Bandit Industries, Inc. v. St. Martin Investments, Inc.

1. Case Identification

• Case #: IPR2017-
• 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 to uniformly incorporate chemical additives into a mass of waste materials while concurrently fragmenting, or particulating, the material in a single, continuous process.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 7, and 16 under §102(b) over 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 of Feed," discloses every element of the challenged claims. Tertyshnikov teaches feeding raw material (e.g., coarse plant stalks) into a turbulent fragmenting zone containing a grinder rotor. It concurrently injects liquids, such as water or molasses, via a perforated pipe to achieve uniform humidity, which Petitioner contended meets the "uniformly impregnating" limitation. Petitioner further asserted that molasses, a disclosed additive, is a coloring agent, thus anticipating the limitation of claim 2. The process concludes by screening the particulated product with a sieve and recovering it using a conveyor system. For the means-plus-function limitations of claim 16, Petitioner mapped the claimed "feeding means," "injection means," and "recovering means" to equivalent structures in Tertyshnikov, such as a belt conveyor, the perforated pipe, and a pneumatic conveyor, respectively.

Ground 2: Anticipation of Claims 1, 2, 7, and 16 under §102(b) over 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, which is directed to recovering cellulose fibers from paper-plastic mixtures, anticipates the challenged claims. The reference allegedly discloses feeding waste material to a turbulent fragmenting zone (rotor chambers) where it is subjected to ballistic attrition. It further discloses concurrently injecting water and other additives, including detergents and brightness agents, via spray showers onto the material within the fragmenting zone. The resulting particulated product is screened and then recovered via a pneumatic conveyor. Petitioner asserted that the disclosed "brightness and de-inking agents" are inherently coloring agents, thereby anticipating claim 2’s specific limitation.

Ground 3: Obviousness of Claim 2 under §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 established that Reiniger ’999, which describes producing fuel from municipal solid waste, anticipates all limitations of independent claim 1. Reiniger ’999 discloses a fragmentizer that simultaneously chops waste material while spraying it with various liquids from nozzles. Petitioner then argued that modifying this process to use a "coloring agent," as recited in dependent claim 2, would have been obvious by incorporating the teachings of Rondy or Sawka.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to modify the process of Reiniger ’999 by substituting the disclosed liquids (e.g., water, detergent) with the coloring agents taught by Rondy or Sawka. Both Rondy and Sawka are in the same field and explicitly teach methods for creating colored wood mulch by spraying a liquid colorant onto comminuted wood. The motivation was to improve the appearance and commercial value of the end product, which is a known and desirable "surface treatment" goal.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. Both Rondy and Sawka provide detailed guidance on how to apply colorants, including modulating proportions of colorant to wood and specifying system designs for nozzles and pumps. This would allow a POSITA to implement the coloring function in the Reiniger ’999 system with only minimal, routine experimentation.

• Additional Grounds: Petitioner also asserted a separate anticipation challenge against claims 1, 2, 7, and 16 based on Reiniger ’999 alone, and an obviousness challenge to claim 2 based on Tertyshnikov in view of Rondy or Sawka.

4. Key Claim Construction Positions

• Petitioner asserted that claim terms should be given their broadest reasonable interpretation in light of the specification.
• "Waste materials": Argued to broadly encompass a variety of materials including wood, paper, garbage, plastics, and agricultural or industrial wastes, as supported by the specification and an incorporated-by-reference patent.
• "Impregnating agent": Contended to broadly cover liquids, powders, and gasses, including agents intended for cleaning, bleaching, or coloring.
• Means-Plus-Function Terms (Claim 16):
  • "feeding means": Petitioner identified the corresponding structure as the hopper and conveyor belt assembly for feeding waste materials into the machine.
  • "injection means": Petitioner identified the corresponding structure as the manifold and associated feed lines for injecting and distributing the impregnating agent.
  • "recovering means": Petitioner identified the corresponding structure as a belt-type conveyor, a flighted auger, or a pneumatic conveyor for recovering the final particulated product.

5. Relief Requested

• Petitioner requested that an inter partes review be instituted for the ’228 patent and that claims 1, 2, 7, and 16 be canceled as unpatentable.