Case 1:20-cv-00393-LO-TCB Document 751-5 Filed 06/22/21 Page 1 of 12 PageID# 20486
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`Exhibit 26
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`

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`Case 1:20-cv-00393-LO-TCB Document 751-5 Filed 06/22/21 Page 2 of 12 PageID# 20487
`Trials@uspto.gov
`
`Paper No. 13
`571-272-7822
`
`Filed: December 12, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MUNCHKIN, INC.,
`Petitioner,
`
`v.
`
`INTERNATIONAL REFILLS COMPANY LIMITED,
`Patent Owner
`____________
`
`Case IPR2016-01154
`Patent 8,899,420 B2
`____________
`
`
`Before JOSIAH C. COCKS, BARRY L. GROSSMAN, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`
`
`
`

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`Case 1:20-cv-00393-LO-TCB Document 751-5 Filed 06/22/21 Page 3 of 12 PageID# 20488
`IPR2016-01154
`Patent 8,899,420 B2
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`
`I. INTRODUCTION
`A. Summary
`On June 3, 2016, Petitioner, Munchkin, Inc. (“Munchkin”), filed a
`Petition (Paper 2, “Pet.”) to institute inter partes review of claims 1–17 of
`US Patent No. 8,899,420 (Ex. 1002, “the ’420 patent”). Patent Owner,
`International Refills Company Limited (“Int’l Refills”), filed a Preliminary
`Response (Paper 9, “Prelim. Resp.”) on September 13, 2016.
`An inter partes review may not be instituted unless the information
`presented in the Petition shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
`conclude that the information presented in the Petition does not establish a
`reasonable likelihood of success with respect to claims 1–17 of the ’420
`patent. We do not institute an inter partes review.
`B. Related Matters
`Munchkin and Int’l Refills identify the following court proceedings
`concerning the ’420 patent: Int’l Refills Co. v. Munchkin, Inc., No. 3:16-cv-
`00094-VLB (Conn.); and In the Matter of Certain Diaper Disposal Systems
`and Components Thereof, including Diaper Pail Refill Cassettes (Inv. No.
`337-TA-986) pending in the United States International Trade Commission.
`Pet. 2;1 Paper 7, 1.
`
`C. The ’420 patent
`The ’420 patent is titled “Cassette and Apparatus for Packing
`Disposable Objects into an Elongated Tube of Flexible Material.” Ex. 1002,
`
`1 Int’l Refills styles the noted court proceeding in the District of Connecticut
`as Edgewell Personal Care Brands, LLC et al. v. Munchkin, Inc.
`
`2
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`

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`Case 1:20-cv-00393-LO-TCB Document 751-5 Filed 06/22/21 Page 4 of 12 PageID# 20489
`IPR2016-01154
`Patent 8,899,420 B2
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`Title. Figure 1 of the ’420 patent is reproduced below.
`
`
`Figure 1 depicts a cross-sectional view of an apparatus according to
`
`an embodiment of the invention. Id. at 3:66–67. Apparatus 10 includes bin
`12 with top portion 14. Id. at 4:28–34. Top portion 14 includes holder 26
`that receives cassette 30 containing flexible plastic film tubing 32. Id. at
`4:54–60. Top portion 14 also includes an opening for receiving disposable
`objects therethrough. Id. at 4:42–43. The ’420 patent describes the
`following as to the use of apparatus 10:
`
`In order to prepare the apparatus 10 for use, and with
`reference to FIG. 1, a user person removes the lid 24 and funnel
`25 assembly and inserts the cassette 30 in the correct orientation
`(i.e., with the chamfer clearance 41 facing downward.[)] The
`
`3
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`IPR2016-01154
`Patent 8,899,420 B2
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`user person withdraws a free end of the tubing 32 from the
`cassette 30, takes a leading edge of flexible tubing 32, ties it into
`the knot 40 and pushes the knot 40 through the openings 22, 34
`and beyond the closing mechanism. It is pointed out that the knot
`40 may be made prior to the cassette 30 being installed. The
`movable portion 58 opens as a result of the downward pressure,
`whereby the knot 40 reaches the enclosure 18 below the closing
`mechanism 50.
`
`Id. at 7:3–14.
`Claims 1, 6, and 11 are independent. Claims 2–5, ultimately depend
`from claim 1, claims 7–10 ultimately depend from claim 6, and claims 12–
`17 ultimately depend from claim 11. Claim 1 is illustrative of the subject
`matter at issue, and is reproduced below.
`1. A cassette for packing at least one disposable object,
`comprising:
`an annular receptacle including an annular wall delimiting
`a central opening of the annular receptacle, and a volume
`configured to receive an elongated tube of flexible material
`radially outward of the annular wall;
`a length of the elongated tube of flexible material disposed
`in an accumulated condition in the volume of the annular
`receptacle; and
`an annular opening at an upper end of the cassette for
`dispensing the elongated tube such that the elongated tube
`extends through the central opening of the annular receptacle to
`receive disposable objects in an end of the elongated tube,
`wherein the annular receptacle includes a clearance in a
`bottom portion of the central opening, the clearance extending
`continuously from the annular wall and radially outward of a
`downward projection of the annular wall, the clearance
`delimiting a portion of the volume having a reduced width
`relative to a portion of the volume above the clearance.
`
`4
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`

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`IPR2016-01154
`Patent 8,899,420 B2
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`D. Asserted Ground of Unpatentability
`Petitioner contends that claims 1–17 are invalid under 35 U.S.C.
`§ 102(d) based on the Morand Registration.2
`
`II. ANALYSIS
`The sole ground of unpatentability proposed in the Petition for claims
`1–17 of the ’420 patent arises under 35 U.S.C. § 102(d). That section as it
`appeared prior to the enactment of the Leahy-Smith America Invents Act
`reads as follows:3
`§ 102. Conditions for patentability; novelty and loss of right to
`patent.
`
`***
`(d) the invention was first patented or caused to be patented, or
`was the subject of an inventor’s certificate, by the applicant or
`his legal representatives or assigns in a foreign country prior to
`the date of the application for patent in this country on an
`application for patent or inventor’s certificate filed more than
`twelve months before the filing of the application in the United
`States.
`
`A.
`At the outset, we observe that 35 U.S.C. § 311 specifically identifies
`the scope of a inter partes review—namely “[a] petitioner in an inter partes
`review may request to cancel as unpatentable 1 or more claims of a patent
`only a ground that could be raised under section 102 or 103 and only on the
`
`
`2 Community Design Registration No. EM 000792031-0001 issued to Moran
`on September 9, 2007 (Exhibit 1004, “Morand Registration”).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
`application for the patent at issue in this proceeding has an effective filing
`date before that date, we refer to the pre-AIA versions of the statute.
`
`5
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`IPR2016-01154
`Patent 8,899,420 B2
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`basis of prior art consisting of patents or printed publications.” Thus, § 311
`establishes that a petitioner’s request for inter partes review must: (1) be on
`a ground that could be raised under 35 U.S.C. § 102 or 103, and (2) the
`ground must be one that is “on the basis of prior art.” Although Munchkin
`contends that the Morand Registration “is prior art under § 102(d),”
`Munchkin does not consider appropriately the context of § 102(d). See
`Pet. 8
`
`Pre-AIA § 102 includes seven subsections (a)–(g), and those
`subsections are considered in connection with certain conditions for
`patentability, i.e., either: (1) “novelty,” i.e., prior art, or (2) “loss of right to
`patent.” The Federal Circuit has given guidance as to which of subsections
`(a)–(g) pertain to which condition of patentability, determining that 102(f)’s
`status as a “prior art” provision may be somewhat unclear in certain
`circumstances, but making the following concrete conclusions as to the
`remaining subsections:
`Subsections (a), (b), (e), and (g), on the other hand, are clearly
`prior art provisions. They relate to knowledge manifested by acts
`that are essentially public. Subsections (a) and (b) relate to
`public knowledge or use, or prior patents and printed
`publications; subsection (e) relates to prior filed applications for
`patents of others which have become public by grant; and
`subsection (g) relates to prior inventions of others that are either
`public or will likely become public in the sense that they have
`not been abandoned, suppressed, or concealed. Subsections (c)
`and (d) are loss-of-right provisions. Section 102(c) precludes the
`obtaining of a patent by inventors who have abandoned their
`invention. Section 102(d) causes an inventor to lose the right to
`a patent by delaying the filing of a patent application too long
`after having filed a corresponding patent application in a foreign
`country. Subsections (c) and (d) are therefore not prior art
`provisions.
`
`6
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`

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`Case 1:20-cv-00393-LO-TCB Document 751-5 Filed 06/22/21 Page 8 of 12 PageID# 20493
`IPR2016-01154
`Patent 8,899,420 B2
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`OddzOn Prod., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997)
`(emphasis added). Thus, the Federal Circuit concluded that § 102(d) is a
`“loss-of-right” provision rather than a “prior art” provision. Indeed, as noted
`by the Federal Circuit, § 102(d) has a particular role in acting to deter an
`inventor from filing a patent application in the United States too long after
`having filed a corresponding patent application in a foreign country. That
`role is untethered to any contemplation that a given patent or inventor’s
`certificate in a foreign country is prior art.
`
`We also take note of content of Exhibit 1008 that was offered by
`Munchkin in support of its Petition. Pet. 9. Exhibit 1008 is a document
`titled “First Inventor to File (FITF) Comprehensive Training” and indicates
`that its specific discussion is directed to “Prior Art Under the AIA.” Ex.
`1008, 1. Exhibit 1008 is understood as guidance offered by the United
`States Patent and Trademark Office (“Office”) to the examining corps in
`connection with aspects of the AIA. Page 52 of that exhibit is directed to
`discussion of 35 U.S.C. § 102(d) and includes a statement that “35 U.S.C.
`102(d) is NOT the basis for a prior art rejection.” Id. at 52. Thus, the
`guidance offered by the Office indicates a prohibition as to the use of
`§ 102(d) in a “prior art rejection.” That guidance is consistent with the
`above-noted explanation of the Federal Circuit in OddzOn Prod., Inc.
`pertaining to § 102(d)’s lack of affiliation with prior art.
`With the above in mind, we conclude that Munchkin does not offer
`any adequate explanation as to why a document offered under § 102(d)—a
`loss-of-right provision—is considered appropriately as a ground presented in
`a Petition for inter partes review as being “on the basis of prior art” as
`required by § 311.
`
`7
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`

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`Case 1:20-cv-00393-LO-TCB Document 751-5 Filed 06/22/21 Page 9 of 12 PageID# 20494
`IPR2016-01154
`Patent 8,899,420 B2
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`B.
`In any event, even were we to assume that it is appropriate to consider
`
`a ground offered under § 102(d) in the context of a Petition for inter partes
`review, we discern that an additional and notable defect associated with the
`Morand Registration emerges.4 The Manual of Patent Examining Procedure
`(“MPEP”) provides guidance as to the general requirements of § 102(d). To
`that end, the MPEP sets forth four conditions that must each be present in
`order to establish a bar against grant of a patent. MPEP 2135.01. One of
`those conditions is that the “same invention” must be involved as between
`the foreign filing and the application for a United States patent. Id. More
`particularly, the MPEP explains that, in such respect, § 102(d) would be
`applicable if “applicant’s foreign application supports the subject matter of
`the U.S. claims.” Id.
`
`Here, each of independent claims 1, 6, and 11 is directed to a “cassette
`for packing at least one disposable object,” that includes, among other
`things, “an annular receptacle” with a “volume configured to receive an
`elongated tube of flexible material.” Those claims further also separately
`require “a length of the elongated tube of flexible material disposed in an
`accumulated condition in the volume of the annular receptacle.” Thus, it is
`clear that independent claims 1, 6, and 11, and all claims depending
`therefrom, require a length of an elongated tube of flexible material disposed
`
`
`4 We take note that it is not clear immediately that the Morand Registration,
`as a community design registration, is a document that “was first patented or
`caused to be patented, or was the subject of an inventor’s certificate” as is
`required by § 102(d). For purposes of this Decision, however, we need not
`resolve that uncertainty.
`
`8
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`Patent 8,899,420 B2
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`in a particular configuration, i.e., an accumulated condition, within the
`volume of an annular receptacle.
`
`The Morand Registration includes five figures illustrating the design
`of “[f]ilm cassettes for garbage.” Ex. 1004, 3–4. The Morand Registration,
`however, does not show or illustrate any elongated flexible tubing. In
`accounting for the claim requirement of such elongated flexible tubing
`arranged in an accumulated condition with the volume of an annular
`receptacle, Munchkin contends that the mention of “plastic film” as a part of
`the Morand Registration somehow “requires” a length of elongated flexible
`material configured and arranged as required. Pet. 15–16. Munchkin also
`contends that based on description of background art in the ’420 patent, Int’l
`Refills “admitted” that it was known to those of ordinary skill in the art to
`include such material in an accumulated condition in a receptacle. Id. at 16.
`
`We determine that Munchkin has not established that the content of
`the Morand Registration presents the same invention as that of the ’420
`patent. The mention of “plastic film” alone is not sufficient to convey the
`particular elongated flexible tubing of the claims, much less the particular
`configuration of that tubing, i.e., arranged in an accumulated condition with
`an annular receptacle. Munchkin also does not explain adequately why
`consideration of a skilled artisan’s knowledge based on prior art outside of
`the content of the Morand Registration’s disclosure is appropriate in
`assessing whether the Morand Registration presents the same invention as
`the ’420 patent.
`
`Accordingly, even were we to consider § 102(d) as a viable ground of
`unpatentability in the context of a inter partes review, here, we are not
`persuaded that Munchkin has made an adequate showing that the
`
`9
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`Patent 8,899,420 B2
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`requirements of that section are met.
`III. CONCLUSION
`For the foregoing reasons, we are not persuaded that the Petition
`warrants institution of an inter partes review. We, thus, do not do so.
`IV. ORDER
`It is ORDERED that no trial or inter partes review is instituted for
`any claim of the ’420 patent on any ground in this proceeding.
`
`
`
`
`
`10
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`Case 1:20-cv-00393-LO-TCB Document 751-5 Filed 06/22/21 Page 12 of 12 PageID# 20497
`IPR2016-01154
`Patent 8,899,420 B2
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`For PETITIONER:
`A. Justin Poplin
`jpoplin@lathropgage.com
`
`Robert Evora
`robert.evora@munchkin.com
`
`Anna Quinn
`aquinn@lathropgage.com
`
`For PATENT OWNER:
`Keith E. Broyles
`keith.broyles@alston.com
`
`Jason P. Cooper
`jason.cooper@alston.com
`
`Pamela Holland Councill
`pamela.councill@alston.com
`
`Wesley C. Achey
`wes.achey@alston.com
`
`
`
`11
`
`