Takeaway: A proposed modification to a prior art reference does not have to be optimal.  

In its Final Written Decision, the Board found that all challenged claims (1, 2, 4-11, and 13-16) of the ’933 Patent are unpatentable, and denied Patent Owner’s Motion to Exclude. The ’933 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.

The Board began with claim construction, stating that the terms will be given their broadest reasonable interpretation in light of the specification. The Board adopted their constructions of four terms from the Institution Decision. The Board revisited its construction of “push-button trigger,” reviewing Patent Owner’s arguments and evidence. However, the Board ultimately declined to modify its prior construction.

The Board then turned to the grounds of unpatentability. The Board noted that Patent Owner did not present a persuasive argument that the prior art did not disclose the elements of the claims other than the “mechanically connected” trigger, “deflector plate,” “push-button trigger,” “vent seal,” and “vent chamber.” Therefore, the Board only addressed the disclosure of those elements.

The Board first reviewed whether claims 1, 2, and 4-7 are obvious in view of Albert ’748. Patent Owner argued that Albert ’748’s valve member is not “mechanically connected” to the movable member 38, as required by the claims. The Board found this argument unpersuasive, noting that Patent Owner mischaracterized Petitioner’s mapping of Albert ’748 to the claimed shutter, trigger, and vent seal. Regarding claim 7, Patent Owner argued that it requires “all – not just ‘most’ – of the vapor be expelled in the transverse direction.” The Board found this argument unpersuasive, citing the Board’s construction of “transverse” and finding that Albert ’748 discloses the claimed elements.

The Board then reviewed whether claims 15 and 16 are obvious in view of the combination of Nergard and Albert ’748. Patent Owner argued that Nergard fails to describe the recited “push-button trigger” or the “vent seal,” but the Board found this unpersuasive because Petitioner argued that these were disclosed in Albert ’748. Petitioner also argued that Nergard and Albert ’748 could not be combined to arrive at the disclosed invention because Petitioner did not carry its burden on the prima facie showing of obviousness, Petitioner failed to establish that a skilled artisan would have been motivated to combine the art, and a skilled artisan would have no reason to modify Nergard to include the lost-motion mechanism of Albert ’748. The Board was not persuaded by any of these arguments. The Board noted that the art was “closely related” to each other, and that Albert ’748 recognizes issues with the Nergard container and proposes an improvement on those containers. Further, the Board noted that the law does not require that the proposed modification be optimal.

Next, the Board discussed whether claims 8, 9, 13, and 14 are obvious in view of Albert ’799. Patent Owner argued that Albert ’799 does not describe a trigger “mechanically connected” to the “shutter and the vent seal.” The Board was persuaded otherwise.

Finally, the Board opined on whether claims 10 and 11 are obvious in view of Chaffin and Albert ’748. Patent Owner did not provide any argument that claim 10 remains patentable, therefore, the Board was persuaded by Petitioner’s arguments. Regarding claim 11, Patent Owner argued that Chaffin and Albert 48 fail to describe a “vent chamber between the vent seal and the vent aperture,” and that they fail to describe a trigger that extends “partially through the vent chamber.” The Board found that Patent Owner had mischaracterized Petitioner’s contentions, and that Patent Owner’s interpretation of “between” was not consistent with the specification.

Regarding Patent Owner’s Motion to Exclude, the Board found that it was moot because it sought to exclude evidence not considered or relied upon by the Board, and that it addresses issues more appropriate to determining the weight of the evidence rather than its admissibility.

Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00750

Paper 56: Final Written Decision

Dated: November 13, 2015

Patent 7,546,933 B2

Before: Josiah C. Cocks, Mitchell G. Weatherly, and James A. Worth

By: Weatherly

Related Matter: Ignite USA, LLC v. Pacific Market International, LLC, No. 14-cv-856 (N.D. Ill.)