InterBulk USA LLC v. Global Strategies Inc

1. Case Identification

• Case #: IPR2018-01197
• Patent #: 7,510,327
• Filed: June 5, 2018
• Petitioner(s): INTERBULK USA, LLC d/b/a INTERBULK EXPRESS
• Patent Owner(s): Global Strategies, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: High-Strength Ribbon-Woven Disposable Bag for Containing Refuse
• Brief Description: The ’327 patent relates to a high-strength, puncture-resistant disposable bag formed from woven polypropylene ribbons. The bag is constructed from a tubular woven sheet that is stitched closed at one end and is intended for containing refuse, particularly sharp-edged materials from construction sites.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-12, 14, and 16 over Slawinski, Chen, Planeta '665, and Abele

• Prior Art Relied Upon: Slawinski (Patent 4,205,611), Chen (Patent 5,830,119), Planeta ’665 (Patent 5,395,665), and Abele (Patent 4,505,201).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the prior art collectively disclosed all limitations of the challenged claims. Slawinski taught a strong bag woven from polypropylene ribbons for containing explosives, disclosing a 10x10 weave equivalent to the claimed "100 per inch" stitch count (as construed by Petitioner) and was silent on bonding layers. Chen and Abele both taught constructing bags from a tubular woven material and closing one end by folding and stitching, a common and well-known method. Finally, Planeta ’665 explicitly taught that woven plastic strips "may have no bonding layers," directly addressing the key negative limitation added during prosecution of the ’327 patent.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references because they all address the same technical problem: creating a durable, high-strength woven bag for demanding applications. A POSITA would have been motivated to use the well-known stitched closure method taught by Chen and Abele with the strong woven fabric of Slawinski, and would have understood from Planeta ’665 that bonding layers were optional and could be omitted.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining these known elements—a type of fabric, a method of forming a tube, and a method of closure—involved predictable results using standard manufacturing techniques.

Ground 2: Obviousness of Claims 13 and 15 over Slawinski, Chen, Planeta '665, Abele, and Planeta '979

• Prior Art Relied Upon: The combination from Ground 1, further in view of Planeta ’979 (Patent 4,373,979).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the base combination of Ground 1, which established the underlying strong, stitched, woven bag. To meet the limitations of claims 13 and 15 (a liquid-tight layer laminated to the exterior and heat-sealed), Petitioner relied on Planeta ’979. Planeta ’979 taught that a woven layer of plastic strips is "usually overlaid with a continuous plastic layer" and that such layers can be joined using a hot melt adhesive, effectively heat-sealing the layer to the bag.
  • Motivation to Combine: Petitioner asserted that if a POSITA sought to make the strong woven bag from the primary combination liquid-tight (as recited in claim 12), they would have been motivated to incorporate the known technique of laminating an exterior plastic film, as taught by Planeta ’979. This was argued to be a simple and logical addition to improve the bag's functionality for containing liquids or fine particulates.

Ground 3: Obviousness of Claims 17-20 over Slawinski, Chen, Hansen, and Planeta '665

• Prior Art Relied Upon: Slawinski (Patent 4,205,611), Chen (Patent 5,830,119), Hansen (Patent 5,251,761), and Planeta ’665 (Patent 5,395,665).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged the method claims for "removing refuse having sharp points." The combination of Slawinski, Chen, and Planeta '665 was used to teach the structure of the bag itself, as in Ground 1. Hansen was introduced to teach the claimed method of use. Hansen explicitly disclosed a method of handling recyclable materials using "rugged plastic bags" made from "woven polypropylene" that are able to withstand compaction and dumping operations, making them suitable for refuse.
  • Motivation to Combine: Petitioner argued that a POSITA would be motivated to use the strong, puncture-resistant bag taught by Slawinski, Chen, and Planeta ’665 for the specific purpose of refuse collection, a use explicitly disclosed in Hansen. The design considerations for bags used for explosives (Slawinski), postal materials (Chen), and general refuse (Hansen) were all similar, focusing on strength and durability, making the combination obvious.

4. Key Claim Construction Positions

• "ribbons ... devoid of low melting temperature bonding layers between the crossed ribbons": Petitioner argued that the broadest reasonable construction is "ribbons that do not necessarily incorporate layers of low melting temperature bonding layers." This was based on the specification's complete silence regarding such layers and the Patent Owner's prosecution history arguments, which distinguished prior art by stating the claimed invention simply did not require them.
• "wherein the stitch count for said bag is 100 per inch": Petitioner argued this term should be construed as "100 per square inch." This construction was proposed because a literal reading of 100 stitches per linear inch was physically inconsistent with the ribbon dimensions (3-6 mm wide) disclosed in the patent's own embodiment, which would only allow for approximately 4-8 ribbons per linear inch.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. Although several secondary references (Planeta '665, Planeta '979, Abele, and Hansen) were considered by the examiner during original prosecution, Petitioner asserted that its grounds were not substantially the same as those previously presented. The petition's core arguments relied on new primary references, Slawinski and Chen, which were never cited or considered by the examiner. Petitioner contended that combining these new primary references with the previously-cited art constituted entirely new invalidity grounds.

6. Relief Requested

• Petitioner requested institution of an inter partes review of claims 1-20 of the ’327 patent and cancellation of each claim as unpatentable under 35 U.S.C. § 103.