WABCO Holdings Inc v. Transtex Composite Inc

1. Case Identification

• Case #: IPR2018-01319
• Patent #: 8,449,017
• Filed: June 29, 2018
• Petitioner(s): WABCO Holdings Inc. and Laydon Composites Ltd.
• Patent Owner(s): Transtex Composites Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Aerodynamic Trailer Skirt with Resilient Strut
• Brief Description: The ’017 patent relates to aerodynamic skirts for road trailers designed to reduce air drag. The invention is directed to the use of resilient struts or supports that secure the skirt panels to the underside of the trailer, allowing the skirt to flex upon impact and return to its original position.

3. Grounds for Unpatentability

Ground 1: Anticipation by Layfield - Claims 1-20 are unpatentable under 35 U.S.C. §102 over Layfield.

• 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. Independent claim 1 recites a "resilient strut" that can sustain elastic deformation and self-recover. Petitioner asserted that Layfield's strut 58, which is made from thermoplastic materials like ABS or TPO, inherently possesses these resilient properties. Layfield's disclosure of panels that are flexible enough to bend when maneuvering over objects like curbs and then recover their shape, supported by struts made of these materials, was argued to meet the claim limitations. Petitioner further contended that Layfield's U-shaped, tapered, and cross-membered strut design constitutes a "longitudinal shape variation" that influences stiffness, as required by claim 1. Arguments for independent claims 11 and 17 followed a similar logic, mapping Layfield's disclosed skirt and strut system to the recited claim elements.
  • Key Aspects: The core of this ground is the technical argument that the thermoplastic materials disclosed for the strut in Layfield were well known by a person of ordinary skill in the art (POSITA) to be resilient, thereby rendering Layfield's strut a "resilient strut" as claimed.

Ground 2: Obviousness over Layfield and Rinard - Claims 1-20 are obvious over Layfield in view of Rinard.

• Prior Art Relied Upon: Layfield (Patent 7,578,541) and Rinard (Patent 5,280,990).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Layfield provides the basic structure of an aerodynamic trailer skirt with support struts, as detailed in Ground 1. To the extent Layfield is found not to explicitly teach the required degree of resilience, Rinard remedies this deficiency. Rinard discloses aerodynamic scoops for a trailer made from a "resilient material" that allows them to collapse upon impact with an external structure (like a loading dock) and then resume their original configuration.
  • Motivation to Combine: A POSITA would combine Layfield and Rinard because both address the same problem in the same field: designing aerodynamic trailer fairings that can withstand real-world impacts. Rinard explicitly teaches the benefit of using resilient materials to allow fairing components to collapse and recover. A POSITA would have been motivated to apply this explicit teaching from Rinard to Layfield's skirt and strut design to improve its durability and functionality, a known problem with a predictable solution.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making Layfield's system resilient. Layfield already discloses suitable thermoplastic materials (e.g., TPO, HMW polyethylene) known for their flexibility and resilience. Applying Rinard's motivation to use such materials for impact resistance would be a predictable application of known technology to achieve a known benefit.

4. Key Claim Construction Positions

• "resilient strut" / "resilient support": Petitioner argued these terms should be construed to mean a strut or support that can flex or deform in response to a load and return to its original position after the load is removed. Petitioner contended that this construction aligns with the patent's specification and the plain and ordinary meaning understood by a POSITA. This construction is central to Petitioner's argument that Layfield's thermoplastic strut anticipates the claims.
• Prosecution History: Petitioner highlighted that during prosecution of related patents, the Patent Owner successfully argued that Layfield taught a "rigid strut" to overcome rejections. Petitioner asserted that the Patent Owner has now adopted a contrary position in co-pending litigation by accusing products based on Layfield's teachings of infringement, and that the ordinary meaning of "resilient strut" should apply in the IPR.
• "embossed portion": Petitioner proposed this term should mean a portion that stands out in relief relative to an adjacent portion, based on its dictionary definition, as the patent provides no specific manufacturing details.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that denial under 35 U.S.C. §325(d) would be inappropriate because the petition presented new arguments and evidence not previously considered by the PTO. This new evidence included an expert declaration opining on the inherent properties of the materials disclosed in Layfield, which Petitioner argued was critical information the PTO lacked when it previously allowed the claims. Furthermore, Petitioner presented a new prior art combination (Layfield in view of Rinard) that had not been considered during prosecution or reexamination.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 8,449,017 as unpatentable.