Dahlgren testified on cross examination that a push-button means
“[s]omething that one pushes,” Ex. 2010, 94:15–17, and can refer to
Nergard’s lever, Ex. 2011, 80:5–7.
Ignite relies upon a lay dictionary definition and testimony of Dr.
Swanger to support its contention that a skilled artisan would understand
“push-button” to refer to a button, knob, or disk (but not a lever) that exerts
force “in a direction generally perpendicular to the touch surface of the
button.” Resp. 8–9 (citing Ex. 2002; Ex. 2008 ¶ 37). Ignite also relies upon
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the Specification describing trigger member 610 as being pushed “radially
inward.” Resp. 10 (citing Ex. 1006, 20:17–21). Ignite further contends that
its clarified interpretation is warranted because claim 16 recites “a
pushbutton trigger that has a linear actuation stroke transverse to a
longitudinal axis of the container body.” Resp. 10.
PMI responds that our original interpretation of “push-button trigger”
was “appropriate.” Reply 4. PMI also argues that Ignite’s new
interpretation of “push-button trigger” is (1) unsupported by the claims,
specification, and drawings of the ’442 patent, (2) inconsistent with our
interpretation of “actuation stroke,” and (3) an improper attempt to require
linear movement of part of the trigger mechanism for those claims not
reciting such a limitation. Id. at 5–6. For reasons expressed below, we agree
with PMI and decline to modify our interpretation of “push-button trigger.”
By its plain meaning, “push-button” is used as an adjective to modify
the noun “trigger.” The Specification refers to an exemplary trigger as
trigger member 610 in lid assembly 514, which a
user would operate by pressing a flattened
surface. Ex. 1006, 20:17–21, Fig. 14
(reproduced in pertinent part at top right). As
shown in Figure 15 (reproduced in pertinent part
at bottom right) trigger 610 is only one item
within a complex trigger assembly 520, which
also includes main body portion 694, transverse
portion 696, trigger spring 644, and arms 708
among other elements. Id. at 18:64–19:6.
Transverse portion 696 of trigger 610 “operates
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as a push-button actuator” for trigger mechanism 520 and sealing
mechanism 518. Id. at 19:64–20:1.
Trigger member 610 is, however, merely an exemplary embodiment
of a trigger, and we take care not to incorporate limitations that appear only
in the specification. In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969).
We recognize that the Specification describes trigger 610 as moving
“radially,” which would be in a direction transverse to the longitudinal axis
of the container. Nevertheless, we do not consider this disclosure to limit
“push-button trigger” so narrowly as Ignite proposes.
To act as its own lexicographer, a patentee must “clearly set
forth a definition of the disputed claim term” other than its plain
and ordinary meaning. . . . It is not enough for a patentee to
simply disclose a single embodiment or use a word in the same
manner in all embodiments, the patentee must “clearly express
an intent” to redefine the term.
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (internal citations omitted). If anything, the Specification merely
provides support for the express limitation in claim 16 requiring a trigger
that “has a linear actuation stroke transverse to a longitudinal axis of the
container body.” Accordingly, we do not conclude that “push-button
trigger” alone requires a trigger to move along a linear actuation stroke in a
particular direction.
III. THE CHALLENGES TO PATENTABILITY
We instituted a review of the patentability of claims 1, 2, 4–10, and
14–19 of the ’442 patent on the grounds that those claims may be obvious in
light of various combinations of up to two of three prior art references:
Albert ’748, Nergard, and Albert ’799. Dec. 8–20.
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The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007) reaffirmed the framework for determining obviousness as
set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). As observed by
the Court in KSR, the factual inquiries set forth in Graham that are applied
for establishing a background for determining obviousness under 35 U.S.C.
§ 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at
issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
KSR, 550 U.S. at 406. With these standards in mind, we address each
challenge below.
A. THE PARTIES’ POST-INSTITUTION ARGUMENTS
In our Institution Decision, we concluded that PMI demonstrated a
reasonable likelihood that it would prevail in showing that: (1) Albert ’748
rendered claims 1, 2, 4–8, 14, and 15 obvious, Dec. 9–12; (2) the
combination of Nergard and Albert ’748 rendered claims 16–19 obvious, id.
at 13–19; and (3) Albert ’799 rendered claim 9 obvious, id. at 19–20. We
must now determine whether PMI has established by a preponderance of the
evidence that these combinations of prior art render claims 1, 2, 4–10, and
14–19 unpatentable as obvious. 35 U.S.C. § 316(e).
Our governing statute and Rules “clearly place some onus on the
patent owner, once trial is instituted, to address the material facts raised by
the petition as jeopardizing patentability of the challenged claims.” Johnson
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Health Tech Co. Ltd. v. Icon Health & Fitness, Inc., Case IPR2013-00463,
slip op. at 12 (PTAB Jan. 29, 2015) (Paper 41). We previously instructed
Ignite that “any arguments for patentability not raised in the [Patent Owner
Response] will be deemed waived.” Paper 10, 2–3. Additionally, the
Board’s Trial Practice Guide states that the Patent Owner Response “should
identify all the involved claims that are believed to be patentable and state
the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012)
Ignite argues that Albert ’748 fails to describe the “mechanically
connected” trigger of independent claims 1 and 8, Resp. 51–56, and the
“deflector plate” of dependent claim 7, id. at 56–57. Ignite also argues that
Albert ’799 fails to describe the “mechanically connected” trigger recited in
dependent claim 9. Id. at 58–59. Ignite also contends that Nergard does not
describe the “push-button trigger” or “vent seal” recited in independent
claim 16. Id. at 12–14 (addressing “push-button trigger”), 39–40
(addressing “vent seal”). Ignite further argues that it is improper to combine
Nergard and Albert ’748 or modify Nergard to include features of Albert
’748. Id. at 14–39.
Ignite does not present persuasive evidence or argument on the
remaining elements of the claims, that is, those elements other than the
“mechanically connected” trigger, “deflector plate,” “push-button trigger,”
and “vent seal.” See id. at 11–60. Accordingly, with regard to all other
limitations of the claims, the record now contains unrebutted arguments and
evidence presented by PMI regarding the merits of the teachings of Albert
’748 (for claims 1, 2, 4–8, 10, 14, and 15), Nergard combined with Albert
’748 (for claims 16–19), and Albert ’799 (for claim 9). In this connection,
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we agree with and adopt Petitioner’s factual contentions set forth in the
Petition at pages 12–60 with regard to these limitations. We find that the
preponderance of the evidence of record developed at trial supports our
conclusion that PMI has set forth how the alleged prior art teaches or
suggests those other limitations of the reviewed claims. Accordingly, we do
not address these other limitations in our discussion below.
B. OBVIOUSNESS OF CLAIMS 1, 2, 4–8, 10, 14, AND 15 IN VIEW OF
ALBERT ’748
Claims 1 and 8 are independent claims. Claims 2 and 4–7 depend
from claim 1, and claims 10, 14, and 15 depend, directly or indirectly, from
claim 8. We preliminarily determined that PMI had established a reasonable
likelihood of showing that Albert ’748 renders all these claims unpatentable
as obvious. Dec. 9–12. Ignite contends that Albert ’748 fails to render
claims 1, 2, 4–6, 8, 10, 14, and 15 obvious because Albert ’748 does not
describe a trigger “mechanically connected” to the “shutter.” Resp. 51–56.
Ignite also argues in support of the patentability of dependent claim 7 based
upon limitations introduced in those claims. Id. at 56–57. We address each
argument below.
1. Claims 1, 2, 4–6, 8, 10, 14, and 15
PMI sets forth in detailed claim charts the way in which Albert ’748
describes every element of claims 1, 2, 4–6, 8, 10, 14, and 15. Pet. 12–28.
PMI identifies Albert ’748’s valve member 30 and the associated O-ring 32
on movable member 38 as the claimed shutter. Id. at 16–18. PMI identifies
O-ring pressure relief valve 78 as the “vent seal,” which is carried on
plunger 76. Id. at 16–17; Reply (citing Ex. 1001, 4:33–36). Movable
member 38 is rides within bore 74 of plunger 76 in a manner that constitutes
a “lost motion” relationship between plunger 76 and movable member 38.
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Pet. 17 (citing Ex. 1001, 4:67–5:6). The combination of movable member
38 and plunger 76 are identified as the claimed trigger mechanism. Pet. 16,
23, Ex. 1014 ¶¶ 45, 58. Figure 2 of Albert ’748, which is reproduced below,
illustrates aperture shutter (O-ring 32 on valve 30), vent seal (O-ring 78) and
the mechanism resulting in a lost-motion relationship between the shutter
and the vent seal.

Figure 2 of Albert ’748 is an enlarged fragmentary sectional
view that illustrates a two-seal mechanism in which O-ring 78
unseals before O-ring 32 when knob 96 is pressed.
Ignite contends that PMI identifies movable member 38 and plunger
76 as the “trigger mechanism” and valve member 30 as the “drink aperture
shutter.” Resp. 51–52. Claims 1 and 8 both require that the trigger be
“mechanically connected” to the “drink aperture shutter” and the “vent seal.”
Ex. 1006, 23:37–38 (claim 1), 24:11–12 (claim 8). Ignite argues that Albert
’748’s valve member 30 (i.e., the identified shutter) is not “mechanically
connected” to movable member 38 (i.e., the identified trigger). Resp. 51.
Ignite contends that valve member 30 and movable member 38 are “a single,
integrally formed component.” Id. at 54 (citing Ex. 1001, Figs. 2, 5;
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Ex. 2008 ¶ 85). Ignite’s argument implies that the shutter and trigger must
be separate components to be able to be mechanically connected. Resp. 55–
56.
Ignite’s argument is unpersuasive. Ignite mischaracterizes PMI’s
mapping of Albert ’748 to the claimed shutter, trigger, and vent seal. PMI
identifies valve 30 and O-ring 32 as the shutter and member 38 and plunger
76 as the trigger. Pet. 16–18. Albert ’748 describes a space between
abutment shoulder 100 on movable member 38 and abutment end 98 on
plunger 76. Ex. 1001, 4:63–66. Because of this space between these
abutments, when a user of Albert ’748’s cup presses knob 96, O-ring 78
unseals a vent first and then O-ring 32 unseals a drink opening.1 Pet. 17
(citing Ex. 1001, 4:67–5:6). PMI persuades us that the trigger (Albert ’748’s
plunger 76 combined with member 38) is mechanically connected to both
the shutter (O-ring 32 on valve 30) and the vent seal (O-ring 78). The ’442
patent describes essentially the same type of “mechanically connected”
relationship between vent seal 683, which is an O-ring seated on shaft 694 of
the trigger mechanism 520. Ex. 1006, 19:36–39, Figs. 15–18.
As stated in part II.A above, we are persuaded that PMI has identified
how Albert ’748 describes all other elements of claims 1, 2, 4–6, 8, 10, 14,
and 15. Accordingly, we conclude that PMI has demonstrated by a
preponderance of the evidence that Albert ’748 renders claims 1, 2, 4–6, 8,
10, 14, and 15 unpatentable as obvious under § 103.

1 Albert ’748 discloses that this spacing provides for a “lost motion
relationship” between plunger 76 and movable member 38, i.e., the
mechanism which provides for pre-venting of pressure from hot coffee.
Ex. 1001, 2:44–48, 4:67–5:6.
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2. Claim 7
Claim 7 depends upon claim 1 and further recites “a deflector plate
adjacent the vent aperture, wherein the deflector plate directs vapor being
expelled out of the vent aperture transverse to a longitudinal axis of the
container body.” Ex. 1006, 23:66–24:2. PMI contends that knob 96 of
Albert ’748 constitutes the claimed deflector because it would redirect vapor
expelled from opening 88 in a “360 degree pattern . . . with most of the
vapor being redirected in a direction transverse (i.e., lying across, not
parallel) to the longitudinal axis of the body of the container
10.” Pet. 21 (citing Ex. 1014 ¶ 57). The pertinent portion of
Figure 2 of Albert ’748, reproduced at right, illustrates how a
flange on knob 96 would, when pressed by a user, be in a
position (shown in dotted lines) to deflect vapor emanating
from opening 88.
Ignite contends that claim 7 requires that “all—not just ‘most’—of the
vapor be expelled in the transverse direction.” Resp. 56. Ignite supports its
argument primarily with testimony from Dr. Swanger. Id. (citing Ex. 2008
¶¶ 80–84). Ignite also relies on the following passage from the
Specification:
The deflector plate 731 directs vapor being expelled out of the
vent aperture 682 transverse to the longitudinal axis of the
container body 512 and away from the user. Specifically, the
vent deflector plate 731 prevents any vapor from being directed
upwardly from the vent aperture 682, and rather directs it
sideways away from the user.
Resp. 57 (quoting Ex. 1006, 18:4–10 with emphasis). Based on this
passage, Ignite argues that claim 7 requires all vapor to be directed
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transversely because the “obvious purpose of the deflector plate is to protect
the user by directing hot gases away from the user.” Resp. 57.
Ignite’s argument is unpersuasive. First, claim 7 recites a structure,
the “deflector plate” that “directs vapor being expelled out of the vent
aperture transverse to a longitudinal axis of the container body.” Claim 7
does not recite that the deflector plate “prevent” vapor from being directed
along the longitudinal axis or that “all” vapor is directed transversely.
Rather, claim 7 merely requires that the plate direct vapor transversely.
Because the claim is open-ended (by reciting “comprising”), the claim
limitation is met by any deflector that directs some vapor in the recited
direction. We have broadly interpreted “transverse” as meaning “situated or
lying across,” Dec. 5, and Ignite does not contest that interpretation,
Resp. 56–57. Ignite also does not dispute that knob 96 of Albert ’748 directs
most of the vapor in the transverse direction. Resp. 56–57.
Knob 96 of Albert ’748 deflects vapor in a 360-degree flow pattern in
all directions in the plane illustrated by the line on the left hand portion of
Ignite’s annotated version of Albert ’748’s Figure 2, which is reproduced
below right. Therefore, at least some of the vapor would be flowing in
various directions transverse to the
longitudinal axis of the container, including
some flow in the direction defined by the
longitudinal axis of the container. Any
direction in that plane, however, that is not
parallel to the longitudinal axis of the
container would meet the “transverse”
requirement of claim 7.
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On the record before us, we are persuaded that PMI has demonstrated
by a preponderance of evidence that Albert ’748 describes a deflector plate
that “directs vapor being expelled out of the vent aperture transverse to a
longitudinal axis of the container body” as introduced in claim 7. Because
of the open-ended nature of claim 7, it is of no import that knob 96 of Albert
’748 also directs some of the vapor being expelled from opening 88 in a
direction parallel to the longitudinal axis of container 10. As stated in part
II.A above, we are persuaded that PMI has identified how Albert ’748
describes all other elements of claim 7. Accordingly, we conclude that PMI
has demonstrated by a preponderance of the evidence that Albert ’748
renders claim 7 unpatentable as obvious under § 103.
C. OBVIOUSNESS OF CLAIMS 16–19 IN VIEW OF THE COMBINATION OF
NERGARD AND ALBERT ’748
PMI provides argument, detailed claim charts with citations to prior
art, and testimony that illustrate how the combination of Nergard and Albert
’748 teach each requirement of claims 16–19. Pet. 51–60. Ignite raises a
number of arguments to counter PMI’s challenge, and we address each in
turn below.
1. Nergard’s Alleged Failure to Describe a “Push-button Trigger”
or a “Vent Seal”
Ignite contends that Nergard fails to describe the recited “push-button
trigger” or the “vent seal” of independent claim 16. Resp. 12–14 (regarding
“push-button trigger”); 39–41 (regarding “vent seal”). We find Ignite’s
arguments unpersuasive because Ignite fails to address the challenge as
presented by PMI, which is based on the combination of Nergard and Albert
’748. For example, PMI identifies the manner in which Albert ’748 teaches
the “push-button trigger” in the form of its knob 96, Pet. 55–56 (citing
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Ex. 1001, 4:47–50), and a “vent seal” in the form of O-ring 78, Pet. 16, 23
(citing Ex. 1001, 4:67–5:6); Reply 14 (citing Ex. 1001, 4:31–36, Fig. 2).
Ignite fails to address whether Albert ’748 describes the claimed “push-
button trigger” or “vent seal.” Resp. 12–14 (regarding “push-button
trigger”); 39–41 (regarding “vent seal”). We, therefore, are not persuaded by
Ignite’s argument that Nergard’s alleged failure to describe ether a “push-
button trigger” or a “vent seal” defeats PMI’s challenge to claims 16–19 as
obvious over the combination of Nergard and Albert ’748.
2. Alleged Defects in the Combination of Nergard and Albert ’748
Ignite proffers three primary arguments against the propriety of
combining teachings of Nergard and Albert ’748 to arrive at the drinking
container of claims 16–19. First, Ignite argues that PMI has failed to carry
its burden to set forth a prima facie case of obviousness. Resp. 14–20.
Second, Ignite argues that PMI fails to establish that a skilled artisan would
have been motivated to combine Nergard and Albert ’748. Id. at 20–36.
Third, Ignite argues that a skilled artisan would have had no reason to
modify Nergard to include the lost-motion mechanism of Albert ’748. Id.
at 36–39. For the reasons expressed below, we find all three arguments to be
unpersuasive.
a) PMI’s Alleged Failure to Establish a Prima Facie Case of
Obviousness Based on Nergard and Albert ’748
We previously found unpersuasive Ignite’s argument that PMI had
failed to make out a prima facie case that claims 16–19 were obvious over
Nergard and Albert ’748. Dec. 17–19. Nevertheless, Ignite reasserts its
argument and contends that PMI does not provide “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Resp. 14 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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418 (2007)). According to Ignite, “whether a combination could be made is
not the relevant inquiry; rather, the question is whether a person of skill
actually would do so.” Id. at 14–15 (citing InTouch Technologies, Inc. v.
VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Ignite
relies, in particular, on the following passage from the InTouch decision:
A reason for combining disparate prior art references is a
critical component of an obviousness analysis; this analysis
should be made explicit. It can be important to identify a
reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does because inventions in most, if not
all, instances rely upon building blocks long since uncovered,
and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.
Id. at 15 (quoting InTouch, 751 F.3d at 1351). Ignite contends that the
InTouch decision thus requires that PMI provide reasoning why a skilled
artisan would have incorporated the push-button trigger mechanism of
Albert ’748 into Nergard.
Ignite argues that the obviousness of using Albert ’748’s push-button
trigger in Nergard’s container is not supported by the suggestion in Albert
’748 that it is desirable to use pre-venting in containers like Nergard’s.
Resp. 16–17. According to Ignite, the only reasoning that PMI argued on
this point is that “a person of skill would be motivated to look to the
teachings of Albert ’748 for how to modify the actuating member 23 of
Nergard to accomplish pre-venting.” Id. at 17 (citing Pet. 31, 43, 53). Ignite
argues that PMI’s statement is not sufficient reasoning but rather a
“conclusory statement” unsupported by sufficient reasoning under InTouch.
Resp. 16. Ignite also criticizes Mr. Dahlgren’s testimony about the reason to
substitute Albert ’748’s push-button for Nergard’s lever as being “circular.”
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Resp. 17–18 (citing Ex. 1014 ¶ 102; Ex. 1023 ¶ 142). Because of PMI’s
allegedly faulty reasoning for substituting Albert ’748’s push-button for
Nergard’s lever, Ignite concludes that PMI has used impermissible hindsight
to reconstruct the claimed drinking container from “disparate” prior art
references and that we should, therefore, find in its favor. Id. at 18–19.
PMI argues that we should reject Ignite’s arguments for two reasons.
First, PMI contends that it sufficiently explained why a skilled artisan would
have found it obvious to substitute Albert ’748’s push-button for Nergard’s
lever. Reply 6–8. Second, PMI contends that Ignite’s reliance on InTouch is
misplaced because that decision relates to combining elements from
“disparate” prior art references rather than simple substitution of known
elements from closely related art such as Nergard and Albert ’748. Id. at 6–
7.
Regarding PMI’s second argument, we agree that the InTouch decision
is inapposite to this case because the prior art references at issue in InTouch
were “disparate” and Nergard and Albert ’748 are closely related to each
other. The Supreme Court noted that when an obviousness challenge
involves more than “the mere application of a known technique to a piece of
prior art ready for the improvement” a more explicit analysis of reasons to
combine prior art elements should occur to facilitate review. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417–18 (2007). For reasons expressed
immediately below, we conclude that PMI has established that Nergard and
Albert ’748 are closely related, not disparate prior art references, and thus
the InTouch decision is inapposite to this case.

2 On page 18 of the its Patent Owner Response, Ignite inaccurately cites
Ex. 1012 ¶ 14 for Mr. Dahlgren’s testimony that appears at Ex. 1023 ¶ 14.
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Regarding PMI’s first argument, Nergard indisputably describes a
drinking container that does not pre-vent pressure inside the container before
opening its drinking aperture. Ex. 1003, 4:39–5:2. PMI relies upon Mr.
Dahlgren’s testimony and express language in Albert ’748 to establish that a
skilled artisan, upon reviewing Albert ’748 and Nergard would be motivated
to improve Nergard’s drinking container by adding the push-button-actuated,
lost-motion mechanism of Albert ’748. Reply 8 (citing Mr. Dahlgren’s
Revised Supplemental Declaration, Ex. 1023 ¶¶ 6–10). Albert ’748
recognizes the problems associated with opening a drink aperture without
first relieving pressure through another valve (i.e., without pre-venting)
when it criticizes two prior art patents that:
both disclose manually operable valves in drinking receptacle
covers but do not provide any means by which steam and
pressure may be relieved from the interior of the container
before the drinking valve is opened. Consequently, both prior
art devices, as disclosed in these patents, concurrently provide
for the relief of drinking liquid and steam or pressure so that the
operation of these valves is dangerous, especially when hot
coffee is contained in the container and the valve is opened
such as to cause the hot liquid to gush out and burn the person
attempting to drink therefrom.
Ex. 1001, 1:14–25. Nergard describes a drink container that suffers from
this problem. Albert ’748 proposes an improvement to drinking containers
like Nergard as follows:
Accordingly, it is an object of the present invention to
provide a novel drinking receptacle valve means which is
operable initially to relieve pressure in the drinking receptacle
and subsequently to open the drinking receptacle valve after the
pressure has been relieved so as to provide for safety of persons
drinking hot coffee from such receptacles.
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Id. at 2:37–43. Mr. Dahlgren testifies that a skilled artisan would have,
therefore, considered it obvious to modify Nergard’s drinking container by
adding the Albert ’748’s pre-venting mechanism, which Albert ’748
describes in great detail. Ex. 1023 ¶ 8. He also explains that a skilled
artisan would have expected the modified version of Nergard to work for the
intended purpose of pre-venting the pressure inside Nergard’s container. Id.
Ignite does not address persuasively Mr. Dahlgren’s testimony as set forth in
his Revised Supplemental Declaration or the express suggestion in Albert
’748 to modify drinking containers such as Nergard’s.
Based on our review of the record, we are persuaded by PMI’s
argument and evidence that PMI has articulated a reason with rationale
underpinning to support its challenge to claims 16–19 as being obviousness
over Nergard and Albert ’748.
b) Motivation to Combine Nergard and Albert ’748
Ingite argues that because Nergard describes a mug with a handle and
a lever-actuated trigger, Nergard discourages using the push-button trigger
of Albert ’748. Resp. 20–27. Ignite relies upon Nergard’s improvement
over earlier containers designed by Mr. Nergard that lacked handles and
included push-button triggers by adding a handle and replacing the push-
button with a lever. Id. at 21–22 (citing Ex. 2007, 1:25–34, Fig. 1). Because
Nergard’s handle and lever are allegedly critical to Nergard’s drinking
container, Ignite contends that a skilled artisan would not replace Nergard’s
lever with a push-button as taught by Albert ’748 or the lost-motion
mechanism connected to Albert ’748’s push-button. Id. at 22–24.
Ignite further argues that claims 16–19 are not obvious over Nergard
and Albert ’748 because substituting Albert ’748’s push-button-actuated,
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lost-motion trigger for Nergard’s lever would change impermissibly
Nergard’s principle of operation and render Nergard’s mug “inoperable for
its intended purpose.” Id. at 27. (citing In re Ratti, 270 F.2d 810, 813
(C.C.P.A. 1959), In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), and In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007)). To
support this argument, Ignite proffers extensive evidence regarding human
factors such as grip strength in an attempt to establish that Nergard’s lever
26 is an essential component of Nergard’s mug because substituting a push-
button for the lever would make Nergard’s mug too difficult to use.
Resp. 28–34 (citing Ex. 2008 ¶¶ 14, 39, 49–51, 54–59, 61–71). Ignite
contends that its evidence establishes that Nergard’s lever results in “as
much as a five-fold reduction in the force necessary to activate the actuating
member 23” when compared to using a push-button substituted from Albert
’748. Resp. 34–35. Ignite then concludes that “Nergard therefore teaches
away from [PMI’s] proposed substitution.” Id. at 36.
Ignite’s argument is unpersuasive. PMI persuasively argues that the
law does not require that a proposed modification to a reference be optimal.
Reply 8–9; In re Gurley, 27 F.3d 551, 552–53 (Fed. Cir. 1994) (“A known or
obvious composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use”).
PMI supplies evidence that containers having handles with a push-button
actuated valve were known alternatives to Nergard’s lever actuated valve.
Reply 9–10 (citing Ex. 1025, 1026). Ignite’s expert, Dr. Swanger, agreed
that substituting the push-button of Albert ’748 for Nergard’s lever would
have been “simple” for a skilled artisan. Ex. 1029, 223:2–5, 246:1–8. PMI
also provides evidence that a user would be able to apply the force required
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to open a modified Nergard container in which a button was substituted for
the lever. Reply 10–11 (citing Ex. 1024 ¶ 17). We agree with PMI that, as
established by the evidence of record, a skilled artisan would have
considered levers and push-button actuators to be well known alternatives
and that substituting a push-button for a lever would have been simple and
yielded predictable results.
c) No Reason to Modify Nergard to Add Lost-Motion Feature
of Albert ’748
Ignite also argues that a skilled artisan would not have modified
Nergard’s actuating member 23 to include the lost-motion mechanism of
Albert ’748 because, according to Dr. Swanger, Nergard’s member 23 is too
short to accommodate Albert ’748’s lost-motion mechanism. Id. (citing
Ex. 2008 ¶¶ 72–76). Ignite contends that Mr. Dahlgren oversimplifies the
modification of Nergard’s actuating member 23 to include lost-motion and
overestimates the amount of space available for the modification. Resp. 38
(citing Ex. 1014 ¶ 104; Ex. 2008 ¶ 76; Ex. 2011, 67:1–69:25; Ex. 2013).
PMI argues that not only would it have been possible to add Albert
’748’s lost-motion mechanism to Nergard, it did so by purchasing a
commercial version of Nergard’s mug and modifying it to include the lost-
motion mechanism of Albert ’748. Reply 11–13 (citing Ex. 1024 ¶ 21).
Albert ’748 expressly recommends using pre-venting in drink containers to
avoid the dangers associated with simultaneous opening of a drink aperture
and a vent aperture. Ex. 1001, 14–25. Albert ’748 describes its lost-motion
mechanism as the preferred manner of avoiding such dangers by pre-venting
vapor before opening the drink aperture. Id. at 1:34–59, 2:37–48, 4:67–5:6.
During his deposition, Mr. Dahlgren testified that because implementing a
lost-motion mechanism involves removing material, it necessarily would
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have been possible to add such a mechanism to Nergard’s actuating member
23. Ex. 2011, 67:11–21. Dr. Swanger agrees that it would have been
possible to incorporate a lost-motion mechanism into Nergard’s lid.
Ex. 1028, 120:24–121:3. Additionally, both experts agree that simply
shortening Nergard’s actuating member 23 to create a gap between
Nergard’s camming surfaces 28 and 29 would implement a lost-motion
mechanism. Ex. 1024 ¶ 32; Ex. 1029, 271:15–274:9.
Based on our review of the evidence and argument, we are persuaded
that a skilled artisan would have possessed sufficient skill to modify
Nergard’s actuating member 23 to incorporate a lost-motion mechanism as
suggested by Albert ’748. We are also persuaded that Albert ’748 expressly
suggests such a modification by recommending that a pre-venting feature be
added to the lid of containers like Nergard’s.
3. Conclusion
For the reasons stated above, we conclude that PMI has demonstrated
by a preponderance of evidence that the combination of Nergard and Albert
’748 renders claims 16–19 unpatentable as obvious.
D. OBVIOUSNESS OF CLAIM 9 IN VIEW OF ALBERT ’799
Claim 9 depends from claim 8 and further recites in pertinent part:
“the shutter is positioned within the lid and below the drink aperture, and
wherein the vent seal is positioned within the lid and below the vent
aperture.” Ex. 1006, 24:20–23. Claim 8 recites, among other limitations, “a
trigger mechanically connected to the shutter and the vent seal.” Ex. 1006,
24:11–12. We preliminarily determined that PMI had established a
reasonable likelihood of showing that Albert ’799 renders claim 9
unpatentable as obvious. Dec. 19–20.
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PMI provides a detailed claim chart and testimony to support its
challenge that claim 9 is unpatentable as obvious over Albert ’799. Pet. 36–
42 (citing Ex. 1014 ¶¶ 79–86). PMI contends that Albert ’799 teaches every
element of claim 9 as set forth in its claim chart. Pet. 38–42. PMI identifies
Albert ’799’s valve member 33 with disk 34 as the shutter, O-ring 37 as the
vent seal, and pushbutton 36 with bar 32 as the trigger. Id. at 39–40. Albert
’799’s Figure 4, reproduced below, illustrates these elements.

Figure 4 from Albert ’799 is a perspective view illustrating
elements of operating unit 12 including pushbutton 36, bar 32,
valve member 33, and O-ring 37.
Ignite argues that Albert ’799 does not describe a trigger
“mechanically connected” to the “shutter and the vent seal.” Resp. 58–59.
Ignite contends that PMI identifies bar 32 as the trigger and valve member
33 as the shutter. Id. at 58. Because these two elements are “integrally
formed” they do not have the “mechanically connected” relationship that is
required in claim 9. Id. at 58–59 (citing Ex. 1005, 6:5–6, 6:15–18). Ignite
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thus argues that two items being formed integrally as a single piece is not a
type of mechanical connection between those two items.
We are persuaded that PMI has demonstrated that Albert ’799
describes a trigger that is mechanically connected to the vent seal and the
aperture shutter. Initially, we note that we consider PMI to identify the
claimed trigger as pushbutton 36 with bar 32, not just bar 32 because the
trigger includes the structure that the user touches (i.e., pushbutton 36). O-
ring 37 (the vent seal) is press fitted onto pushbutton 36 (part of the trigger)
and, therefore, is mechanically connected to the trigger in the same way that
the ’442 patent describes vent seal 683 being mechanically connected to
trigger 610. Bar 32, although integrally formed with pushbutton 36 and
valve 33, functionally connects Albert ’799’s vent seal (O-ring 37) to the
aperture shutter (valve 33 with disk 34 and abutment plate 35) and converts
a force applied to pushbutton 36 into motion of valve 33, disk 34, and
abutment plate 35. Ex. 1005, Fig. 4, 6:11–26. Additionally, when a user of
Albert ’799’s cup presses button 36, bar 32 moves, which then causes valve
33 to open drink opening 27. 6:58–7:9. Thus, in a functional and
mechanical sense, O-ring seal 37 and valve 33 are both connected via
pushbutton 36 and bar 32 (the trigger).
As stated in part II.A above, we are persuaded that PMI has identified
how Albert ’799 describes all other elements of claim 9. Accordingly, we
are persuaded that PMI has demonstrated by a preponderance of evidence
that Albert ’799 renders claim 9 unpatentable as obvious under § 103.
IV. IGNITE’S MOTION TO EXCLUDE
We have reviewed Ignite’s Motion to Exclude, PMI’s Opposition to
the Motion, and Ignite’s Reply in support of the Motion. Based on our
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review, we deny the Motion in all respects for one or both of the following
reasons: (1) the Motion is moot because it seeks to exclude evidence not
considered or relied upon in rendering this Decision or (2) the Motion
addresses issues more appropriate to determining the weight ascribed to the
evidence rather than the admissibility of evidence. In rendering this
Decision, we determine and ascribe the appropriate weight to all proffered
evidence and, when appropriate, comment upon the weight ascribed.
V. CONCLUSION
For the reasons expressed above, we determine that PMI has shown
by a preponderance of the evidence that claims 1, 2, 4–10, and 14–19 are
unpatentable as obvious.
VI. ORDER
For the reasons given, it is:
ORDERED that claims 1, 2, 4–10, and 14–19 of the ’442 patent are
held unpatentable;
FURTHER ORDERED that Ignite’s Motion to Exclude is denied;
FURTHER ORDERED that pursuant to 35 U.S.C. § 318(b), upon
expiration of the time for appeal of this decision, or the termination of any
such appeal, a certificate shall issue canceling claims 1, 2, 4–10, and 14–19
in U.S. Patent No. 7,997,442 B2; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:
George C. Rondeau, Jr.
DAVIS WRIGHT TREMAINE LLP
georgerondeau@dwt.com
Kelly J. Hollowell
STITES & HARBISON, PLLC
khollowell@stites.com

PATENT OWNER:
Stephen M. Schaetzel
Gregory J. Carlin
Warren J. Thomas
Jessica Keesee
MEUNIER CARLIN & CURFMAN, LLC
sschaetzel@mcciplaw.com
gcarlin@mcciplaw.com
wthomas@mcciplaw.com
jkeesee@mcciplaw.com