Secondary Issues Get Quick Shrift in Airbed Patent Battle

by Dennis Crouch

Staff Worldwide Corp v. Intex Recreation Corp. (Fed. Cir 2023)

I used to be disillusioned to see the Federal Circuit’s no-opinion affirmance on this case — affirming the PTAB discovering that Staff Worldwide’s inflatable airbed invention was unpatentable as apparent.  US9211018. The case peaked my curiosity as a result of I’ve been engaged on a brief article specializing in what the courts time period “secondary issues” of obviousness, and the patentee raised substantial proof of business success.   Finally the PTAB sided with the patent challenger and and that willpower was affirmed on attraction in a R.36 no-opinion judgment.

TWC’s patent claims an “inflatable product,” similar to an air mattress, that has a built-in electrical pump.  Specifically, the electrical pump is constructed into and recessed inside the exterior wall of the mattress with only one aspect of the pump physique uncovered by means of the outside wall. The remainder of the pump physique is hidden contained in the inflatable physique and completely held in place inside the exterior wall of the inflatable physique. The recessed design retains the pump partially hidden and out of the way in which when not in use.

The important thing prior artwork references within the case are

• U.S. Patent No. 6,018,960 (1996) (“Parienti”), which discloses an air mattress having an externally-attached photo voltaic powered pump.
• U.S. Patent No. 2,493,067 (1945) (“Goldsmith”), which discloses bizarre inner-spring mattress having an connected fan used for temperature management (not inflation).  One embodiment contains “housing organized inside … mentioned mattress and carrying a blower and temperature altering means therein.

This product has been an enormous vendor through manufacturers similar to Intex, Bestway, Boyd, Airtek, Air Cloud, Air Consolation, AirBedz, Altimair, Pittman, and TexSport.  The patentee has sued various of us for infringement, and so they fought again with this Inter partes evaluation continuing.

The PTAB initially sided with the patentee, concluding that the claims had not been confirmed apparent. Nevertheless, on attraction, the Federal Circuit vacated and remanded.

The Board misapplied the obviousness customary, and misapprehended Intex’s argument, when it fixated on whether or not the prior artwork actually disclosed Intex’s principle of modifying Parienti solely barely by taking the pump connected to the skin of the mattress and recessing it partially inside the mattress. Intex’s argument concerning its proposed modification confirmed that Parienti was already near the challenged claims, and solely a slight change was wanted to fulfill the broadest affordable interpretation of “wholly or partially” recessing a pump. This exhibiting, along with Intex’s exhibiting that quite a few references for the reason that late 1800s illustrated prior artisans’ intuitive want to recess pumps to avoid wasting area, happy Intex’s burden [under KSR]. The Board erred in concluding on the contrary.

Intex (Fed. Cir. 2021).  Thus, in its 2021 choice the Federal Circuit concluded that Intex had happy its burden of proving the invention apparent. The one drawback although was that the PTAB/CAFed had not but thought of secondary indicia of non-obviousness supplied by the patentee.  Thus, remand was wanted for the PTAB to handle points it beforehand declined to achieve. Particularly, the PTAB had not addressed Staff Worldwide’s proof on goal indicia of non-obviousness.

On remand, the PTAB flipped its choice, discovering the claims apparent regardless of substantial gross sales and different secondary issues.  In its most up-to-date attraction, Staff Worldwide argued that the PTAB erred in its evaluation of the target proof of nonobviousness. Particularly, Staff Worldwide argued that the PTAB didn’t correctly weigh the proof offered concerning business success, failure of others, and business reward.

Concerning business success, the PTAB discovered that Staff Worldwide was entitled to solely “some, however not appreciable, weight in favor of non-obviousness” for the proof of gross sales of infringing merchandise, citing the influence of non-patented options on buyer demand.  Nevertheless, Staff Worldwide argued that the PTAB ignored proof that almost all of gross sales had been of merchandise admitted or proven to infringe, which constitutes overwhelming business success underneath Federal Circuit precedent. See Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1376 (Fed. Cir. 2011).

For failure of others, the PTAB concluded that Staff Worldwide’s proof was entitled to solely “some weight.” However Staff Worldwide argued that the PTAB improperly minimized rivals’ failed makes an attempt to design across the claims, opposite to Federal Circuit precedent discovering failure of others entitled to appreciable weight. See WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016).

Concerning business reward, the PTAB discovered Staff Worldwide’s proof was entitled to some, however not appreciable weight. Nevertheless, Staff Worldwide contended that the PTAB ignored related testimony praising the invention, which must be afforded appreciable weight underneath Federal Circuit regulation. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. 2016) (en banc).

In sum, Staff Worldwide argued that the PTAB didn’t correctly weigh the target proof of nonobviousness as required underneath controlling Federal Circuit precedent and that this proof outweighed the PTAB’s discovering of obviousness.

Sadly, on attraction the Federal Circuit didn’t take the time to work by means of these points however reasonably merely issued its R.36 Affirmance with out opinion.

Along with the final position of goal indicia, the attraction requested an essential query about burdens of proof: “Did the Board err by inappropriately making use of a regular of proof that required TWW to show the validity of its claims in mild of secondary issues when the burden of proof statutorily stays with Petitioner to show invalidity together with in mild of secondary issues?”