Certor Sports LLC v. APalone Inc

1. Case Identification

• Case #: IPR2022-00196
• Patent #: 10,617,167
• Filed: November 15, 2021
• Petitioner(s): Certor Sports, LLC; Schutt Sports, LLC
• Patent Owner(s): Steven T. Baldi
• Challenged Claims: 1-11 and 18

2. Patent Overview

• Title: Ventilated Modular Dual Shelled Helmet System
• Brief Description: The ’167 patent discloses a modular helmet system designed to protect a wearer from impact and temperature-related injuries. The system features an inner shell and an outer shell spaced apart to define a "climatic zone," which can house cushioning elements and/or a cooling assembly.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Roth - Claims 7 and 10 are anticipated by or, in the alternative, obvious over Roth.

• Prior Art Relied Upon: Roth (Patent 2,625,683).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Roth, filed in 1947, discloses all limitations of a modular helmet as claimed. Roth’s "inner layer of resilient material" (18) was mapped to the claimed "inner shell," and its "layer of energy-absorbing material" (17) was mapped to the "cushion assembly." Petitioner asserted that Roth’s inner and outer shells are spaced apart to create a climatic zone and that Roth explicitly teaches a plurality of inner vents (ventilation channels 19) and outer vents (unplugged bolt openings) for cooling the wearer's head. For claim 10, Petitioner argued Roth discloses a different number of inner and outer vents, or that it would have been obvious to a POSITA to vary the number of vents for design purposes.
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued that any minor differences between Roth and the claims would have been obvious design choices. For claim 10, a POSITA would have been motivated to vary the number of inner and outer vents to optimize airflow, a well-known technique in helmet design.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in modifying vent configurations, as this was a common and predictable aspect of helmet engineering.

Ground 2: Anticipation over Princip - Claims 7, 10, and 11 are anticipated by Princip.

• Prior Art Relied Upon: Princip (Application # 2012/0017358).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Princip describes a protective helmet that meets every limitation of the challenged claims. Princip’s helmet includes an inner shell and an outer shell assembly that are radially spaced apart with a padding layer (“external energy absorbing layer”) in between, which functions as the claimed "cushion assembly." Princip explicitly discloses a plurality of inner vents and outer vents to allow for maximum airflow. For claim 11, Petitioner argued Princip’s disclosure of using screws (170) and nuts (171) to fasten the outer shell assembly to the inner shell constitutes an "attachment mechanism" that removably couples the shells.

Ground 3: Obviousness over Princip and Akamatsu - Claims 1-6, 8-9, and 18 are obvious over Princip in view of Akamatsu.

• Prior Art Relied Upon: Princip (Application # 2012/0017358), Akamatsu (Japanese Application # 2005-273119).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Princip provides the base modular helmet with all elements of claim 7, including inner and outer shells, a climatic zone, cushioning, and vents. However, Princip does not explicitly teach a "cooling assembly" with "cooling packets." Akamatsu remedied this deficiency by teaching the insertion of head-cooling material, such as a flexible, flat, long-lasting cooling pack, into the space between a helmet's inner and outer layers to cool the wearer's head. Combining these references renders claim 8 (adding cooling packets) obvious. Claims 1-6, 9, and 18, which depend on these features, were argued to be obvious for the same reasons. For claim 9, Petitioner argued it would be obvious that customizable cushions (from Princip) and flat cooling packs (from Akamatsu) would have different heights.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Princip and Akamatsu to solve the well-known problem of head overheating in helmets, which ventilation alone (taught by Princip) may not sufficiently address. Akamatsu directly teaches a solution for this problem, and its cooling packs are designed to be placed in the exact "climatic zone" structure described by Princip, making the combination logical and straightforward.
  • Expectation of Success (for §103 grounds): The combination was argued to be predictable, as adding a known cooling element (Akamatsu) to a known helmet structure (Princip) would predictably result in a helmet that provides both impact protection and enhanced cooling.
• Additional Grounds: Petitioner asserted additional challenges, including that claims 3, 4, and 18 are anticipated by Bedford (Application # 2006/0005291) and that claims 7 and 10 are obvious over Liu (Patent 5,204,998).

4. Key Claim Construction Positions

• Petitioner argued that no specific claim constructions were necessary. However, it proposed an alternative construction for "attachment mechanism" (claims 6, 11, 18) if the Board were to treat it as a means-plus-function term. The proposed function is "to removably couple the inner and outer shells," with the corresponding structure being the configurations shown in the ’167 patent’s figures, such as rigid or flexible fasteners. Petitioner maintained this construction would not alter its invalidity analysis.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the companion district court litigation was in a very early stage with no discovery or claim construction conducted. The parties had reportedly agreed to stay the litigation pending the outcome of the IPR. Petitioner contended that a Final Written Decision (FWD) would likely issue before any potential trial date. Further, Petitioner argued against denial under §325(d), stating that the primary prior art references and arguments in the petition (Princip, Akamatsu, Bedford, Liu) were not considered during prosecution, and that the arguments concerning Roth were substantially different from those raised by the Examiner.

7. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-11 and 18 of the ’167 patent as unpatentable.