WABCO Holdings Inc v. Transtex Composite Inc

1. Case Identification

• Case #: IPR2018-00737
• Patent #: 7,942,471 C1
• Filed: March 9, 2018
• Petitioner(s): WABCO Holdings Inc. and Laydon Composites Ltd.
• Patent Owner(s): Transtex Composite Inc.
• Challenged Claims: 1-9, 19, and 20

2. Patent Overview

• Title: Aerodynamic Skirt and Attachment Mechanism Thereof
• Brief Description: The ’471 patent discloses an aerodynamic skirt mounted longitudinally on a semi-trailer to reduce aerodynamic drag. The system comprises skirt panels secured to the trailer by a plurality of "resilient struts" that are adapted to allow the skirt to deform upon impact and self-recover to its original aerodynamic configuration.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1-9, 19, and 20 are anticipated by Layfield under 35 U.S.C. §102.

• Prior Art Relied Upon: Layfield (Patent 7,578,541).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Layfield, which discloses a flexible skirt fairing for trailers, teaches every limitation of the challenged claims. Layfield discloses an aerodynamic skirt with panels mounted to a trailer via struts (strut 58) made from thermoplastic materials (e.g., ABS, TPO). Petitioner contended these struts meet the "resilient struts" limitation of independent claims 1 and 19. Layfield's strut is described as having an open box construction with an upper trailer-connecting portion, a lower skirt-connecting portion, and an intermediate portion. Petitioner asserted that the inherent properties of the specified materials and the cantilever-like mounting structure would allow Layfield’s strut to elastically deform both proximally (inwardly) and distally (outwardly) upon impact and subsequently self-recover its original shape, thus meeting the key functional limitations added during reexamination of the ’471 patent. Petitioner also mapped Layfield's trapezoidally-shaped forward skirt panel to dependent claims reciting a progressively increasing front height.
  • Key Aspects: The central argument was that the PTO previously misapprehended the teachings of Layfield based on the Patent Owner's arguments during prosecution, and that Layfield’s thermoplastic struts are, in fact, "resilient" as claimed.

Ground 2: Obviousness - Claims 1-9, 19, and 20 are obvious over Layfield in view of Rinard under 35 U.S.C. §103.

• Prior Art Relied Upon: Layfield (Patent 7,578,541) and Rinard (Patent 5,280,990).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Layfield teaches the fundamental structure of the claimed aerodynamic skirt, including panels and struts, as detailed in Ground 1. To the extent Layfield is deemed not to explicitly teach the full scope of the claimed resiliency and self-recovery, Rinard provides the missing element. Rinard discloses a vehicle drag reduction system and explicitly teaches making aerodynamic components, such as air scoops and their vertical support elements, from a "resilient material" so they can collapse upon impact (e.g., with a loading dock) and resume their original configuration after contact is removed.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Layfield and Rinard. Both references address the same field of aerodynamic fairings for trailers and the known problem of such fairings being damaged by impacts. A POSITA would have looked to solutions like Rinard's resilient supports to improve the durability of a skirt design like Layfield's by ensuring its mounting struts were explicitly designed to be resilient and self-recovering.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making the struts of Layfield from the resilient materials taught by Rinard. This would involve the predictable application of a known material property (resilience) to a known component (a support strut) to achieve a known goal (durability and self-recovery), representing a combination of interchangeable prior art elements according to their established functions.

4. Key Claim Construction Positions

• "resilient struts": Petitioner proposed that this term should be construed to mean a strut that can flex or deform in response to a load and then return to its original position after the load is removed. Petitioner argued this construction is consistent with the term's plain meaning and the interpretation used by the PTO during reexamination. Petitioner noted that Patent Owner had previously argued to the PTO that Layfield's struts were not resilient to secure the patent but was now asserting in co-pending litigation that similar struts infringe the claims, creating a contradiction.
• "adapted to" / "self-recover": Petitioner argued that the phrase "adapted to... self-recover" is functional language. "Adapted to" was argued to mean any structure capable of performing the claimed function. "Self-recover" was construed to mean the strut is capable of returning to its original position as a result of its inherent resiliency after being deformed.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the petition presents new arguments and evidence that the PTO has not previously considered.
• The grounds relied on new expert declaration testimony concerning the physical and structural properties of the materials disclosed in Layfield, demonstrating that Layfield's strut inherently possesses the claimed resiliency.
• Petitioner asserted that the PTO had misapprehended the teachings of Layfield during the original prosecution and subsequent ex parte reexamination, and the new evidence clarifies this error. The combination of Layfield and Rinard was also a new combination of prior art not previously before the PTO.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 19, and 20 of the ’471 patent as unpatentable.