Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Entered: February 17, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TEMPUR SEALY INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`SELECT COMFORT CORP.,
`Patent Owner.
`_______________
`
`Case IPR2014-01419
`Patent 5,904,172 C1
`_______________
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Entered: February 17, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TEMPUR SEALY INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`SELECT COMFORT CORP.,
`Patent Owner.
`_______________
`
`Case IPR2014-01419
`Patent 5,904,172 C1
`_______________
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-01419
`Patent 5,904,172 C1
`
`
`I.
`INTRODUCTION
` Petitioner, Tempur Sealy International, Inc., seeks review of claims 2,
`3, 6, 9, 12, 13, 16, and 20–25 of U.S. Patent No. 5,904,1721 (issued May 18,
`1999) (Ex. 1001, “the ’172 patent”). See Paper 1 (“Pet.”). Patent Owner,
`Select Comfort Corp., contends that Petitioner’s request should be denied.
`See Paper 6 (“Prelim. Resp.”). After considering the Petition and
`Preliminary Response, we determine that Petitioner has not established a
`reasonable likelihood of prevailing with respect to any of the challenged
`claims of the ’172 patent. See 35 U.S.C. § 314(a). Accordingly, we deny
`the Petition, and decline to institute inter partes review.
`
`A.
`
`Related Proceedings
`Petitioner states that Patent Owner has asserted infringement of the
`’172 patent against the Petitioner in the co-pending district court case:
`Select Comfort Corporation v. Tempur Sealy International, Inc. d/b/a/
`Tempur-Pedic (Civil Action No. 0: 14-cv-00245-JNE-JSM) (D. Minn.).2
`Pet. 2.
`
`
`
`
`
`1 See Ex Parte Reexamination Certificate, US 5,904,172 C1, issued Jan. 3,
`2014 (Ex. 1003); Certificate of Correction, May 18, 1999 (Ex. 1005).
`2 Served on Petitioner on Feb. 7, 2014.
`
`
`
`
`2
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`IPR2014-01419
`Patent 5,904,172 C1
`
`B.
`
`Asserted Grounds and Prior Art
`Petitioner asserts the following grounds of unpatentability:
`
`Claims
`challenged
`
`Statutory
`Basis
`
`References
`
`6, 16, 20, 21
`2, 3, 12, 13, and
`22–25
`9
`
`§ 103(a)
`
`Kery3 and Guthrie4
`
`§ 103(a)
`
`Kery, Moulton5, and Guthrie
`
`§ 102(b)
`
`Kery
`
`§ 103(a)
`
`Kery and Guthrie
`
`9
`
`C.
`
`The ’172 Patent
`The ’172 patent relates to an electric pump for use with an inflatable
`mattress. Ex. 1001, 1:4–5. Valve enclosure assembly 100 includes
`processor board 20, and is preferably incorporated into an air mattress
`system having at least one bladder (e.g., left or right bladder 122, 124)
`fluidly coupled to pump 112. Id. at 2:56–57; 3:60–64; 4:3–10; Figs. 2, 3.
`
`
`
`
`3 Ex. 1006, US Patent No. 3,784,994 (Jan. 15, 1974).
`4 Ex. 1008, US Patent No. 5,235,713 (Aug. 17, 1993).
`5 Ex. 1007, US Patent No. 4,527,298 (July 9, 1985).
`
`
`
`3
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`IPR2014-01419
`Patent 5,904,172 C1
`
`
`Figure 3 of the ’172 patent is reproduced below:
`
`
`Figure 3 is a perspective view of the claimed valve assembly. Ex. 1001,
`3:31–32.
`Assembly 100 includes: an enclosure, at least one valve, and a
`pressure monitoring means. The enclosure (air chamber 133) is defined by
`enclosure 130 and rear cover 132. Id. at 4:17–20; Figs. 3, 10, 11. At least
`one valve (218) is disposed within assembly 100. Id. at 5:59–60; Figs. 3, 4.
`Valve member 226 of valve 218 is biased to the closed position. Id. at 2:37–
`39; 6:1–8; Fig. 7. When valve member 226 is unseated (open) air passes
`from the interior of valve assembly 100 through axial air passageway 222 to
`the respective bladder. Id. at 7:26–28; Fig. 7 (closed); Fig. 8 (open).
`Pressure monitoring is accomplished by two different configurations.
`In a first embodiment, pressure monitoring port 146 is fluidly coupled to the
`interior of assembly 100 and includes an outwardly directed portion
`designed to receive a small tube for conveying pressure to a pressure sensor.
`Id. at 4:30–36; Fig. 3. In an alternative embodiment, pressure monitoring is
`
`
`
`4
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`IPR2014-01419
`Patent 5,904,172 C1
`
`accomplished via a pressure monitor tab 2406 on valve body 220 of two of
`valves 218. Id. at 6:22–24; Fig. 9.
`Of the challenged claims, claims 2, 6, 9, 12, 16, and 20 are
`independent. Claim 16 is illustrative and is reproduced below:
`16. An improved valve enclosure assembly for use with an
`air inflatable mattress having at least one air bladder inflated by
`compressed air, a pump fluidly coupled to the at least one air
`bladder for providing compressed air thereto, and a processor
`for providing commands to the improved valve enclosure
`assembly during an inflate/deflate cycle, the improved valve
`enclosure assembly being fluidly coupled intermediate the
`pump and the at least one air bladder for controlling the
`inflation of the at least one air bladder, comprising:
`an enclosure defining a substantially fluidly sealed air
`chamber and having at least one air inlet to the air chamber
`being fluidly coupled to the pump, the enclosure being formed
`of an enclosure portion and a rear cover portion, a flexible seal
`being compressively interposed between the enclosure portion
`and a rear cover portion to effect a substantially fluid tight seal
`therebetween;
`at least one valve operably coupled to the enclosure being
`in selective fluid communication with the air chamber and
`being in fluid communication with the at least one air bladder
`for selectively fluidly coupling the air chamber to at least one
`air bladder; and
`
`
`6 The ’172 patent also refers to the expanded diameter portion of valve body
`220 as element 240. Ex. 1001, 6:17–21, 36˗37; Figs. 4, 6, 7, 9.
`
`
`
`5
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`IPR2014-01419
`Patent 5,904,172 C1
`
`
`pressure monitor means being operably coupled to the
`processor and being in fluid communication with the at least
`one valve for monitoring the pressure in the at least one
`bladder.
`Claims 37 and 22–25 depend from independent claim 2. Claim 13
`depends from independent claim 12.8 Claim 21 depends from independent
`claim 20.
`
`
` ANALYSIS
`II.
`Each ground asserted in the Petition is deficient for at least the reasons
`
`given below.
`
`To begin, none of the four grounds of unpatentability asserted by
`Petitioner includes any citation to specific portions of the references
`themselves.9 Rather, the Petition cites only to the Declaration of
`Mr. Bernard Kuchel (Ex. 1011). See e.g., Pet. 12 (citing Ex. 1001 ¶¶ 50–
`62,10 64, and 71). Citation in the Declaration does not correct this deficiency
`because the requirement applies to the petition itself. See 35 U.S.C.
`§§ 312(a)(3), (4); 37 C.F.R. §§ 42.104(b)(4), (5); 37 C.F.R. § 42.22(a)(2)
`(requiring a petition to include a detailed explanation of the significance of
`the evidence); see generally Liberty Mutual Ins. Co. v. Progressive Casualty
`Ins. Co., CBM2012-00003, slip op. at 10, 14 (P.T.A.B. Oct. 25, 2012)
`
`
`7 See Ex. 1005 (correcting the ’172 patent so that claim 3 depends from
`claim 2).
`8 See Ex. 1005 (correcting the ’172 patent so that claim 13 depends from
`claim 12).
`9 Kery, Ex. 1006; Guthrie, Ex. 1008; and Moulton, Ex. 1007.
`10 The Petition cites to sections IX(A)–(C), which corresponds to ¶¶ 50–62.
`
`
`
`6
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`IPR2014-01419
`Patent 5,904,172 C1
`
`(Paper 8) (the Board “will address only the basis, rationale, and reasoning
`put forth by the Petitioner in the petition”).
`
`Further, the obviousness analysis of each of the grounds of
`unpatentability put forth in the Petition is substantively deficient in several
`respects. Petitioner’s alleged ground of unpatentability asserting that claim
`16 is obvious over Kery and Guthrie is illustrative. See Pet. 12–15. First,
`the Petition does not state explicitly the differences between Kery and the
`subject matter of claim 16. See Pet. 12–15; KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007) (citing with approval the four part obviousness test
`of Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966), that includes
`determining the differences between the claims at issue and the prior art).
`Second, the Petition does not explain cogently how the construed claims are
`unpatentable. 37 C.F.R. § 42.104(b)(4). For instance, the Petition states that
`the system of Kery and Guthrie would include a microprocessor without
`identifying which reference is relied upon as disclosing a processor as
`claimed. Pet. 14 (citing Ex. 1011 ¶ 69). Third, the Petition does not
`adequately articulate a reason for combining Kery and Guthrie. Specifically,
`the Petition states, without a cogent supporting explanation, that a person of
`ordinary skill in the art would have found it “obvious to automate Kery in
`view of Guthrie.” Pet. 12.
`
`We recognize that the Kuchel Declaration (Ex. 1011) provides
`additional information regarding each of these shortcomings; however, this
`information is not discussed adequately in the Petition and may not be
`incorporated by reference. See 37 C.F.R. § 42.6(a)(3) (prohibiting
`incorporation by reference); see generally Cisco Systems, Inc., v. C-Cation
`Techs., LLC, Case IPR2014-00454, slip op. at 9–10 (PTAB Aug. 29, 2014)
`
`
`
`7
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`IPR2014-01419
`Patent 5,904,172 C1
`
`(Paper 12) (expanded panel decision explaining that arguments not made in
`the Petition will not be considered); Fidelity National Information Services,
`Inc., v. Datatreasury Corp., Case IPR2014-00489, slip op. at 9 (PTAB Aug.
`13, 2014) (Paper 9) (“Under our rules, the petition must contain a ‘full
`statement of the reasons for the relief requested, including a detailed
`explanation of the significance of the evidence . . . .’ 37 C.F.R.
`§ 42.22(a)(2). We, therefore, decline to consider information presented in a
`supporting declaration, but not discussed sufficiently in a petition”).
`
`
`IV. CONCLUSION
`Based on the arguments and evidence presented in the Petition, we
`conclude that Petitioner has not demonstrated a reasonable likelihood it will
`prevail in showing claims 2, 3, 6, 9, 12, 13, 16, and 20–25 of the ’172 Patent
`are unpatentable.
`
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that the petition is denied; and
`FURTHER ORDERED that no inter partes review is instituted.
`
`
`
`
`
`
`
`
`
`8
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`
`
`IPR2014-01419
`Patent 5,904,172 C1
`
`PETITIONER:
`Heath Briggs
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`
`
`
`PATENT OWNER:
`Barbara Wrigley
`BWrigley@oppenheimer.com
`
`
`
`
`
`9
`
`
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