UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`
`MAZE INNOVATIONS, INC.
`Petitioner
`
`v.
`
`THE GREEN PET SHOP ENTERPRISES, LLC
`Patent Owner
`
`______________________
`
`CASE IPR: IPR2016-00117
`U.S. PATENT NO. 8,720,218
`______________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`

`
`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction ...................................................................................................... 1
`I.
`II. Mandatory Notices Pursuant to 37 C.F.R. § 42.8 ............................................ 3
`A.
`Real Party In Interest (37 C.F.R. § 42.8(b)(1)) ..................................... 3
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 3
`C.
`Notice Of Lead And Backup Counsel (37 C.F.R. § 42.8(b)(3)) ........... 3
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 4
`Payment of Fees ............................................................................................... 4
`III.
`IV. Standing ........................................................................................................... 4
`V.
`Statement Of Precise Relief Requested ........................................................... 4
`VI. Background ...................................................................................................... 5
`A.
`Introduction to Phase Change Materials ............................................... 5
`B.
`The Alleged Improvement in the ‘218 Patent ....................................... 9
`VII. Full Statement Of The Reasons For The Relief Requested ........................... 13
`A.
`The Relied-On Art Has Not Been Previously Considered .................. 13
`1.
`Fan (Ex. 1003) Was Not Considered During Examination ...... 13
`2.
`Xiong
`(Ex. 1004) Was Not Considered During
`Examination .............................................................................. 15
`Person of Ordinary Skill in The Art .................................................... 16
`Claim Construction ............................................................................. 17
`1.
`“pressure” (Claims 15, 16, 18, and 19) ..................................... 17
`2.
`“pressure activated recharging cooling composition”
`(Claims 15, 16, 18, and 19) ....................................................... 19
`“endothermically
`activated
`and
`endothermically
`deactivated” (Claims 15, 16, 18, and 19) .................................. 20
`“channel” (Claims 15, 16, 18, and 19) ...................................... 21
`4.
`Proposed Grounds of Rejection........................................................... 23
`
`B.
`C.
`
`D.
`
`3.
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`i
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`1.
`
`2.
`
`Ground 1: Claims 15, 16, 18, And 19 Are Unpatentable
`Under 35 U.S.C. § 102(b) As Anticipated By Fan. .................. 23
`a.
`Claim 15 .......................................................................... 26
`b.
`Claim 16 .......................................................................... 34
`c.
`Claims 18 and 19 ............................................................ 37
`Ground 2: Claims 15, 16, 18, and 19 Are Unpatentable
`Under 35 U.S.C. § 103 As Obvious Over Fan. ......................... 38
`a.
`Claim 15 .......................................................................... 39
`b.
`Claim 16 .......................................................................... 45
`c.
`Claims 18 and 19 ............................................................ 48
`Ground 3: Claims 15 And 16 Are Unpatentable Under
`35 U.S.C. § 103 As Anticipated By Xiong. .............................. 49
`a.
`Claim 15 .......................................................................... 49
`b.
`Claim 16 .......................................................................... 55
`Ground 4: Claims 15, 16, 18, And 19 Are Unpatentable
`Under 35 U.S.C. § 103 As Obvious Over Xiong in view
`of Fan. ....................................................................................... 57
`a.
`Claims 15 and 16 ............................................................ 58
`b.
`Claims 18 and 19 ............................................................ 59
`VIII. Conclusion ..................................................................................................... 60
`
`3.
`
`4.
`
`ii
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
`
`LIST OF EXHIBITS
`
`Ex. 1001: U.S. Patent No. 8,720,218 (“‘218 Patent”)
`
`Ex. 1002: Prosecution History for the ‘218 Patent
`
`Ex. 1003: Chinese Publication No. CN 101305877 B, English Language
`
`translation thereof, and translation declaration under 35 U.S.C. § 1746
`
`in satisfaction of 37 C.F.R. § 42.63(b) (“Fan”)
`
`Ex. 1004: U.S. Patent No. 7,324,340 (“Xiong”)
`
`Ex. 1005: U.S. Patent No. 4,064,835 (“Rabenbauer”)
`
`Ex. 1006: U.S. Patent No. 7,036,162 (“Gatten”)
`
`Ex. 1007: U.S. Patent No. 6,482,332 (“Malach”)
`
`Ex. 1008: Prosecution History for U.S. Patent Application No. 14/226,393 (“‘393
`
`Application”), current as of October 30, 2015
`
`Ex. 1009: Maze Innovations, Inc.’s Initial Non-Infringement and Invalidity
`
`Contentions with Exhibits
`
`(“Non-Infringement and
`
`Invalidity
`
`Contentions”)
`
`Ex. 1010: The Green Pet Shop Enterprises, LLC’s Initial Responses to Invalidity
`
`Contentions for U.S. Patent No. 8,720,218, with Exhibit
`
`Ex. 1011: Green Pet Shop Enterprises, LLC’s Initial Infringement Contentions,
`
`with Exhibits (“Infringement Contentions”)
`
`Ex. 1012: Excerpts from Webster’s Third New International Dictionary of the
`
`iii
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`English Language Unabridged (2002)
`
`Ex. 1013: Excerpt from Shakhashiri, Bassam Z., Chemical Demonstrations: A
`
`Handbook for Teachers of Chemistry (1st ed. Vol. 1 Madison: U of
`
`Wisconsin 1983)
`
`Ex. 1014: Excerpt from Ebbing, Darrell D., and Steven D. Gammon, General
`
`Chemistry Enhanced Edition (9th ed. Belmont: Brooks/Cole, 2009)
`
`iv
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`I.
`
`INTRODUCTION
`
`Maze Innovations, Inc. d/b/a Hugs Pet Products (“Petitioner”) requests Inter
`
`Partes Review (“IPR”) of claims 15, 16, 18, and 19 (“challenged claims”) of U.S.
`
`Patent No. 8,720,218 (“‘218 Patent”) (Ex. 1001).
`
`The ‘218 Patent discloses and claims so-called cooling platforms (or pads),
`
`which are structures designed to assist with cooling of an object that is warmer
`
`than and in contact with the pad. (See generally Ex. 1001 at Background).
`
`Cooling platforms were ubiquitous long before the ‘218 Patent. For
`
`example, the ‘218 Patent acknowledges that then-existing “beds are known to have
`
`cooling mechanisms” and some are “available which use alternative or ‘non-
`
`electric’ means to cool [an object].” (Ex. 1001 at 1:17-25). Patent literature that
`
`published more than 30 years before the filing of the ‘218 Patent describes “air-
`
`conditioned pet bed[s]…with re-usable, pre-frozen, chemical ice-packs…” (Ex.
`
`1005 at Abstract). Other patent literature predating the ‘218 Patent by almost a
`
`decade describes cooling mattresses having a number of pads including a liner and
`
`a cavity filled with a cooling medium, such that the cooling medium cools the
`
`object sitting on the mattress. (Ex. 1006 at Abstract). Even a cursory review of the
`
`patent literature reveals that cooling pads to help cool objects contacting or resting
`
`on the pad were not new at the time the ‘218 Patent was filed.
`
`Recognizing this, the ‘218 Patent professes to improve over known cooling
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`pad products. (See, e.g., Ex. 1001 at 1:27-28). The purported novelty of the ‘218
`
`Patent lies in the claims’ requirement that a cooling composition within a cooling
`
`pad is “endothermically activated and endothermically deactivated upon the
`
`application and release of pressure, respectively.” (Ex. 1001 at cls. 15, 16, 18, and
`
`19; see also Ex. 1002 at 153-155 (adding quoted language to obtain allowance)).
`
`However, when read in light of the specification, the challenged claims of the ‘218
`
`Patent are nothing more than a straightforward recitation of conventional, well-
`
`known cooling platform technology. The challenged claims, when given their
`
`broadest reasonable interpretation, require nothing more than a cooling platform
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`for cooling an object that includes a temperature regulation layer having an angled
`
`segment and channels and a composition that transfers heat from a warmer object
`
`what in contact with the object. This type of cooling mat, which relies on a heat
`
`sinking technique to transfer heat from a warmer object (contacting the cooling
`
`mat) to a cooler object (the mat itself), was well-known in the art prior to the filing
`
`of the ‘218 Patent. Moreover, the identical chemical composition disclosed and
`
`claimed in the ‘218 Patent—allegedly the point of novelty—was described as a
`
`suitable chemical composition in prior art cooling mat disclosures.
`
`As described in more detail below, the Board should institute IPR and cancel
`
`claims 15, 16, 18, and 19 of the ‘218 Patent.
`
`2
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`A. REAL PARTY IN INTEREST (37 C.F.R. § 42.8(B)(1))
`
`Petitioner Maze Innovations, Inc. (d/b/a Hugs Pet Products), a Missouri
`
`corporation with a principal place of business at 4059 State Road A, Montreal,
`
`MO, 65591, is the real party in interest.
`
`B. RELATED MATTERS (37 C.F.R. § 42.8(B)(2))
`
`The ‘218 Patent is being asserted against Petitioner in the case Green Pet
`
`Shop Enterprises, LLC v. Maze Innovations, Inc. in the Northern District of Illinois
`
`(Case No. 15-CV-01138). Petitioner is unaware that the ‘218 Patent is currently
`
`being asserted or has ever been asserted in the past in any other case.
`
`Currently-pending U.S. Patent Application No. 14/226,393
`
`(“‘393
`
`Application”) was filed on March 26, 2014 as a continuation of the ‘218 Patent.
`
`Currently-pending U.S. Patent Application No. 14/695,909 was filed on April 24,
`
`2015 as a continuation of the ‘393 Application.
`
`Petitioner is unaware of any other judicial or administrative matters that
`
`would affect or be affected by a decision in this proceeding.
`
`C. NOTICE OF LEAD AND BACKUP COUNSEL (37 C.F.R. § 42.8(B)(3))
`
`Lead counsel is Jason A. Engel (Reg. No. 51,654), and backup counsel is
`
`Benjamin E. Weed (Reg. No. 65,939).
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`D.
`
`SERVICE INFORMATION (37 C.F.R. § 42.8(B)(4))
`
`Papers concerning this matter should be served on Jason Engel and
`
`Benjamin Weed at K&L Gates LLP, 70 W. Madison St., Suite 3100, Chicago, IL
`
`60602 (Tel. 312-372-1121; Fax 312-827-8000). Petitioner hereby consents to
`
`electronic service at the following electronic mail addresses:
`
`Jason.Engel.PTAB@klgates.com
`
`Benjamin.Weed.PTAB@klgates.com
`
`III. PAYMENT OF FEES
`
`The required fee for this Petition has been paid from Deposit Account No.
`
`02-1818, and the Office is authorized to deduct any additional fees due in
`
`association with this Petition.
`
`IV. STANDING
`
`The Petition is being filed within one year of Petitioner being served with a
`
`complaint for infringement. Petitioner has not filed a civil action challenging the
`
`validity of any claims of the ‘218 Patent. Petitioner certifies that the ‘218 Patent,
`
`issued on May 13, 2014, is available for IPR and that Petitioner is not barred from
`
`requesting IPR of the ‘218 Patent.
`
`V.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests review and cancellation of claims 15, 16, 18, and 19 of
`
`the ‘218 Patent on the following statutory grounds (i.e., 35 U.S.C. §§ 102 or 103)
`
`4
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`based on the following prior art references, identified by exhibit number:
`
`Ground 1: Cancellation of claims 15, 16, 18, and 19 under 35 U.S.C. §
`
`102(b) as anticipated by Chinese Patent Publication No. CN 101305877 B (“Fan”)
`
`(Ex. 1003).
`
`Ground 2: Cancellation of claims 15, 16, 18, and 19 under 35 U.S.C. § 103
`
`as obvious over Fan (Ex. 1003).
`
`Ground 3: Cancellation of claims 15 and 16 under 35 U.S.C. § 102(b) as
`
`anticipated by U.S. Patent No. 7,324,340 (“Xiong”) (Ex. 1004).
`
`Ground 4: Cancellation of claims 15, 16, 18, and 19 under 35 U.S.C. § 103
`
`as obvious over Xiong (Ex. 1004) in view of Fan (Ex. 1003).
`
`VI. BACKGROUND
`
`A.
`
`INTRODUCTION TO PHASE CHANGE MATERIALS
`
`Phase Change Materials (“PCMs”) are an example of “rechargeable”
`
`compositions. (See, e.g., Ex. 1004 at 2:56; see generally id. at 2:40-56). While
`
`PCMs are not specifically described in the ‘218 Patent, they were nonetheless well-
`
`known in the art prior to the ‘218 Patent, (See, e.g., Ex. 1004; Ex. 1006; Ex. 1007).
`
`PCMs are “chemical compounds that possess the physical property of
`
`changing between solid phase and liquid phase at a desirable temperature range.”
`
`(Ex. 1004 at 2:41-44). During “the process of a phase change, either melting or
`
`solidifying, the material respectively absorbs or releases a large amount of per-
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`mass thermal energy, or ‘heat of fusion’.” (Ex. 1004 at 2:47-50). This material
`
`property of PCMs “can be utilized to store away excessive heat produced by [an
`
`object] when the PCM turns into liquid, and slowly release the heat when the []
`
`PCM solidifies again.” (Ex. 1004 at 2:52-55). This process of absorbing and
`
`releasing heat (and the resulting phase changes) “can be repeated as desired.” (Ex.
`
`1004 at 2:56). The storage of heat from another object is an endothermic action,
`
`and the release of heat is an exothermic action. (Ex. 1012 at 5-8). Particular
`
`PCMs with particular chemical compositions can be selected to solidify (e.g.,
`
`freeze) and liquefy (i.e., melt) at various temperatures as required by a particular
`
`application (e.g., temperatures from +40° C to below -30° C or 104°F to below -
`
`22°F). (Ex. 1007 at Abstract, 4:14).
`
`PCMs “with high freezing temperatures have the advantage of being
`
`rechargeable in commonly encountered ambient temperatures.” (Ex. 1007 at 6:48-
`
`50). Such a PCM might be useful in a cooling mat environment at room
`
`temperature, meaning it has a solid/liquid phase change temperature of 75°F. (See,
`
`e.g., Ex. 1007 at 6:48-50). This example PCM would freeze (i.e., become a solid)
`
`when its temperature goes below 75°F and would melt (i.e., become a liquid) when
`
`its temperature exceeds 75°F. Such materials are useful inside cooling mats
`
`because they are solids at typical room temperature (i.e., about 70°F), and become
`
`liquids when placed into contact with an object hotter than room temperature, such
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`as the body of a human or an animal.
`
`A hypothetical scenario involving this exemplary PCM can be envisioned
`
`where the object sitting on the cooling platform is a dog, whose body temperature
`
`is typically about 102.5°F, which is above typical room temperature of about 70°F
`
`(i.e., ambient temperature). A cooling platform in temperature equilibrium with
`
`the 70°F room temperature would contain the PCM in its solid phase, since
`
`ambient temperature (and thus the temperature of the PCM) is below the 75°F
`
`melting point of the PCM. When the dog contacts the cooling platform, heat from
`
`the dog’s body is transferred into the PCM via conduction. (See, e.g., Ex. 1004 at
`
`Abstract, 2:47-50). As the PCM absorbs heat from the dog, the temperature of the
`
`PCM increases until it exceeds the phase change temperature of 75°F. (Ex. 1004 at
`
`2:52-55). At that point, the PCM “melts” or undergoes a phase change from a
`
`solid to a liquid. (Id.). The cooling platform continues to absorb thermal energy
`
`until its temperature is equal to the dog’s body temperature, at which point thermal
`
`equilibrium is achieved. If the dog moves off the mat while the PCM is a liquid
`
`(meaning the cooling platform has a temperature above 75°F), the ambient air is at
`
`a lower temperature than the cooling platform. Through conduction, the heat from
`
`the PCM is absorbed into the ambient air, and the temperature of the PCM lowers
`
`to equilibrium at the 70°F ambient temperature. When the PCM crosses the 75°F
`
`phase change or “freezing” point, it changes from a liquid to a solid. (Id.). In this
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`scenario, it could be said that the PCM “recharges” by transferring heat to the
`
`ambient air and re-solidifying when its temperature crosses the phase change
`
`temperature. The process can then be repeated as described above when the dog
`
`subsequently contacts the cooling platform.1
`
`PCMs are not described anywhere in the ‘218 Patent. (See generally Ex.
`
`1001). Despite this, the use of PCMs in a “rechargeable” cooling platform was
`
`well-known prior to the ‘218 Patent. For example, Xiong discloses a cooling pad
`
`that “contains a phase-changing compound…to effectively transfer heat away from
`
`the [object] by conduction.” (Ex. 1004 at Abstract). U.S. Patent No. 7,036,162
`
`(“Gatten”) discloses that its cooling platform preferably uses a phase change
`
`material (PCM) for the cooling medium. (Ex. 1006 at 1:60-63 and 2:57-60).
`
`PCMs having a freezing temperature in a range applicable to a preferred
`
`embodiment of the ‘218 Patent (i.e., in pet beds or mats) were disclosed in U.S.
`
`Patent No. 6,482,332 (“Malach”). (See Ex. 1007 at 8:13-14, 8:20-28, 11:20-21).2
`
`
`
`1
`
`A conventional water bed works according to the same heat transfer
`
`principals, although because the freezing point of water is lower than standard
`
`room temperature, no phase change occurs when a person lies on the water bed.
`
`2
`
`Gatten (Ex. 1006) incorporates Malach (Ex. 1007) by reference and notes
`
`that Malach discloses an example of a material that can be used as a “cooling
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`Malach discloses a phase change material that would be favorable for use in a
`
`cooling platform because it “changes phase [] between 15 and 20° C” (i.e.,
`
`between 59°F and 68°F). (Ex. 1007 at 4:7-8). Malach also discloses several other
`
`suitable PCMs that could be used in cooling bed applications. (Ex. 1007 at 8:9-
`
`29). These exemplary PCMs include butanediol isomers, such as the 1,4-
`
`butanediol isomer, which has a melting point of approximately 20°C (i.e., 68°F),
`
`and polyethylene glycols, such as PEG 600, which has a melting point between 20
`
`and 25°C (i.e., between 68°F and 77°F). (Ex. 1007 at 8:13-14, 8:25).
`
`If Patent Owner The Green Pet Shop Enterprises, LLC (“PO”) argues that
`
`the challenged claims’ recitation of rechargeable compositions implies the use of
`
`PCMs, PCMs were well known for use in cooling mats long before the ‘218 Patent
`
`was filed. Any argument that the challenged claims are patentable based on an
`
`alleged recitation of a PCM is meritless both because the challenged claims cannot
`
`cover technology not described in the ‘218 Patent and because the prior art is
`
`replete with discussions PCMs used in cooling mat applications.
`
`B.
`
`THE ALLEGED IMPROVEMENT IN THE ‘218 PATENT
`
`The ‘218 Patent discloses a cooling platform for cooling an object including
`
`“a temperature regulation layer 110 (illustrated in FIG. 2), a support layer 140
`
`
`
`medium 18” in an “interior cavity 16” of a cooling pad. (Ex. 1006 at 2:57-65).
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`(illustrated in FIG. 3), and a channeled covering layer 150.” (Id. at 2:14-16).
`
`The alleged invention of the ‘218 Patent lies solely in the composition
`
`within the cooling mat. Specifically, the ‘218 Patent claims “a pressure activated
`
`recharging cooling composition [which
`
`is] endothermically activated and
`
`endothermically deactivated upon the application and release of pressure…” (Id.
`
`at 5:53-57, 6:22-26, 6:51-55, 7:3-7, 7:19-23, 7:34-38, 7:49-53, 8:11-15, 8:29-33,
`
`and 8:47-51). This limitation was added, by Examiner’s Amendment, to overcome
`
`the prior art of record during examination. (Ex. 1002 at 153-155). Despite the title
`
`of the ‘218 Patent being “Pressure Activated Recharging Cooling Platforms” (also
`
`added by amended during prosecution, see Ex. 1002 at 98), the sole discussion of
`
`pressure-activated compositions is the following paragraph:
`
`In another embodiment, the composition 110A can be activated by
`pressure, wherein the pressure of a[n] object sitting on the cooling
`platform 100 activates
`the composition 110A,
`triggering an
`endothermic process and subsequent cooling. Upon the release of that
`pressure, the composition 110A undergoes a subsequent recharge,
`essentially the reverse of the initial reaction. The above is consistent
`with Le Chatelier’s principle, in that, the reaction reverses upon the
`application or absence of pressure. In
`this embodiment,
`the
`composition 110A is comprised of: thirty percent carboxmethyl
`cellulose; twenty percent water; thirty-five percent polyacrylamide;
`and at least fifteen percent alginic acid. The aforementioned
`composition 110A also provides a cooling effect for an increased
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`duration over other known compositions.
`
`(Ex. 1001 at 3:17-30). The sole example of a chemical composition that can
`
`provide the claimed “pressure activated recharging cooling composition” is a
`
`composition including water and polyacrylamide. (Id. at 3:25-28). The purported
`
`point of novelty of the ‘218 Patent, if supported by the specification of the ‘218
`
`Patent, involves the inclusion of a composition of water and polyacrylamide in a
`
`cooling mat. Providing such a mixture necessarily achieves the claimed pressure
`
`activated recharging cooling composition.
`
`Upon closer scrutiny, it is clear that the ‘218 Patent’s purported point of
`
`novelty is not actually a patentable distinction over the prior art. On the one hand,
`
`the exact chemical composition described and claimed in the ‘218 Patent was
`
`known for use in cooling mats long before the ‘218 Patent was filed. On the other
`
`hand, this alleged point of novelty, which was added to the challenged claims
`
`during prosecution in an Examiner’s Amendment (Ex. 1002 at 153-155), recites a
`
`limitation that is a physical impossibility. There is simply no composition
`
`described in the ‘218 Patent that undergoes an endothermic reaction upon the
`
`application of pressure and “recharges” or reverses, resulting in an exothermic
`
`reaction, upon the release of that pressure. The only composition described in the
`
`‘218 Patent that can be activated to undergo an endothermic reaction is that of
`
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`ammonium nitrate and distilled water. (Ex. 1001 at 3:13-16).3 However, the
`
`endothermic reaction involved with this composition is a chemical reaction
`
`activated by the addition of water, not by the application of pressure. When the
`
`components of this composition are mixed, an irreversible endothermic reaction
`
`occurs; once the water mixes with the ammonium nitrate and the endothermic
`
`reaction takes place, the water cannot be separated from the ammonium nitrate and
`
`the composition cannot be “recharged.”
`
`Under the only reasonable interpretation of the challenged claims, the prior
`
`art clearly discloses each recited feature by disclosing the exact chemical
`
`composition disclosed as satisfying the claimed composition. Any construction
`
`that actually requires a pressure-activated, rechargeable, endothermic reaction—
`
`which is unquestionably not enabled—is unreasonable in light of the disclosure of
`
`the ‘218 Patent, and is thus incorrect.
`
`
`
`3
`
`Ammonium nitrate and water are used in “instant cold packs” that rely on
`
`two separate bags or bladders (one bladder containing water and a second bladder,
`
`within the first bladder, containing ammonium nitrate). When the inner bladder is
`
`broken, the water and the ammonium nitrate mix and an irreversible endothermic
`
`chemical reaction occurs that absorbs heat from the surroundings, quickly lowering
`
`the pack’s temperature. (See Ex. 1013 at 8-9; Ex. 1014 at 488).
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`VII. FULL STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
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`A successful IPR petition must demonstrate a reasonable likelihood that the
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`Petitioner will prevail with respect to at least one claim. 35 U.S.C. § 314(a). This
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`Petition is reasonably likely to prevail with respect to at least one challenged claim
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`because Fan (Ex. 1003) and Xiong (Ex. 1004) each disclose or render obvious the
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`challenged claims of the ‘218 Patent either alone or in combination. Before the
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`time of the alleged invention, it was well-known to form cooling platforms for
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`cooling objects by providing angled segments with channels as claimed in the ‘218
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`Patent, and to fill the cooling platforms with a cooling composition (either a PCM
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`or a non-PCM) that acts as a heat sink to transfer heat from an object on the
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`cooling platform to the composition. Under the broadest reasonable interpretation,
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`this is all that is required by the challenged claims. The prior art relied on herein
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`evidences such knowledge, and renders challenged claims 15, 16, 18, and 19 of the
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`‘218 Patent unpatentable according to the presented Grounds.
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`A. THE RELIED-ON ART HAS NOT BEEN PREVIOUSLY CONSIDERED
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`Institution is warranted under 35 U.S.C. § 325(d) because this Petition relies
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`on new art not considered during examination of the ‘218 Patent.
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`1.
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`Fan (Ex. 1003) Was Not Considered During Examination
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`The Petition relies on Fan (Ex. 1003), which was not considered during
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`examination of the ‘218 Patent, and which discloses, for use in a cooling platform,
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`the same chemical composition described and claimed in the ‘218 Patent as an
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`example of a “pressure activated recharging cooling composition.”
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` The
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`unconsidered Fan reference addresses the Examiner’s sole basis for patentability
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`during examination, and thus renders the challenged claims unpatentable.
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`PO may attempt to avoid Fan’s disclosure of the same cooling composition
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`described and claimed in the ‘218 Patent by arguing that Fan was considered
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`during the prosecution of the ‘393 Application (a continuation of the ‘218 Patent),
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`which received a notice of allowance on October 14, 2015. (See Ex. 1008 at 136-
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`137 (initialed Information Disclosure Statement)). PO, however, deprived the
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`Examiner of key information that would have altered examination of the ‘393
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`Application. First, PO failed to inform the Examiner that the ‘218 Patent has been
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`in litigation since February 5, 2015 and is the subject of a counterclaim for
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`invalidity. Second, PO failed to provide the Examiner with copies of the Chinese
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`language versions of Fan, much less the certified translations of Fan that Petitioner
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`produced to PO on June 24, 2015 as part of its Non-Infringement and Invalidity
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`Contentions in the co-pending district court proceeding. (See Ex. 1009). Rather,
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`PO referenced U.S. patent family documents that are not prior art under 35 U.S.C.
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`§ 102(b). Third, and perhaps most important, PO failed to provide the Examiner
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`with Petitioner’s district court Non-Infringement and Invalidity Contentions, which
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`contain a detailed analysis of how Fan (among other references) anticipates and
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`renders obvious the claims of the ‘218 Patent. (See Ex. 1009).
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`If PO had provided this necessary information to the Examiner, including an
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`indication that a competitor accused of infringing the parent ‘218 Patent has
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`asserted in litigation that the ‘218 Patent is invalid over Fan, the Examiner would
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`have conducted a more detailed review of the pending claims in view of Fan. As it
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`stands, however, the Examiner simply relied on his previous examination of the
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`‘218 Patent by issuing a double-patenting rejection over the claims of the ‘218
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`Patent. (See Ex. 1008 at 70-75).
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`Since Fan was neither considered during original examination nor
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`meaningfully considered during examination of the ‘393 Application, it is proper
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`to institute IPR of the ‘218 Patent on the basis of the grounds below.
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`2.
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`Xiong (Ex. 1004) Was Not Considered During Examination
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`IPR should also be instituted because this Petition relies on Xiong (Ex.
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`1004). Xiong was neither considered during examination of the ‘218 Patent nor
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`was it considered during examination of the ‘393 Application. It too was included
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`in Petitioner’s Non-Infringement and Invalidity Contentions in co-pending district
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`court litigation. (Ex. 1009 at 6-9, 49-57). PO’s decision not to submit Petitioner’s
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`Non-Infringement and Invalidity Contentions to the Examiner of the ‘393
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`Application deprived the Examiner of the opportunity to consider Xiong.
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`Institution on the basis of Xiong alone, and in view of Fan, is proper.
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`B.
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`PERSON OF ORDINARY SKILL IN THE ART
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`A person of ordinary skill in the art is a hypothetical person presumed to
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`know the relevant prior art. Gnosis S.p.A. v. S. Ala. Med. Sci. Found., IPR2013-
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`00116, Final Written Decision (Paper 68) at 9 (citing In re GPAC Inc., 57 F.3d
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`1573, 1579 (Fed. Cir. 1995)). Such person is of ordinary creativity, not merely an
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`automaton, and is capable of combining teachings of the prior art. Id. (citing KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). Citing the Federal Circuit,
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`the Board has held “the references themselves represent the level of ordinary skill
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`in the art.” eBay Inc. v. Locata LBS LLC, IPR2014-00585, Final Written Decision
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`(Paper 31) at 6 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
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`(the level of ordinary skill in the art usually is evidenced by the references
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`themselves); In re GPAC, 57 F.3d at 1579 (finding that the Board of Patent
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`Appeals and Interferences did not err in concluding that the level of ordinary skill
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`in the art was best determined by the references of record)).
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`From the “Field of the Invention” of the ‘218 Patent and the references
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`presented herein, it is evident that a person of ordinary skill in the art at the time of
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`filing of the ‘218 Patent had at least some experience with cooling pad techniques
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`and a general understanding of heat transfer. (See, e.g., Ex. 1001 at 1:6-7
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`(“invention relates to temperature controlled platforms”)).
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`Petition For Inter Partes Review Of U.S. Patent No. 8,720,218
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`C. CLAIM CONSTRUCTION
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`During IPR, claim terms are given their “broadest reasonable construction.”
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`37 C.F.R. § 42.100(b). A correct construction under this standard must be
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`“consistent with the specification” of the patent. In re Cuozzo Speed Techs., LLC,
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`778 F.3d 1271, 1279 (Fed. Cir. 2015) (quoting In re Rambus, Inc., 753 F.3d 1253,
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`1255 (Fed. Cir. 2014)). Claim terms are generally given their ordinary and
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`customary meaning to an artisan in the context of the disclosure. In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). Any special definition must be
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`described in the specification “with reasonable clarity, deliberateness, and
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`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Petitioner addresses the claim terms it believes warrant particular attention
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`immediately below. Where not specified below, Petitioner submits that the claim
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`terms of the ‘218 Patent should be given their ordinary and customary meaning.
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`Petitioner’s position