Husky Injection Molding Systems Ltd v. Plastipak Packaging Inc

1. Case Identification

• Case #: IPR2020-00432
• Patent #: 9,522,759
• Filed: January 17, 2020
• Petitioner(s): Husky Injection Molding Systems, Ltd. and Husky Injection Molding Systems, Inc.
• Patent Owner(s): Plastipak Packaging, Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Lightweight Plastic Container and Preform
• Brief Description: The ’759 patent relates to lightweight plastic containers and the preforms used to create them. The invention aims to reduce the overall weight and lower the center of gravity of the container by specifying particular dimensional relationships and weight characteristics for the container's neck portion.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 4-5, 7, 10-11, 13-15, 18, 20, 23, and 25-27 under 35 U.S.C. §102 by COLLOUD

• Prior Art Relied Upon: COLLOUD (French Patent No. 2,846,946).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that COLLOUD, a French patent teaching methods for lightweighting plastic bottle neck finishes, explicitly discloses every limitation of the challenged claims. Specifically, Petitioner contended that by summing the lowest values of the component height ranges disclosed in COLLOUD (H1-H6), the resulting total vertical neck height is 14.11mm (0.56 inches), which falls within the claimed limitation of "0.58 inches or less" in independent claim 1. Petitioner further asserted that COLLOUD discloses a neck portion weight of 3.0 grams or less, a container volume of at least 500 ml, and all features required by the challenged dependent claims, such as specific flange diameters and the use of PET material.
  • Key Aspects: The argument relied on the assertion that a Person of Ordinary Skill in the Art (POSITA) would envisage a species (the lightest possible version) from the genus of dimensional ranges disclosed in COLLOUD, thereby anticipating the claims.

Ground 2: Obviousness of Claims 1-5, 7-8, 10-11, 13-18, 20-21, 23, and 25-27 under 35 U.S.C. §103 over COLLOUD

• Prior Art Relied Upon: COLLOUD (French Patent No. 2,846,946).
• Core Argument for this Ground:
  • Prior Art Mapping: As an alternative to anticipation, Petitioner argued that even if COLLOUD’s preferred embodiment (with a vertical neck height of 15.4-16.2mm, or 0.606-0.638 inches) falls just outside the claimed range of "0.58 inches or less," the claims are obvious. Petitioner asserted that COLLOUD teaches that neck height is a result-effective variable, meaning that reducing neck height predictably reduces neck weight, which was a well-known goal in the art. The petition argued that optimizing a known result-effective variable to achieve a desired, predictable result is not inventive.
  • Motivation to Combine (for §103 grounds): The motivation was inherent in COLLOUD's primary teaching: to reduce plastic usage and cost. COLLOUD explicitly stated that "an even lower weight can be obtained if we reduce the diameter of the neck finish," teaching a POSITA to modify known parameters to achieve further lightweighting.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the relationship between reducing neck dimensions and reducing weight is a simple matter of physics, and COLLOUD provided a detailed guide for optimizing these variables.

Ground 3: Obviousness of Claims 1-30 under 35 U.S.C. §103 over The US Standard in view of COLLOUD

• Prior Art Relied Upon: The US Standard (Voluntary Standard Flatwater Finish PCF-26P-1) and COLLOUD (French Patent No. 2,846,946).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented an expert analysis that modeled an "Optimized US Standard" preform by applying the explicit lightweighting principles from COLLOUD to the dimensions of The US Standard, a common preform finish with a narrower neck diameter than the European standard discussed in COLLOUD. Petitioner argued this modeling demonstrated that a POSITA, following COLLOUD's instructions, would have arrived at a preform meeting every numerical limitation of all 30 challenged claims, including neck height, neck weight, total container weight, and Center of Gravity/Height ratio.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references because COLLOUD expressly taught that its lightweighting techniques could be applied to neck finishes with smaller diameters to achieve even greater weight savings. The US Standard represented a well-known, smaller-diameter standard, making it an obvious candidate for applying COLLOUD's optimization methods, especially given strong economic and market pressures to reduce plastic use.
  • Expectation of Success (for §103 grounds): Success was expected because the combination involved applying known optimization principles to a standard bottle design, a task Petitioner’s expert described as routine for a POSITA in the field.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining COLLOUD with Ryder (Patent 4,756,438) for claims requiring a discontinuous tamper-evident bead, with the Admitted Prior Art of the ’159 Patent for claims requiring a specific Center of Gravity/Height Ratio, and with Durand (WO 2005/047120) for claims requiring a specific total container weight.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §325(d). Although the French-language version of COLLOUD was submitted in an Information Disclosure Statement (IDS) during prosecution, Petitioner contended it was never properly considered by the Examiner. The arguments were that only an abstract was translated, the reference was never used in a rejection, it is not cumulative to the art that was applied (the Brewster patent), and it directly contradicts arguments made by the Patent Owner during prosecution regarding the state of the art.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-30 of the ’759 patent as unpatentable.