Helen Of Troy Ltd v. TomY Intl Inc

1. Case Identification

• Case #: IPR2021-01208
• Patent #: 9,545,176
• Filed: July 28, 2021
• Petitioner(s): Helen of Troy Limited
• Patent Owner(s): BKD Acquisition, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: BATHTUB
• Brief Description: The ’176 patent describes a collapsible, portable bathtub for infants. The invention combines a container with a "water impervious, rigid bottom surface" and a plurality of leg assemblies, with both the container and legs being movable between collapsed and deployed positions.

3. Grounds for Unpatentability

Ground 1: Claims 1–8 and 10–21 are Anticipated under 35 U.S.C § 102 by Song

• Prior Art Relied Upon: Song (Published Japanese Utility Model Registration Application JP, 55-079291, U1 (1980)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Song, a reference describing a "Folding Bathtub," discloses every limitation of the challenged claims. A key argument focused on the "water impervious, rigid bottom surface" limitation, which was the basis for allowance during prosecution. Petitioner asserted Song's bottom surface is rigid, evidenced by: (1) figures showing a perfectly flat bottom surface without sagging, (2) the use of a cross-hatching pattern in drawings that, per MPEP conventions, indicates a rigid material like metal, and (3) text distinguishing Song from prior art with undesirable "flexible" containers. Petitioner further argued Song discloses leg assemblies that are movable between collapsed and deployed positions, are pivotally coupled to the frame, and extend away from the centerline when deployed. Dependent claim features, such as a locking mechanism (wing bolts) and an impervious sidewall, were also alleged to be explicitly taught by Song.
  • Key Aspects: The core of this ground is that Song is a single, decades-old reference that was never considered during prosecution and allegedly discloses the very feature—a rigid bottom—that overcame prior art rejections.

Ground 2: Claims 1–21 are Obvious under 35 U.S.C. § 103 over Song in view of Kilion

• Prior Art Relied Upon: Song, and Kilion (Patent 7,032,259).
• Core Argument for this Ground:
  • Prior Art Mapping: To the extent Song is found not to teach certain claim elements, Petitioner argued Kilion supplies them. Kilion discloses a standalone, collapsible infant bathtub with features designed to improve safety and ease of use. Specifically, if Song’s single-leg assemblies are deemed different from the claimed configuration, Kilion teaches leg assemblies comprising two legs each. If Song’s legs are found not to extend outward at an angle greater than 90 degrees, Kilion explicitly discloses outwardly slanted legs to create a wider, more stable footprint. Kilion also teaches making the legs adjustable to raise the bathtub, making it easier for a caregiver.
  • Motivation to Combine: A POSITA designing an infant bathtub based on Song would combine its teachings with Kilion to improve safety and functionality. Kilion explicitly states that features like adjustable height and stable, outwardly-angled legs make bathing an infant "easier for the caretaker and safer for the child." This provided a strong motivation to incorporate Kilion’s known stability and convenience features into Song’s collapsible design to create a safer, more user-friendly product.
  • Expectation of Success: The combination involved applying known and predictable design elements (e.g., stable leg configurations) from one infant bathtub (Kilion) to another (Song). A POSITA would have a reasonable expectation of success in integrating these features, as it was a simple substitution of known components to achieve a predictable improvement in stability and ergonomics.

Ground 3: Claims 5–6 and 16–17 are Obvious under 35 U.S.C. § 103 over Song in view of Kilion and Kasai

• Prior Art Relied Upon: Song, Kilion, and Kasai (Published Japanese Patent Application No. JP2006-296873).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claims requiring the bathtub’s bottom surface to be "movable between a substantially horizontal position... and an inclined position." While Petitioner argued this feature is inherent in Song’s independently adjustable legs, Kasai was introduced as an additional reference explicitly teaching this functionality. Kasai discloses a portable infant bathtub with a bottom surface that can be moved into an inclined position and fixed in place.
  • Motivation to Combine: Kasai explicitly taught that inclining the tub is advantageous for safely washing an infant's head and preventing water from entering the eyes or nose. A POSITA seeking to improve the Song/Kilion combination would be motivated to incorporate Kasai’s incline feature to add a known safety and convenience benefit, particularly for bathing very young infants who cannot support their own heads.
• Additional Grounds: Petitioner asserted that claims 1-21 are obvious over Song alone, arguing that to the extent any element was not explicitly disclosed in Song, its inclusion would have been an obvious design choice to a POSITA.

4. Key Claim Construction Positions

• "extending from the container in a direction away from the centerline": Petitioner argued this phrase requires only that the legs pivot or move to a position further from the centerline when deployed than when collapsed. This construction, supported by the examiner's reasoning during prosecution, does not require the legs to be angled outward at greater than 90 degrees in their final deployed state. Petitioner contended this interpretation is necessary to avoid rendering dependent claim 9, which explicitly adds the >90-degree limitation, superfluous.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under § 325(d) would be inappropriate because the petition raises new arguments based on art not previously considered by the USPTO. The primary reference, Song, was never before the examiner. While Kilion was listed in an IDS, it was never used as the basis for a rejection or substantively analyzed, particularly not in combination with Song. Therefore, the asserted grounds were new and not substantially the same as arguments previously presented to the Office.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of the ’176 patent as unpatentable.