Bandit Industries Inc v. St Martin Investments Inc

1. Case Identification

• Case #: IPR2017-01849
• Patent #: 6,207,228
• Filed: July 25, 2017
• Petitioner(s): Bandit Industries, Inc. and Smoracy, LLC
• Patent Owner(s): Rotochopper, Inc.
• Challenged Claims: 1, 2, 7, and 16

2. Patent Overview

• Title: Method and Machine for Concurrently Fragmenting and Impregnating Waste Materials
• Brief Description: The ’228 patent discloses a method and apparatus for processing bulk waste materials, such as wood or paper. The claimed invention centers on concurrently fragmenting the material into a desired particle size and impregnating it with a chemical additive, such as a coloring agent, within a single, continuous process inside a turbulent fragmenting zone.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 7, and 16 are anticipated under 35 U.S.C. §102(b) by Tertyshnikov.

• Prior Art Relied Upon: Tertyshnikov (Patent 3,254,687).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tertyshnikov, which describes a machine for preparing animal feed, discloses every element of the challenged claims. Tertyshnikov teaches feeding raw materials into a "turbulent fragmenting zone" (a hollow body with a grinder) while concurrently injecting an impregnating agent (liquids such as water, brine, or molasses) from a perforated pipe. The process includes particulating the material with a grinding rotor, screening it to a desired size using a replaceable sieve, and recovering the final product. Petitioner asserted that the disclosed use of molasses, a known staining agent, anticipates the "coloring agent" limitation of dependent claim 2.

Ground 2: Claims 1, 2, 7, and 16 are anticipated under 35 U.S.C. §102(b) by Reiniger ’635.

• Prior Art Relied Upon: Reiniger ’635 (Patent 4,440,635).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Reiniger ’635, directed to recovering cellulose fibers from paper-plastic mixtures, anticipates the claims. The reference allegedly describes feeding waste material into rotor chambers that create a turbulent fragmenting zone where ballistic attrition particulatematerial. Concurrently, spray showers add water and other additives, including "brightness and paper deinking agents." Petitioner argued these de-inking and brightness agents inherently function as coloring agents, thereby meeting the limitation of claim 2. The process further discloses using screens to control particle size and recovering the processed fibers.

Ground 3: Claim 2 is obvious under 35 U.S.C. §103 over Reiniger ’999 in view of Rondy or Sawka.

• Prior Art Relied Upon: Reiniger ’999 (Patent 4,245,999), Rondy (Patent 5,308,653), and Sawka (Patent 5,358,738).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner first asserted that Reiniger ’999 anticipates all limitations of independent claims 1 and 16, as it discloses a fragmentizer for municipal waste that uses rotors for particulation while spray heads concurrently add liquids like water or detergents. However, Reiniger ’999 does not explicitly teach adding an agent for the primary purpose of coloring as required by dependent claim 2.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the process of Reiniger ’999 with the coloring agent teachings of Rondy or Sawka. Both Rondy and Sawka are directed to the same field of endeavor and explicitly teach creating colored mulch by applying a liquid colorant to comminuted wood material using spray nozzles. Petitioner argued the motivation was the well-known commercial benefit of improving the appearance and marketability of the final wood product, which is a form of surface treatment already contemplated by Reiniger ’999.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination. It would have involved the simple substitution of a known coloring agent (from Rondy/Sawka) for the cleaning agents in the Reiniger ’999 system to achieve the predictable result of a colored, particulated product. Both Rondy and Sawka provided sufficient guidance on applying colorants to minimize experimentation.

• Additional Grounds: Petitioner asserted an additional anticipation challenge against claims 1, 2, 7, and 16 based on Reiniger '999. Petitioner also asserted claim 2 is obvious over Tertyshnikov in view of Rondy or Sawka, relying on a similar substitution rationale.

4. Key Claim Construction Positions

• Petitioner argued that several terms in claim 16 should be interpreted as means-plus-function elements under 35 U.S.C. §112 ¶6.
• "feeding means": The stated function is "feeding the waste materials to the machine," with the corresponding disclosed structure being an assembly including at least a hopper and a conveyor belt.
• "injection means": The stated function is "injecting and uniformly distributing the impregnating agent within the fragmenting zone," with the corresponding disclosed structure being a manifold and associated feed lines.
• "recovering means": The stated function is "recovering the particulated impregnated product," with the corresponding disclosed structure being a belt-type conveyor, a flighted auger, or a pneumatic conveyor.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 2, 7, and 16 of the ’228 patent as unpatentable.