12762548 (P.T.A.B. Dec. 12, 2014)

Playtex Products, LLCv.Munchkin, Inc.

Patent Trial and Appeal BoardDec 12, 2014

12762548 (P.T.A.B. Dec. 12, 2014)

Trials@uspto.gov Paper No. 13 571-272-7822 Entered: December 12, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ PLAYTEX PRODUCTS, LLC, EVEREADY BATTERY COMPANY, INC., and ENERGIZER HOLDINGS, INC., Petitioner, v. MUNCHKIN, INC., Patent Owner. ____________ Case IPR2014-01130 Patent 8,312,887 B2 ____________ Before SCOTT E. KAMHOLZ, BARRY L. GROSSMAN, and PHILIP J. HOFFMANN, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-01130 Patent 8,312,887 B2 2 I. INTRODUCTION Playtex Products, LLC, Eveready Battery Company, Inc., and Energizer Holdings, Inc. (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) on July 9, 2014, requesting institution of an inter partes review of claims 1–19 of U.S. Patent No. 8,312,887 B2 (“the ’887 patent”). Patent Owner Munchkin, Inc. filed mandatory notices (Paper 5) but did not file a Preliminary Response. We have jurisdiction under 35 U.S.C. § 314. We deny institution of inter partes review because Petitioner has not demonstrated a reasonable likelihood that any of the challenged claims is unpatentable. See 37 C.F.R. § 42.108(c). II. DISCUSSION A. The ’887 Patent The ’887 patent is directed to a dishwasher basket designed to hold baby bottle nipples, non-spill cup valves, feeding straws, and the like. Ex. 1001, Abstr.; 1:11–14. Independent claims 1 and 11 are reproduced below. 1. A dishwasher basket, comprising: a container; a lid that is hingedly mounted to the container; and an interior rack that is hingedly mounted to the container in a manner that is independent from the hinged mounting of the lid to the container, whereby each of the interior rack and the lid may be independently moved with respect to the container, wherein at least one of the lid and interior rack is constructed and arranged to hold an infant feeding accessory. IPR2014-01130 Patent 8,312,887 B2 3 11. A dishwasher basket, comprising: a container; a lid that is hingedly mounted to the container; and an interior rack that is hingedly mounted to the container in a manner that is independent from the hinged mounting of the lid to the container, whereby the interior rack includes a nipple mounting fixture for securely holding a baby bottle nipple within a dishwasher during dishwashing and a straw mounting fixture for securely holding a drinking straw within a dishwasher during dishwashing. B. Challenges Petitioner challenges the claims as follows. To the extent that the “Statement of Precise Relief Requested” (Pet. 2–3) differs from the substantive argument, the substantive argument controls. Reference(s) Basis Claims Challenged Zambano 1 § 102 1–7 Zambano § 103 1–7, 9 Zambano and McConnell ’291 2 § 103 7 Zambano and Nelson 3 § 103 8, 10–19 Zambano, McConnell ’291, and Nelson § 103 8 McConnell ’291 § 102 1–7 1 U.S. Pat. No. 4,830,200, iss. May 16, 1989 (Ex. 1007). 2 U.S. Pat. No. 4,732,291, iss. Mar. 22, 1988 (Ex. 1006). 3 U.S. Pat. No. 6,123,204, iss. Sept. 26, 2000 (Ex. 1005). IPR2014-01130 Patent 8,312,887 B2 4 Reference(s) Basis Claims Challenged McConnell ’291 § 103 9 McConnell ’291 and Nelson § 103 8, 10–19 McConnell ’258 4 § 103 1–7, 9 McConnell ’258 and Nelson § 103 8, 10–19 Prince Lionheart 5 § 103 1–7, 9 Prince Lionheart and Nelson § 103 8, 10–19 C. Claim Construction In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The only terms requiring express construction for purposes of this decision are “hingedly mounted” and “hinged mounting.” Petitioner argues that both of these terms should be construed to mean “rotatably linked, either 4 U.S. Pat. App. Publication No. 2004/0040586 A1, pub. Nov. 6, 2003 (Ex. 1008). 5 Product Catalog, Prince Lionheart, Inc., asserted publication date 1998 (Ex. 1009). IPR2014-01130 Patent 8,312,887 B2 5 directly or indirectly.” Pet. 8–11. Petitioner cites expert declaration testimony of Mr. Michael Henley in support of this argument. Id. at 9–11 (citing Ex. 1002 ¶¶ 42–48). Petitioner argues that the specification of the ’887 patent does not provide much detail about the structure of the hinged mounting. Id. at 9; Ex. 1002 ¶ 43. Petitioner points instead to Figures 4 and 11, for example, and proposes a combination of these two figures, which is reproduced below: Petitioner’s proposed combination of Figures 4 and 11 of the ’887 patent shows a pivot axis, molded into lid 4, which is snap-fit into aligned IPR2014-01130 Patent 8,312,887 B2 6 receptacles formed on interior rack 19 and container 2. Pet. 10 (citing Ex. 1002 ¶¶ 45–47). Arrows added by Petitioner show how the lid pivot axis fits into the receptacles. Petitioner argues that, because this is the only disclosed embodiment of a hinged mounting between the interior rack and the container, and because the connection between the interior rack and the container is made indirectly via the lid, that the broadest reasonable construction of “hinged mounting” encompasses indirect linkages. Id. at 11 (citing Ex. 1002 ¶ 47). Although we agree with Petitioner that the ’887 patent does not limit a “hinged mounting” to direct connections, we determine that “rotatably linked, either directly or indirectly” is an unreasonably broad construction of these claim terms, because it does not account for the meaning of “hinged” or “hingedly” with sufficient precision. The ’887 patent does not provide an express definition of “hinged” or “hingedly,” so we look to other evidence to determine the ordinary and customary meaning, as would be understood by one of ordinary skill in the art. See Translogic Tech., 504 F.3d at 1257. Petitioner argues, supported by expert testimony of Mr. Henley, that one of ordinary skill in the relevant art would have had a bachelor’s degree in, e.g., mechanical engineering, as well as relevant experience. Pet. 5; Ex. 1002 ¶ 35. We agree with Petitioner for the purposes of this decision. A “hinge,” in the mechanical engineering sense, is a coupling between two parts in which one part swings on an axis in common with the other part. Ex. 3001 (definition of “hinge” in COLLINS ENGLISH DICTIONARY, 1991– 2003) (defining hinge in the mechanical engineering sense as “a device for holding together two parts such that one can swing relative to the other, IPR2014-01130 Patent 8,312,887 B2 7 typically having two interlocking metal leaves held by a pin about which they pivot”). Petitioner’s proposed construction encompasses any sort of rotation of one part relative to another part. It does not limit the construction to hinge- type rotation, i.e., a pivoting or swinging about an axis in common with the other part. See id. Petitioner’s construction effectively reads the terms “hinged” and “hingedly” out of the claim, which we may not do. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (all limitations of a claim must be considered when considering patentability over prior art). For these reasons, and for purposes of this decision, we construe “hingedly mounted” and “hinged mounting” in describing the relationship of two parts to mean “linked, directly or indirectly, such that the first part swings on an axis in common with the second part.” D. Anticipation of Claims 1–7 by Zambano Figure 2 of Zambano is reproduced below: Figure 2 depicts a dishwasher basket. A lid of gridded wires, denoted by reference number 48, pivots at the left side of interior rack 36 by crimps 52 IPR2014-01130 Patent 8,312,887 B2 8 in the lid wires on the left side. The interior rack is hinged on its right side to container 12 by hinges 42. As a result, the lid pivots on one side of the interior rack, and the interior rack pivots at its opposite side on the container. Petitioner argues implicitly that the lid is “hingedly mounted” to the container indirectly via the interior rack. See Pet. 13–14 (citing Ex. 1002 ¶ 68). We disagree. Although lid 48 arguably is “hingedly mounted” to interior rack 36 and interior rack is “hingedly mounted” to container 12, it does not follow that the lid is “hingedly mounted” to the container, as is required by the claim. We reach this conclusion because the lid does not swing on an axis in common with the container, as is required by the broadest reasonable construction of “hingedly mounted.” For this reason, we are not persuaded of a reasonable likelihood that claim 1, or its dependent claims 2–7, are unpatentable for anticipation by Zambano. E. Obviousness of Claims 1–7 and 9 over Zambano Petitioner makes this challenge contingent on our adopting a construction of “hingedly mounted” that requires a direct connection between the lid and the container. Pet. 18. We do not adopt such a construction and, consequently, deny this challenge. F. Obviousness of Claim 7 over Zambano and McConnell ’291 This challenge depends on the anticipation and obviousness challenges to claim 1 over Zambano. Pet. 23 (chart). This challenge is denied for the reasons given above for claim 1. IPR2014-01130 Patent 8,312,887 B2 9 G. Obviousness of Claims 8 and 10–19 over Zambano and Nelson The challenge as to claims 8 and 10 depends on the anticipation and obviousness challenges to claim 1 over Zambano. Pet. 27, 29 (chart). The challenge as to claims 8 and 10 is denied for the reasons given above for claim 1. Claim 11, like claim 1, requires that the lid be “hingedly mounted” to the container. Petitioner relies on its anticipation and obviousness challenges over Zambano for this element in the Zambano/Nelson challenge. Pet. 29. The challenge as to claim 11, and its dependent claims 12–19, is denied for the reasons given above. H. Obviousness of Claim 8 over Zambano, McConnell ’291, and Nelson This challenge depends on the anticipation and obviousness challenges to claim 1 over Zambano. Pet. 31. This challenge is denied for the reasons given above for claim 1. I. Anticipation of Claims 1–7 by McConnell ’291 Figure 2 of McConnell is reproduced below: IPR2014-01130 Patent 8,312,887 B2 10 As shown in Figure 2, McConnell ’291 discloses a dishwasher rack with hinged upper lid 13, hinged lower lid 15, and intermediate rack 25 that, with the lower lid, forms a bottom space where nipples are placed. Petitioner argues that intermediate rack 25 corresponds to the recited interior rack. Pet. 32. Petitioner does not explain, however, where McConnell ’291 discloses that rack 25 is “hingedly mounted” to the container. Petitioner cites McConnell ’291, at 2:48–50, 2:67–3:3, and 3:58– 64, and quotes McConnell ’291, at 3:35–42 and 3:65–4:2 (Pet. 33), but Petitioner does not point out where any of this disclosure indicates that rack 25 is “hingedly mounted” to anything. Nor does Mr. Henley address this issue in the paragraphs of his declaration cited by Petitioner. See Ex. 1002 ¶¶ 77, 78, 152. For this reason, we are not persuaded of a reasonable likelihood that claim 1, or its dependent claims 2–7, are unpatentable for obviousness over McConnell ’291. J. Obviousness of Claim 9 over McConnell ’291 This challenge depends on the anticipation challenge to claim 1 over McConnell ’291. Pet. 37 (chart). This challenge is denied for the reasons given above for claim 1. K. Obviousness of Claims 8 and 10–19 over McConnell ’291 and Nelson This challenge depends on the anticipation challenge to claim 1 over McConnell ’291. Pet. 39–41 (chart). This challenge is denied for the reasons given above for claim 1. IPR2014-01130 Patent 8,312,887 B2 11 L. Obviousness of Claims 1–7 and 9 over McConnell ’258 McConnell ’258 discloses a dishwasher basket having an upper section that clips into a lower section. Figure 2 of McConnell ’258 is reproduced below, as annotated by Petitioner (Pet. 42): The annotated figure depicts a dishwasher basket having lid 12 hinged to upper compartment 11. The upper compartment is attachable to lower compartment 20 by clips 13a that snap-fit into tabs 25. Petitioner argues that the upper compartment corresponds to the claimed interior rack, and that the lower compartment corresponds to the claimed container. Pet. 42. Petitioner argues also that it would have been obvious to replace the clip-and-tab arrangement securing the upper and lower compartments with a hinge connection in order to simplify operation and to prevent complete separation of the upper and lower compartments. Id. at 44. This argument is unpersuasive because, even if the device were modified in the manner Petitioner proposes, the lid still would not be “hingedly mounted” to the container, as required by claim 1. As discussed above, “hingedly mounted” is properly construed to require that one hinged part swing about an axis in common with the other hinged part. Lid 12 hinges at the top of upper compartment 11, while lower compartment would IPR2014-01130 Patent 8,312,887 B2 12 hinge, if modified as Petitioner argues, at the bottom of the upper compartment. Petitioner has not explained how this arrangement results in a hinged mounting between the lid and the container. For this reason, we are not persuaded of a reasonable likelihood that claim 1, or its dependent claims 2–7 and 9, are unpatentable for obviousness over McConnell ’258. M. Obviousness of Claims 8 and 10–19 over McConnell ’258 and Nelson This challenge depends on the obviousness challenge to claim 1 over McConnell ’258. Pet. 50–52 (chart). This challenge is denied for the reasons given above for claim 1. N. Obviousness of Claims 1–7 and 9 over Prince Lionheart Petitioner asserts, and we assume without deciding, that the “Prince Lionheart” catalog was published by Prince Lionheart, Inc. in 1998. Pet. 52. Petitioner cites two products in the Prince Lionheart catalog: a nipple basket and a dishwasher basket, and argues that it would have been obvious to modify the lid of the dishwasher basket to incorporate the nipple basket. Id. at 53. Pictures of the two products are reproduced from page 4 of the Prince Lionheart catalog below: IPR2014-01130 Patent 8,312,887 B2 13 The photograph on the left shows the Prince Lionheart nipple basket, and the photograph on the right shows the Prince Lionheart dishwasher basket. Ex. 1009, 4. Petitioner does not argue that either basket is shown or described expressly as having a hinged lid. Instead, Petitioner relies on expert testimony of Mr. Henley, who states that “[o]ne of ordinary skill in the art would further appreciate that the . . . Nipple Basket further includes a hinge mechanism opposite the locking mechanism such that the upper and lower portions of the basket may be rotated with respect to one another.” Pet. 53 (citing Ex. 1002 ¶ 92). Mr. Henley also testifies that one of ordinary skill would appreciate that the dishwasher basket has a hinge. Ex. 1002 ¶ 94. Mr. Henley asserts that the hinge mechanisms are inherent in the Prince Lionheart disclosure and would be appreciated as such by one of ordinary skill. We are not persuaded that the Prince Lionheart catalog discloses baskets that necessarily have hinged lids, because we cannot discern in either picture evidence of a hinged lid, and because Mr. Henley has not explained the factual basis for his conclusion that the Prince Lionheart catalog would be appreciated as disclosing baskets that have hinged lids. We give his expert testimony in this regard little or no weight. See 37 C.F.R. § 42.65(a). In the absence of credible evidence that the cited art discloses hinge connections between its parts, Petitioner’s challenge fails. We are not persuaded of a reasonable likelihood that claim 1, or its dependent claims 2– 7, are unpatentable for obviousness over Prince Lionheart. IPR2014-01130 Patent 8,312,887 B2 14 O. Obviousness of Claims 8 and 10–19 over Prince Lionheart and Nelson This challenge depends on the obviousness challenge to claim 1 over Prince Lionheart. Pet. 58–60 (chart). This challenge is denied for the reasons given above for claim 1. III. CONCLUSION We deny institution of inter partes review because Petitioner has not demonstrated a reasonable likelihood that any of the challenged claims is unpatentable. IV. ORDER For the reasons given, it is ORDERED that the Petition challenging the patentability of claims 1– 19 of U.S. Patent No. 8,312,887 B2 is denied. IPR2014-01130 Patent 8,312,887 B2 15 For PETITIONER: Daniel Burnham NIXON PEABODY, LLP Timothy Johnson Robert Rosasco ENERGIZER PERSONAL CARE, LLC For PATENT OWNER: A. Justin Poplin LATHROP & GAGE LLP Robert Z. Evora MUNCHKIN, INC.

Playtex Products, LLC v. Munchkin, Inc.