PTAB

IPR2020-01234

Nested Bean Inc v. Big Beings USA Pty Ltd

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1. Case Identification

2. Patent Overview

  • Title: Swaddling Suit
  • Brief Description: The ’711 patent discloses an infant swaddling suit having an upper bodice portion and two "wing portions" to enclose the infant's arms. The allegedly novel feature, added during prosecution to overcome prior art, is that the tips of the wing portions are positioned "above a level of the neck hole" of the suit.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-18 under §102

  • Prior Art Relied Upon: Parks (Patent 2,225,884).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Parks, a reference not considered during prosecution, teaches every limitation of the challenged claims. Parks discloses a "sleeping cover for infants" with an upper portion, a bodice portion, and "arm pockets" that function as the claimed wing portions. Critically, Petitioner asserted that the figures in Parks show these arm pockets extending above the neck opening, thus teaching the key limitation used to grant the ’711 patent. Parks also allegedly discloses the suit tapering at the waist, being made of a single layer of resilient material (including elasticated yarn), and including features for child restraints, thereby anticipating the dependent claims as well.

Ground 2: Obviousness of Claims 1-6, 8-11, and 12-16 under §103

  • Prior Art Relied Upon: Parks (Patent 2,225,884) in view of Moss (WO 2007/098558).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Moss was the closest prior art cited by the examiner, disclosing nearly every element of the claims, such as a swaddling suit with a bodice, wing portions, and a tapered waist. The only limitation the examiner found missing in Moss was the wing tips being positioned above the level of the neck hole. Parks, however, explicitly teaches this feature with its elevated arm pockets.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Parks and Moss. Both references disclose infant sleeping garments with similar structures and objectives. It was well-known that infants often sleep in a "hands-up" position, and Parks was designed to accommodate this. A POSITA would have been motivated to modify the swaddle of Moss with the elevated arm pocket design of Parks to achieve the known benefits of a hands-up swaddle, such as suppressing the startle reflex while allowing self-soothing.
    • Expectation of Success: The combination involved predictable design choices in the simple field of infant clothing. A POSITA would have had a high expectation of success in incorporating Parks's elevated wing design into Moss's garment structure.

Ground 3: Obviousness of Claims 1-6, 8-11, and 12-16 under §103

  • Prior Art Relied Upon: Parks (Patent 2,225,884) in view of Moss (WO 2007/098558) and Greiert (Patent 3,259,126).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds upon the combination of Moss and Greiert, which the examiner had already found to be an obvious combination during prosecution. Greiert teaches an infant garment with its narrowest region at the waist and a wide bottom, a feature designed to facilitate diaper changes without removing the garment. The combination of Moss and Greiert taught all limitations except for the wing tips positioned above the neck hole. Petitioner argued that Parks supplies this final missing element.
    • Motivation to Combine: A POSITA would have been motivated to modify the combined teachings of Moss and Greiert with the teachings of Parks. Greiert's teachings on waist tapering and a wide bottom are directly applicable to improving the functionality of a swaddle like that in Parks or Moss. A designer seeking to create an improved swaddling garment would look to related prior art like Greiert for features that improve convenience, such as easier diaper access, and combine them with the fundamental swaddle design of Moss and the beneficial hands-up wing position of Parks.
    • Expectation of Success: Combining these known features from closely related infant garments would have yielded predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Parks, Moss, and common sense (Ground 4), and combinations further including Beiring (Application # 2009/0064390) for claims related to resilient material (Grounds 5-6). These grounds relied on similar arguments that a POSITA would combine known features from the prior art to arrive at the claimed invention.

4. Key Claim Construction Positions

  • "Above A Level of the Neck Hole of Said Suit": Petitioner asserted this term is critical and must be construed based on its prosecution history. To overcome the final rejection over Moss, the Patent Owner was required to amend the claims from "above a shoulder line" to the much narrower "above a level of the neck hole." Petitioner argued this history dictates that the phrase must be construed to mean "above the highest point of the neck opening," as this was the only interpretation that could distinguish the claims from the prior art of record.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’711 patent as unpatentable.