Yita LLC v. MacNeil IP

1. Case Identification

• Case #: IPR2020-01138
• Patent #: 8,382,186
• Filed: June 30, 2020
• Petitioner(s): Yita LLC
• Patent Owner(s): MacNeil IP LLC
• Challenged Claims: 1-7

2. Patent Overview

• Title: Vehicle Floor Tray
• Brief Description: The ’186 patent discloses a thermoformed vehicle floor tray designed to protect a vehicle’s interior. The tray features a central panel, upstanding side panels that conform to the vehicle footwell, a reservoir for collecting fluids, and a plurality of hollow baffles within the reservoir. A key feature is the tray having a substantially uniform thickness after the thermoforming process.

3. Grounds for Unpatentability

Ground 1: Obviousness over MacNeil - Claims 1-7 are obvious over MacNeil.

• Prior Art Relied Upon: MacNeil (Patent 7,444,748).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that MacNeil, which became prior art due to a priority date issue, disclosed every limitation of the challenged claims. MacNeil taught a thermoformed vehicle floor tray with a central panel (102, 1508) that conforms to the vehicle footwell, upstanding side panels (e.g., 134, 132) joined by curved transitions, a reservoir (110, 1522) in the central panel, and a plurality of upstanding, hollow, and elongate baffles (118, 1532) in the reservoir. Petitioner contended that MacNeil also disclosed the key limitation of "substantially uniform thickness" throughout the tray post-thermoforming. This was based on MacNeil's teaching that "the shape of the upper surface 1504 is always a reflection of the shape of the lower surface 1502," implying a constant offset and thus a uniform thickness across all components, including the panels, reservoir, and baffles.
  • Motivation to Modify: Petitioner asserted that even if MacNeil did not explicitly require uniform thickness, a person of ordinary skill in the art (POSITA) would have been motivated to modify MacNeil's design to achieve it. Thermoforming is known to cause non-uniform thinning, creating weak points in the final product. A POSITA would have sought to produce a more durable floor tray by eliminating these weak points, leading them to employ known techniques to ensure a balanced material distribution and substantially uniform thickness. This modification would improve the tray's durability and reduce the likelihood of tearing.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in achieving this uniform thickness. The prior art described well-known techniques for controlling wall thickness during thermoforming, such as billow prestretching and reverse draw with plug-assist forming. Applying these standard, predictable manufacturing processes to the tray disclosed in MacNeil would have resulted in the claimed invention.

4. Key Claim Construction Positions

• “thicknesses . . . being substantially uniform throughout the tray”: Petitioner argued this phrase should be given its ordinary and customary meaning. Citing the specification, prosecution history, and dictionary definitions, Petitioner contended the phrase requires a uniformity in thickness that approaches complete uniformity. This construction is critical, as the natural tendency of thermoforming is to produce non-uniform thicknesses. Achieving the claimed "substantially uniform" thickness, therefore, is not an inherent result of the process but a specific, claimed outcome that Petitioner argued was nonetheless obvious to achieve for its known benefits.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: The central technical contention was that the ’186 patent was not entitled to the filing date of its parent applications. Petitioner argued that the limitation requiring the tray to have a "substantially uniform thickness" after thermoforming was not described, either explicitly or inherently, in the parent (’899) application. That application only described the starting thermoplastic sheet as having a uniform thickness. Because thermoforming inherently creates non-uniform thinning unless specific countermeasures are taken, a description of a uniform starting sheet did not provide written description support for a uniform final product. As this limitation was new matter added in the application leading to the ’186 patent, the patent’s effective filing date was August 27, 2012. This made the MacNeil patent, issued in 2008, available as prior art under pre-AIA 35 U.S.C. §102(b).

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The core of the petition rested on the assertion that the ’186 patent was not entitled to its claimed priority date, which made the MacNeil patent available as prior art. Petitioner contended that there was no indication the examiner ever considered this priority date issue or ever applied MacNeil as prior art during prosecution. Therefore, the art and arguments presented in the petition were not the same as, or cumulative to, those previously considered by the USPTO.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of the ’186 patent as unpatentable.