Reflectix Inc v. Promethean Insulation Technology LLC

1. Case Identification

• Case #: IPR2015-00044
• Patent #: 8,327,601
• Filed: October 7, 2014
• Petitioner(s): Reflectix, Inc.
• Patent Owner(s): Promethean Insulation Technology LLC
• Challenged Claims: 1-5, 14, 16, 28, 30-32, and 35-37

2. Patent Overview

• Title: Metallized Polymeric Film Reflective Insulation Material
• Brief Description: The ’601 patent describes multi-layer reflective insulation materials designed to meet Class A fire safety standards. The disclosed invention typically comprises a metallized polymeric film bonded to a core material, such as a bubble-pack assembly, and includes a protective anti-corrosion coating on the metallized surface to maintain high reflectivity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lindsay in view of Kurz - Claims 1-5, 14, 28, and 35-37 are obvious over Lindsay in view of Kurz.

• Prior Art Relied Upon: Lindsay (Patent 4,825,089) and Kurz (Patent 3,640,832).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lindsay teaches the core structure of the invention: a reflective insulation material comprising a bubble-pack assembly with an outer metallized polymeric film. Critically, Lindsay acknowledges that this metallized layer "may oxidize in time," which reduces its reflective properties. Petitioner asserted that Lindsay discloses all limitations of the independent claims except for a "clear anti-corrosion lacquer coating." This missing element is supplied by Kurz, which explicitly teaches applying a clear "anti-oxidation varnish protective coating" (argued to be synonymous with lacquer) over a metallized layer on an insulation product to prevent oxidation and retain reflectivity.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA), upon reading Lindsay's identification of the oxidation problem, would be motivated to find a known solution. Petitioner contended that Kurz provides an express solution to this exact problem, making the combination a matter of applying a known technique to a known product to solve a known problem.
  • Expectation of Success: A POSITA would have a clear expectation of success, as combining the known elements for their intended purposes would predictably result in a durable, reflective insulation product that resists oxidation.

Ground 2: Obviousness over Kurz in view of Orologio - Claims 1-5, 14, 16, 28, 31, 32, and 37 are obvious over Kurz in view of Orologio.

• Prior Art Relied Upon: Kurz (Patent 3,640,832) and Orologio (Patent 6,322,873).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kurz teaches a reflective insulation product with a metallized polymeric film protected by a clear anti-corrosion coating, meeting several key claim limitations. However, Kurz's preferred backing material is a "foamed plastics material," not the "bubble-pack assembly" recited in several challenged claims. Orologio remedies this by teaching that bubble-pack assemblies are well-known and commonly used as insulation materials, often in combination with metallized films.
  • Motivation to Combine: A POSITA would be motivated to substitute the well-known bubble-pack insulation base from Orologio for the foamed plastic base in Kurz. Petitioner argued this represents a simple substitution of one known insulating element for another to achieve predictable benefits, such as improved insulation from the air pockets in the bubble-pack structure.
  • Expectation of Success: The substitution was argued to be a predictable design choice that would merely yield the expected results of combining the two technologies: an insulation product with Kurz’s protected reflective surface and the known physical structure and insulative properties of Orologio's bubble-pack.

Ground 3: Obviousness over Sugiyama in view of Kurz - Claims 1-5, 14, 16, 28, and 35-37 are obvious over Sugiyama in view of Kurz.

• Prior Art Relied Upon: Sugiyama (Japanese Publication 2001-65784) and Kurz (Patent 3,640,832).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner stated that Sugiyama teaches a reflective insulation material comprising a bubble-pack assembly with a metallized polymeric film. Sugiyama further discloses applying a protective "overcoat layer" on the metallized surface with the stated purpose of inhibiting oxidation. Petitioner argued that to the extent this "overcoat" is not a "lacquer" as claimed, Kurz supplies the teaching of a clear anti-corrosion lacquer/varnish for the same purpose.
  • Motivation to Combine: A POSITA, seeking to implement or improve upon the protective coating taught in Sugiyama, would be motivated to use the well-known and effective clear lacquer taught by Kurz. The motivation is to use a known, transparent coating to achieve Sugiyama’s stated goal of maintaining long-term reflectivity by preventing oxidation.
  • Expectation of Success: Applying the known lacquer from Kurz to the insulation structure of Sugiyama would predictably protect the metallized layer from oxidation while retaining high reflectivity, achieving the desired result with no inventive step.
• Additional Grounds: Petitioner asserted numerous additional obviousness grounds. These included using GB '206 (a U.K. patent application) as an alternative to Kurz for teaching a protective lacquer coating. Further grounds combined Lindsay or Sugiyama with Kurz and Orologio to teach features like double-layer bubble packs or the inclusion of fire retardants, arguing these were also obvious modifications known in the art.

4. Key Claim Construction Positions

• "Class A": Petitioner proposed this term be construed to mean an insulation material with a Flame Spread Index of 0-25 and a Smoke Developed Index of 0-450, as determined by the ASTM E-84-05 test standard.
• "bubble-pack assembly": Construed as a material having films that form cavities or "bubbles."
• "metallized polymeric film": Construed as a polymeric film with metal particles deposited on it (e.g., via vapor deposition), distinguishing it from a solid metal foil.
• "anticorrosion lacquer coating": Petitioner argued "lacquer" is used generically to refer to any liquid-based material that provides a protective coating to prevent corrosion of the underlying metal.

5. Key Technical Contentions (Beyond Claim Construction)

• Discovery of Inherent Properties is Not Inventive: A central theme of the petition was that the patentee improperly obtained the patent by arguing the "unexpected result" that using a metallized film (instead of a metal foil) allowed the product to meet the Class A fire standard. Petitioner argued that this was merely the recognition of a latent, inherent property of a known material structure. Citing M.P.E.P. § 2145(II), Petitioner contended that discovering an unknown but inherent function or advantage of a prior art structure cannot be the basis for patentability if the structure itself is obvious.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 14, 16, 28, 30-32, and 35-37 of the ’601 patent as unpatentable.