NECksGen Inc v. Simpson Performance Products Inc

1. Case Identification

• Case #: IPR2018-00133
• Patent #: 9,351,529
• Filed: October 27, 2017
• Petitioner(s): Necksgen, Inc.
• Patent Owner(s): Simpson Performance Products, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Head and Neck Restraint Tether System
• Brief Description: The ’529 patent discloses a system of tethers, including rear and side tethers, that attach a driver's helmet to a head and neck restraint device. The system is designed to control head and neck movement for a driver operating a high-performance vehicle during a collision.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 1 - Claims 1, 4-7 are obvious over Hubbard ’510 in view of Ashline ’360, with further combinations including Moloney for claims 5-7.

• Prior Art Relied Upon: Hubbard (Patent 4,638,510), Ashline (Patent 6,871,360), and Moloney (Patent 6,810,535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hubbard ’510 teaches all elements of a head and neck restraint system as claimed in claim 1, including a yoke-style support member, a helmet, and a plurality of tethers (side and rear) connecting them. However, Hubbard ’510 discloses separate attachment points for the side and rear tethers. Petitioner asserted that Ashline ’360, which addresses the same technical problem, explicitly teaches the single missing element: the "joint attachment" of a rear and side tether at a single point on each side of the helmet. Ashline ’360 discloses that two "tethers may attach to the same helmet clips." For dependent claims, Petitioner contended Moloney teaches attaching tethers underneath a support member.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Hubbard ’510 and Ashline ’360 because both relate to head and neck protection for race car drivers and use similar components. Ashline ’360 itself identifies later work by Hubbard as being in the same field. Petitioner also cited market pressure, specifically a NASCAR mandate for such devices, as a strong motivation for a POSITA to combine known, predictable solutions to improve safety and comfort.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves applying a known attachment technique (from Ashline ’360) to a known restraint system (from Hubbard ’510) to achieve the predictable result of a more streamlined tether configuration.

Ground 2: Obviousness of Claims 8 and 14 - Claims 8, 9, 11-15, and 17-19 are obvious over Hubbard ’510 and Ashline ’360, in further view of Hubbard ’566 and Ashline ’669.

• Prior Art Relied Upon: Hubbard (Patent 4,638,510), Ashline (Patent 6,871,360), Hubbard (Patent 6,009,566), and Ashline (Patent 6,931,669).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Hubbard ’510 and Ashline ’360 to address limitations in independent claims 8 and 14. Petitioner argued that Hubbard ’566 discloses a yoke-style restraint where the tethers run from the helmet to the device inside the seatbelts, thus teaching the limitation that side tethers are "disposed between shoulder belts." Further, Petitioner asserted that Ashline ’669 teaches a rear restraint using two separate tethers, each with one end affixed to the support member and the other to the helmet, which reads on the claim language of a rear tether having an "intermediate portion attached to the support member." The core "joint attachment" element was again supplied by Ashline ’360.
  • Motivation to Combine: The motivation was based on the shared purpose of all four references: protecting a driver in a frontal crash. Petitioner argued that the references represent an evolution of design choices within the same field. For instance, both Ashline references identify Hubbard's work, and the inventor of the Ashline patents is the same as the inventor of the challenged ’529 patent. A POSITA would look to this known pool of prior art to combine various tether configurations and support member designs to create an optimized device.
  • Expectation of Success: Success would be expected, as the combination involves integrating known features from closely related prior art devices. For example, combining the tether path from Hubbard ’566 with the joint helmet attachment from Ashline ’360 and the base system from Hubbard ’510 was presented as a predictable assembly of known elements.

• Additional Grounds: Petitioner asserted additional obviousness challenges against other dependent claims (e.g., claims 2, 3, 10, 16) by adding Moloney (Patent 6,810,535) to the primary combinations to teach attaching tethers underneath the support member.

4. Key Claim Construction Positions

• Petitioner argued for constructions of several terms based on their Broadest Reasonable Interpretation (BRI). The most critical construction was for "jointly attached," a term added during prosecution to achieve allowance.
• Petitioner proposed that "jointly attached" should be construed to mean "two tethers—a first tether and a second tether—jointly attached to the helmet at a single attachment point." This construction was central to the petition's thesis, as it framed the exact limitation that Petitioner alleged was missing from Hubbard ’510 but explicitly disclosed in Ashline ’360.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate. While the primary references were listed in an Information Disclosure Statement during prosecution, the Examiner only rejected claims based on anticipation by Hubbard ’510 alone.
• Petitioner contended that the specific prior art combinations, the detailed arguments mapping elements, and the motivations to combine them as presented in the inter partes review (IPR) petition were never before the Examiner. Crucially, the Examiner did not have the benefit of the accompanying expert declaration of Professor Hu, which explained the knowledge of a POSITA and the reasons for combining the references.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-19 of the ’529 patent as unpatentable.