PTAB

IPR2013-00031

VeSTCom Intl Inc v. Price HenEveld LLP

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Integrated Shelf Label and Coupon System
  • Brief Description: The ’765 patent discloses a method and system for creating an integrated shelf label assembly from a single sheet of printable material. The assembly includes a base portion for displaying product information and a detachable coupon portion, separated by a line of weakening like a perforation, allowing for point-of-sale coupon distribution.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 are obvious over Rychel in view of Brown

  • Prior Art Relied Upon: Rychel (Application # 2002/0198892) and Brown (Patent 6,408,553).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rychel disclosed all elements of independent claim 1 except for a "line of weakening" that facilitates detachment of the coupon portion. Rychel taught a system for centrally generating and printing on a "single sheet" a shelf label that includes both product information and a promotional portion (e.g., a coupon). Brown explicitly taught the use of a detachable portion on a label, such as a coupon, separated from the main label by a line of weakening (perforation) to allow for easy removal. Petitioner contended that combining Brown’s well-known perforation with Rychel’s integrated label design would result in the claimed invention. For dependent claims, Petitioner argued that features like specific indicia, substrates (paper, polyester), and electronic data transfer were either directly taught by Rychel or were conventional elements in the art at the time.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) reviewing Rychel's system for providing promotional information on a shelf label would be motivated to make the promotional portion easily removable for consumer convenience. Brown provided a known, simple solution for creating such a removable portion by adding a line of weakening. The motivation was to improve the functionality of Rychel's label by incorporating a common and predictable feature from the field of label and coupon design.
    • Expectation of Success: A POSITA would have a high expectation of success in adding a perforation line to the printable sheet in Rychel’s system. Perforating paper or other substrates was a routine, well-understood, and highly predictable mechanical process in the printing and label manufacturing industry.

Ground 2: Claims 1-13 are obvious over Rychel in view of Laurash

  • Prior Art Relied Upon: Rychel (Application # 2002/0198892) and Laurash (Patent 5,284,689).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative to the Brown reference for teaching the detachability aspect. Petitioner asserted that Rychel taught the core system of printing an integrated label and coupon on a single sheet. Laurash taught a multi-layered, pressure-sensitive label stock constructed as a "single printable sheet" that includes one or more detachable portions. Laurash’s label could be die-cut to create lines of weakening around a portion to make it removable. Therefore, Laurash provided the missing element of a detachable portion on a single sheet structure.
    • Motivation to Combine: The motivation to combine was similar to the first ground: to improve the functionality of Rychel's promotional label. A POSITA would look to known label designs, such as those in Laurash, for methods of creating detachable sections. Laurash provided a known method for manufacturing a single-sheet product with removable parts, which directly addressed the goal of making Rychel's promotional component function as a practical, removable coupon for consumers.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in applying the label structure and die-cutting techniques of Laurash to Rychel’s system. These were common manufacturing techniques used to create a wide variety of labels and promotional items, and their application to a new label format would be straightforward.

Ground 3: Claims 1-13 are obvious over Falls

  • Prior Art Relied Upon: Falls (WO 97/05556).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Falls, as a single reference, anticipated or rendered obvious all limitations of the challenged claims. Falls disclosed a system for producing customized labels at a retail location. The system printed labels on a continuous roll of material, where each label included a product information area and a detachable "mini-coupon" separated by a perforation. Falls described printing variable data from a database onto these integrated label-coupon forms, which were then cut from the roll and affixed to store shelves. Petitioner mapped the "single sheet" limitation to the individual label form cut from the roll in Falls. The teachings of a base portion, a detachable coupon portion, and a line of weakening were all explicitly present in Falls.
    • Key Aspects: This ground asserted that a single reference contained all the key inventive concepts, arguing that the claimed invention was merely a restatement of the system already disclosed by Falls. The argument focused on demonstrating that no combination was necessary because Falls alone provided a complete roadmap to the claimed invention.

4. Key Claim Construction Positions

  • "single sheet of printable material": Petitioner argued this term should be given its plain and ordinary meaning and should not be narrowly construed to exclude multi-layered laminates or substrates that are handled and printed as a single unit. This construction was important to ensure that prior art references disclosing composite label materials, such as Laurash, were not improperly excluded from consideration. The core of the argument was that in the context of printing and processing, materials composed of multiple layers are routinely treated as a "single sheet."

7. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-13 of the ’765 patent as unpatentable under 35 U.S.C. §103.