Church & Dwight Co Inc v. Top Secret

1. Case Identification

• Case #: IPR2020-00168
• Patent #: 7,841,494
• Filed: November 20, 2019
• Petitioner(s): Church & Dwight Co., Inc.
• Patent Owner(s): Randall Batinkoff
• Challenged Claims: 1-11

2. Patent Overview

• Title: Pump Dispenser
• Brief Description: The ’494 patent is directed to a manually operated pump cap for dispensing cosmetic media, such as powder or fibers, from a receptacle. The device uses a deformable dome to pump air into the receptacle, which agitates the media and expels it through an outlet. Prosecution history indicates the claims were allowed solely after the addition of a limitation requiring the air pump tube to have a “flared out” top end.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 are obvious over Carsberg in view of Kross, Kress, and Lundblad.

• Prior Art Relied Upon: Carsberg (GB Patent # 748,530), Kross (Patent 2,223,256), Kress (Patent 7,140,522), and Lundblad (Patent 1,520,502).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Carsberg, a new primary reference not considered during prosecution, teaches the core elements of the claimed invention, including a pump cap with a deformable dome and an air pump tube. Critically, Petitioner asserted that Figure 2 of Carsberg expressly discloses a “flared out” top end on its air pump tube—the very feature upon which the ’494 patent was allowed. The secondary references were used to supply remaining claim limitations. Kross was cited for its disclosure of a specific two-part air intake tube structure. Kress was cited for teaching a media opening that is flush against the bottom side of the closure's top wall. Lundblad was cited for teaching a flange and lip mechanism for sealing the deformable dome to the closure.
  • Motivation to Combine: A POSITA would combine these references to create an improved and more efficient dispenser. For example, a POSITA would modify Carsberg’s design to incorporate the valved, multi-part air intake tube of Kross to enable quicker pump reset between compressions. Similarly, incorporating the flush media opening from Kress would be a predictable way to improve the direction and flow of expelled media from the device.

Ground 2: Claims 1-11 are obvious over Lundblad in view of Kross and Kress.

• Prior Art Relied Upon: Lundblad (Patent 1,520,502), Kross (Patent 2,223,256), and Kress (Patent 7,140,522).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented Lundblad as an alternative primary reference that was also not before the Examiner. Petitioner contended that Lundblad’s Figure 2 clearly illustrates a "flared out" top end on its air pump tube (extension 22) where it enters the dome chamber. Lundblad was also argued to teach other base elements like the deformable dome and pump cap structure. The secondary references Kross and Kress were relied upon for the same features as in Ground 1: Kross for the air intake tube design and Kress for positioning the air pump tube to direct airflow onto the media and for the flush media outlet.
  • Motivation to Combine: A POSITA would combine the teachings to improve the functionality of Lundblad’s liquid dispenser for use with powders or fibers, or simply to enhance its overall performance. For instance, incorporating the air intake structure from Kross would provide greater flexibility in valve choice and placement compared to Lundblad’s top-mounted valve. Adopting the direct air expulsion method from Kress would be an obvious way to adapt Lundblad for dispensing powders.

Ground 3: Claims 1-11 are obvious over the Examiner’s Invalidating Art in view of known manufacturing features.

• Prior Art Relied Upon: The "Examiner's Invalidating Art" consisting of Kross (Patent 2,223,256), Perritt (Patent 2,098,160), Kress (Patent 7,140,522), and evidence of common knowledge regarding rounded edges or "fillets" in injection molding.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that the Examiner had already found that the combination of Kross, Perritt, and Kress taught every limitation of the claims except for the "flared out" top end of the air pump tube. This ground argued that the "flared out" feature is nothing more than a rounded edge or "fillet," which was a well-known and conventional feature in injection-molded parts at the time of the invention. Petitioner supported this by pointing to the Patent Owner's own broad interpretation of "flared out" in co-pending litigation to include such fillets.
  • Motivation to Combine: A POSITA designing the claimed pump cap, which would typically be made of injection-molded plastic, would have been motivated to incorporate rounded edges or fillets as a matter of routine design practice. Such features were known to improve manufacturability by aiding mold filling, reducing stress concentrations, and increasing the durability of the final part. This would have been a simple and predictable design choice, not an inventive step.

• Additional Grounds: Petitioner asserted an additional obviousness challenge based on combining the Examiner's Invalidating Art with Lundblad, which was argued to explicitly supply the missing "flared out" limitation.

4. Key Technical Contentions (Beyond Claim Construction)

• Interpretation of "Flared Out": A central contention of the petition was the meaning of the term "flared out," for which the ’494 patent provides no written definition. Petitioner highlighted that in parallel district court litigation, the Patent Owner had argued that the term should be broadly construed to include any widening at the end of the air pump tube, such as a "fillet transition." Petitioner leveraged this litigation position, arguing that if the term is construed so broadly, it would have been an obvious and routine feature known from common injection molding practices, as asserted in Ground 3.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The petition asserted that its primary obviousness grounds relied on new primary prior art references, Carsberg and Lundblad, which were never presented to or considered by the Examiner. Crucially, these new references were argued to teach the specific "flared out" limitation that was the sole basis for allowance of the claims. Petitioner also noted that its other grounds relied on new evidence and arguments, including the Patent Owner's own claim construction positions from litigation, which were not before the Examiner.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’494 patent as unpatentable.