Termax Co v. Illinois Tool Works Inc

1. Case Identification

• Case #: IPR2021-XXXX
• Patent #: D897,826
• Filed: October 26, 2021
• Petitioner(s): Termax Company
• Patent Owner(s): Illinois Tool Works Inc.
• Challenged Claims: 1

2. Patent Overview

• Title: FASTENER
• Brief Description: The ’826 patent claims the ornamental design for a push-in type automotive fastener, often referred to as a "W-base" retainer. The claimed design consists of an upper rectangular head platform connected by a cylindrical post to a lower circular collar platform, intended for securing vehicle trim to body panels.

3. Grounds for Unpatentability

Ground 1: The claim is anticipated by Scroggie under 35 U.S.C. §102.

• Prior Art Relied Upon: Scroggie (Application # US 2008/0066266).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that after properly construing the claim to exclude functional elements, Scroggie anticipates the remaining ornamental design. The core of this argument rested on the assertion that the lower stepped circular platform of the ’826 patent is dictated by function, as its shape is required to mate with an unclaimed circular perimeter seal. With this functional platform excluded from the claim's scope, Petitioner contended that the remaining ornamental features—primarily the upper head—are visually identical to the fastener design disclosed in Scroggie. Petitioner provided a side-by-side comparison showing that both designs feature an upper rectangular platform with two pairs of U-shaped notches, a beveled top perimeter, inclined leading and trailing bottom edges, and a cylindrical post with an annular rib at its base.
  • Key Aspects: This ground’s success is entirely dependent on the Petitioner’s proposed claim construction, which filters out the primary structural difference between the patented design and the prior art reference.

Ground 2: The claim is obvious over Scroggie in view of Benedetti under 35 U.S.C. §103.

• Prior Art Relied Upon: Scroggie (Application # US 2008/0066266) and Benedetti (Patent 8,561,265).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground proceeded on the alternative assumption that the lower platform is part of the claimed design. Petitioner asserted Scroggie as the primary reference, arguing it is "basically the same" as the claimed design, disclosing a fastener with a similar rectangular upper head. The principal difference identified was the geometry of the lower platform (rectangular in Scroggie versus stepped-circular in the ’826 patent). Benedetti, which relates to the same field of automotive fasteners, was introduced as a secondary reference because it explicitly teaches a stepped-circular lower platform.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references to improve the sealing function of the Scroggie fastener. Scroggie taught using a foam seal, whereas Benedetti disclosed a superior "umbrella seal" that mounts on its taught stepped-circular lower platform. A POSITA would be motivated to replace Scroggie's foam seal with Benedetti's umbrella seal for better performance. To properly accommodate the circular umbrella seal, the POSITA would have necessarily replaced Scroggie’s rectangular lower platform with the stepped-circular platform from Benedetti, resulting in the design claimed in the ’826 patent.
  • Expectation of Success: Because both references concern push-in automotive fasteners and address sealing, a POSITA would have a reasonable expectation of success in combining a known superior seal (and its corresponding mounting platform) from Benedetti with the fastener body of Scroggie.

Ground 3: The claim is obvious over Benedetti in view of Scroggie under 35 U.S.C. §103.

• Prior Art Relied Upon: Benedetti (Patent 8,561,265) and Scroggie (Application # US 2008/0066266).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented Benedetti as a primary reference that establishes the overall appearance of the claimed design, particularly its distinctive stepped-circular lower platform and post. The main difference noted was the shape of the upper head; Benedetti depicts a circular head, while the ’826 patent claims a rectangular head with notches. Scroggie was used as a secondary reference to supply the specific rectangular head design. Although Benedetti shows a circular head, its specification stated the head is "not limited to any geometric shape."
  • Motivation to Combine: A POSITA would modify Benedetti’s fastener by incorporating Scroggie’s rectangular head for both functional and aesthetic reasons. Functionally, a rectangular head as taught by Scroggie prevents the fastener from rotating within a molding channel, which is a known issue in the art. The notches taught in Scroggie further help to fix the fastener's orientation. Aesthetically, the rectangular head would provide a visual counterpoint to the circular lower platform.
  • Expectation of Success: A POSITA would have a high expectation of success in substituting one head shape for another on a known fastener design, particularly when the primary reference explicitly contemplates alternative head geometries.

4. Key Claim Construction Positions

• Petitioner dedicated a substantial portion of the petition to arguing that claimed design features dictated by function should be excluded from the scope of the design claim when assessing patentability.
• The central focus was on the "lower stepped circular platform," which Petitioner argued is purely functional. The argument was twofold: (1) its specific shape and stepped configuration are dictated by the need to mate with the unclaimed, disclaimed perimeter seal, and (2) the platform is hidden from view during the fastener's normal use, and thus cannot be ornamental.
• This construction was foundational to Petitioner's anticipation argument (Ground 1), which required filtering out the lower platform to find the remaining design in the prior art.

5. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially the Same Art: Petitioner argued that denial under §325(d) was not warranted because the primary reference, Scroggie, was not before the Examiner during prosecution. The petition therefore presented new issues and prior art that warrant institution.
• §314(a) - Fintiv Factors: Petitioner argued that the Fintiv factors weighed against discretionary denial. The parallel district court litigation involving the ’826 patent had been stayed pending the outcome of a separate inter partes review (IPR) on a related patent. Because of the stay, there was no scheduled trial date, and the investment by the court and parties in the litigation was minimal. Petitioner asserted these factors strongly favor institution of the IPR to efficiently resolve the validity dispute.

6. Relief Requested

• Petitioner requested the institution of an IPR and cancellation of the claim of the ’826 patent as unpatentable.