Bestway USA Inc v. Intex Marketing Ltd

1. Case Identification

• Case #: IPR2020-01416
• Patent #: 10,165,869
• Filed: August 4, 2020
• Petitioner(s): Bestway USA, Inc.
• Patent Owner(s): Intex Marketing Ltd.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Inflatable Product with Tensioning Structure
• Brief Description: The ’869 patent discloses inflatable products, such as air mattresses, that use an internal tensioning structure to maintain shape. The structure is formed by connecting two plastic sheets with spaced-apart strands (e.g., strings, wires), which provide high tensile strength and allow for the use of thinner, lighter materials compared to prior art tensioning structures.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-5, and 8-12 are obvious over Hanlie in view of Fireman.

• Prior Art Relied Upon: Hanlie (China Patent CN 2676755Y) and Fireman (Application # 2004/0040082).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hanlie disclosed the core limitations of independent claim 1, including an inflatable mattress with top and bottom PVC sheets spaced apart to form a gap, and internal tensioning straps spanning that gap. Hanlie’s straps were described as a three-layer structure with a "mesh" core sandwiched between two outer PVC layers, which are fused together. While Hanlie taught the general structure, it did not detail the specific layout of its mesh. Petitioner asserted that Fireman, which disclosed a three-layer PVC-mesh-PVC structure for a self-rising swimming pool, supplied the missing detail. Fireman taught a conventional square grid mesh made of polyester threads, satisfying the claim limitation of a "plurality of strands uniformly spaced apart and arranged substantially parallel." The combination also met limitations in dependent claims, such as the holes in the mesh (claim 2) and the presence of reinforcement strands (the horizontal components of Fireman's grid mesh, claim 9).
  • Motivation to Combine: Petitioner contended that because Hanlie did not specify its mesh structure, a person of ordinary skill in the art (POSITA) would have looked to other prior art for a suitable mesh to implement in Hanlie's tensioning strap. Fireman was presented as an ideal reference, as it taught using a conventional square grid mesh within a PVC-laminated structure for a similar inflatable product, providing predictable strength and durability.
  • Expectation of Success: A POSITA would have a high expectation of success because combining Fireman's well-known square grid mesh with Hanlie's tensioning strap structure was a simple substitution of one known element for another to yield predictable results.

Ground 2: Claims 6-7 are obvious over Hanlie in view of Fireman and Boso.

• Prior Art Relied Upon: Hanlie (China Patent CN 2676755Y), Fireman (Application # 2004/0040082), and Boso (Application # 2003/0188388).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Hanlie and Fireman combination to address limitations in claims 6 and 7. Claim 6 required an upper "sleeping surface" and a lower "ground-contacting surface." Claim 7 further required the upper sheet to be a "double layered construct" forming a second inflatable chamber. Petitioner asserted that Boso disclosed an inflatable pillow-top mattress with a textured top surface and a double-layered upper component that formed a separate inflatable chamber. This structure, when applied to the Hanlie/Fireman mattress, would render claims 6 and 7 obvious.
  • Motivation to Combine: A POSITA would combine Boso with Hanlie and Fireman to improve the comfort and appearance of the mattress. Boso explicitly taught the desirability of a "pillow top" look and feel, providing a clear motivation to add its double-layered upper chamber to Hanlie's basic mattress design.
  • Expectation of Success: The combination involved applying a known technique (adding a pillow-top chamber) to a known device (an air mattress with internal straps) to achieve a predictable improvement in comfort and aesthetics.

Ground 3: Claim 15 is obvious over Hanlie in view of Fireman and Liu.

• Prior Art Relied Upon: Hanlie (China Patent CN 2676755Y), Fireman (Application # 2004/0040082), and Liu (Application # 2007/0277324).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claim 15, which depended from claim 1 and added limitations requiring the weld sheets to have a width corresponding to the overall width of the strands, and for the tensioning structure to include a "plurality of weld strips." Petitioner argued that Liu disclosed using additional "extending parts" (weld strips) to reinforce the connection points of internal beams in air mattresses, addressing a known failure point in prior art designs like Hanlie's U-shaped or Z-shaped strap attachments.
  • Motivation to Combine: Petitioner argued that Liu identified a specific problem with the type of strap attachments used in Hanlie—high stress at the seams leading to tearing. Liu provided an explicit solution: adding L-shaped extending parts (weld strips) to increase the connecting area and improve durability. A POSITA would be motivated to apply Liu’s solution to improve the known Hanlie mattress design.
  • Expectation of Success: A POSITA would expect success because it involved using a known technique (Liu’s reinforcing strips) to improve a similar device (Hanlie’s mattress) to solve a known problem, yielding the predictable result of a stronger, more durable product.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges against claims 1-30 based on various combinations of Hanlie, Fireman, Boso, Liu, Kuriyama, Song, Pennel, and the background knowledge of a POSITA. These grounds relied on similar theories, primarily introducing additional references to teach specific features like material thicknesses (Kuriyama), alternative reinforcement structures (Song), and the use of individual tension ties instead of a mesh (Pennel).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §325(d) because, although Hanlie and Fireman were cited in Information Disclosure Statements during prosecution, the examiner materially erred by overlooking their specific teachings. The examiner never issued a prior art rejection and instead relied on reasons for allowance from a parent case that did not consider these references, which directly address the alleged novelty of the ’869 patent’s "sandwich" structure.
• Petitioner also argued against discretionary denial under §314(a) (Fintiv), stating that the co-pending district court litigation was in its early stages with no trial date set, and that the invalidity contentions in the litigation were not duplicative of the grounds raised in the IPR petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’869 patent as unpatentable.