PTAB

IPR2017-00519

StERICycle Inc v. CatILina NoMinees Proprietary Ltd

Title: Sharps Container
Brief Description: The ’465 patent discloses a container for medical sharps and waste materials designed to provide a wide access opening for disposal while simultaneously preventing hand access to the container's contents through a pivotal tray mechanism.

Prior Art Relied Upon: Gaba (Patent 5,947,285) and Homme (Patent 830,231).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Gaba, a medical waste disposal system, teaches nearly all elements of the challenged claims, including a receptacle with a hinged lid and a pivotal tray (termed a "tumbler") that prevents hand access. However, Petitioner contended Gaba does not explicitly disclose an "interoperable relationship" where movement of the lid causes movement of the tray. Homme, which discloses a mailbox, was argued to supply this missing element. Homme teaches a pivoting receiver tray that is automatically tilted by a link connected to the swinging lid, thereby addressing the same problem of allowing deposits while preventing access to stored contents.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) seeking to improve Gaba's sharps container would combine it with Homme's linked lid-and-tray mechanism. Both references solve the same problem of permitting object deposit while preventing access to the container's interior. Petitioner asserted that a POSITA would readily look to analogous arts, such as mailboxes, for known mechanical solutions.
- Expectation of Success: A POSITA would have a high expectation of success in combining the simple and predictable mechanical elements of Gaba and Homme to achieve the claimed invention.

Prior Art Relied Upon: Gaba (Patent 5,947,285) and Wallace (Patent 801,622).
Core Argument for this Ground:
- Prior Art Mapping: This ground again used Gaba as the primary reference for a sharps container with a pivotal, access-blocking tray. Petitioner argued that Wallace, another mailbox patent, provides an alternative mechanism for operatively connecting the lid and tray. Wallace discloses a tray that serves as a "guard-plate" when the lid is open. Movement of the lid from closed to open causes shoulders on the lid to engage lugs on the tray, moving the tray from an inoperative to an operative position. This combination was alleged to teach all limitations of claims 21-24, including the operative association between the lid and tray.
- Motivation to Combine: The motivation was identical to that asserted for the Gaba/Homme combination. A POSITA would be motivated to incorporate Wallace's known mechanism for coordinated lid-and-tray movement into Gaba's sharps container to achieve a predictable and effective result. Petitioner noted that Gaba's own list of cited references includes mailbox patents, confirming the analogous nature of the art.
- Expectation of Success: Combining the known receptacle design of Gaba with the well-understood mechanical linkage of Wallace would have been a straightforward application of known design principles with a predictable outcome.

Prior Art Relied Upon: Gaba (Patent 5,947,285) and Hann (Patent 890,766).
Core Argument for this Ground:
- Prior Art Mapping: This ground challenged a narrower set of claims using Gaba as the base reference and Hann, a third mailbox patent, as the secondary reference. Petitioner argued Gaba teaches the foundational sharps container, while Hann provides a further example of a tray that "preclude[s] access of the hand to the space below said wall and tray." Hann's design was presented as another known configuration for preventing access to the interior of a receptacle. This combination was argued to render obvious the limitations of claims 21 and 22, which describe the tray extending outwardly when the lid is open and retracting when closed.
- Motivation to Combine: The motivation to combine was consistent with the prior grounds. A POSITA would combine the teachings of Gaba and Hann because both references disclose containers with trays designed to solve the dual problem of allowing deposits while preventing retrieval, making the combination a predictable solution to a known problem.
- Expectation of Success: The combination was presented as the predictable substitution of one known access-prevention mechanism (Hann's) for another in the known field of sharps containers (Gaba).

"tray being arranged to extend outwardly from the opening": Petitioner argued for a construction of "the tray has a resting position that extends substantially beyond the front edge of the receptacle's front wall." Petitioner contended this construction was consistent with the patent's specification and prosecution history, where the applicant distinguished prior art based on this feature. Petitioner argued that Gaba's disclosure of a "significant portion" of its tray extending beyond the housing meets this limitation.
"A container for storing medical sharps and waste materials": Petitioner argued this preamble phrase is not a claim limitation as it merely states the intended use of the invention.

Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. Although the primary reference, Gaba, was considered during the original prosecution, Petitioner asserted that the petition was not cumulative because it relied on new combinations with references (Homme, Wallace, and Hann) that were not previously considered by the Examiner.

Petitioner requests institution of an inter partes review and cancellation of claims 21-24 of the ’465 patent as unpatentable.