Yita LLC v. MacNeil IP LLC

1. Case Identification

• Case #: IPR2020-01142
• Patent #: 8,833,834
• Filed: June 30, 2020
• Petitioner(s): Yita LLC
• Patent Owner(s): MacNeil IP LLC
• Challenged Claims: 1-15

2. Patent Overview

• Title: Vehicle Floor Tray
• Brief Description: The ’834 patent relates to a vehicle floor tray designed to protect a vehicle's interior footwell. The tray is molded from a sheet of polymeric material to conform to the footwell's shape and features upstanding walls, with a key inventive feature being the tray’s "substantially uniform thickness."

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 5, 8, 9, and 12-15 are obvious over Rabbe in view of Yung and Gruenwald.

• Prior Art Relied Upon: Rabbe (French Application # 2,547,252), Yung (Application # 2002/0045029), and Gruenwald (a 1998 treatise on thermoforming).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rabbe taught the core concept of a protective floor tray with upstanding walls that "perfectly conform" to the contours of a vehicle's footwell, satisfying the shape and close-fit limitations of independent claim 1. Yung taught manufacturing such mats from thermoplastic materials (e.g., polyethylene) using a thermoforming process, and further disclosed desirable features like a recessed reservoir for collecting liquid and hollow baffles ("umbos") to elevate an occupant's feet. Gruenwald, a treatise on thermoforming, explicitly described the known problem of non-uniform thinning during the process and detailed established techniques (e.g., plug-assist forming, pre-stretching) to control thinning and achieve a part with "substantially uniform" wall thickness, directly teaching a key limitation of the ’834 patent.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA), starting with Rabbe's conforming tray design, would be motivated to use the cost-effective thermoforming process and common thermoplastic materials taught by Yung. Upon encountering the known issue of wall thinning inherent in thermoforming, a POSA would have consulted a standard reference like Gruenwald to implement well-known techniques to produce a tray with the desired substantially uniform thickness, which improves product strength and durability. A POSA would also incorporate Yung's reservoir and hollow baffle features to improve the function of Rabbe's tray, as these were known, predictable improvements.
  • Expectation of Success: A POSA would have had a high expectation of success, as the combination involved applying established manufacturing processes (thermoforming) and problem-solving techniques (thickness control from Gruenwald) to a well-known product class (vehicle floor mats from Rabbe and Yung) to achieve predictable results.

Ground 2: Claims 2, 3, 6, 7, 10, and 11 are obvious over the combination of Rabbe, Yung, and Gruenwald in further view of Sturtevant.

• Prior Art Relied Upon: Rabbe (French Application # 2,547,252), Yung (Application # 2002/0045029), Gruenwald (a 1998 treatise), and Sturtevant (Patent 2,657,948).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Sturtevant to address dependent claims reciting a "sill plate panel" and a "sill curve panel." Sturtevant disclosed a vehicle sill mat made from a yieldable material that is integrated with the main floor mat and extends horizontally to cover the vehicle's door sill. This teaching directly corresponded to the claimed sill plate panel that conforms to the vehicle's sill plate and the transitional "sill curve" between the footwell wall and the sill.
  • Motivation to Combine: Petitioner contended that a POSA, seeking to improve the tray from Ground 1, would be motivated to incorporate Sturtevant’s teachings to achieve one of Rabbe's primary goals: complete protection of the vehicle interior. Extending the tray to cover the door sill would prevent fluid from escaping the tray and protect the sill itself. Furthermore, using a flat, integrated sill panel as taught by Sturtevant, rather than an upstanding wall, would avoid creating a tripping hazard during vehicle ingress and egress, representing a simple and logical design modification.
  • Expectation of Success: Combining Sturtevant's sill cover—a known feature for vehicle mats—with the thermoformed tray from Ground 1 was a routine alteration. A POSA would expect predictable success in creating an integrally molded tray that fully protects the footwell and sill area.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the term "thickness...being substantially uniform throughout the tray" as central to its obviousness contentions.
• Petitioner asserted this term should be given its ordinary meaning, where "uniform" means not varying and "substantially" means to a great extent, resulting in a construction of "a uniformity in thickness approaching complete uniformity." This construction was critical because Petitioner argued that while standard thermoforming causes non-uniform thickness, the prior art (Gruenwald) explicitly taught specific, known techniques to overcome this issue and achieve the claimed substantially uniform thickness, rendering the invention obvious.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the core prior art and arguments were not previously considered by the USPTO.
• Specifically, Petitioner noted that the primary references of Rabbe and Gruenwald were never before the Examiner during prosecution. Petitioner emphasized that Rabbe disclosed the very limitation—having at least 90 percent of the upper tray walls within one-eighth of an inch of the footwell walls—that the Examiner relied upon as the sole reason for allowance, making its consideration in this inter partes review (IPR) particularly relevant.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review and find claims 1-15 of the ’834 patent unpatentable.