Envirotainer Ab Envirotainer Ab v. Doubleday Acquisitions LLC

1. Case Identification

• Case #: IPR2022-00292
• Patent #: 7,263,855
• Filed: December 17, 2021
• Petitioner(s): Envirotainer AB
• Patent Owner(s): Doubleday Acquisitions, LLC
• Challenged Claims: 19-21, 23, 26-31, 33, 35-37, and 41

2. Patent Overview

• Title: Thermally Insulated Cargo Containers
• Brief Description: The ’855 patent describes thermally insulated cargo containers and methods for their manufacture. The technology centers on a shell-in-shell design, where vacuum insulated panels (VIPs) are confined between molded composite outer and inner shells to maintain a controlled temperature for sensitive cargo.

3. Grounds for Unpatentability

Ground 1: Anticipation over Kuhn - Claims 19-20, 23, and 28 are unpatentable under 35 U.S.C. §102 over Kuhn.

• Prior Art Relied Upon: Kuhn (International Publication No. WO 2004/104498).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kuhn disclosed every element of the challenged claims. Kuhn taught thermally insulated shipping containers with a box-like composite outer shell and a box-like composite inner shell, with both shells made from fiber-reinforced plastic, which Petitioner asserted met the “resin impregnated fibers” limitation. Kuhn explicitly disclosed confining vacuum insulated panels (VIPs) between these shells and using a refrigeration system of “melting storage elements” to cool the cargo chamber. For dependent claims, Petitioner asserted Kuhn taught using multiple parallel layers of flat VIPs (claim 20), offsetting the abutting joints of VIPs in successive layers for improved insulation (claim 23), and forming the shells with integrally connected walls to create a one-piece unit (claim 28).

Ground 2: Obviousness over Loeffler and Kuhn - Claims 19–21, 23, and 26–30 are obvious over Loeffler in view of Kuhn.

• Prior Art Relied Upon: Loeffler (International Publication No. WO 2004/045987) and Kuhn (WO 2004/104498).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kuhn provided the basic container structure with inner and outer composite shells insulated with VIPs. Loeffler supplied teachings for an active refrigeration system, including a compressor, condenser, and evaporator, which could be used in place of or to supplement Kuhn’s passive melting-element system. Specifically for claims 26-27, Loeffler taught a projecting support integral with the outer shell for mounting a refrigeration compressor and batteries. For claims 29-30, Loeffler taught parallel-spaced members on the inner shell’s bottom wall that define air flow passages to ensure uniform temperature distribution from the refrigeration unit.
  • Motivation to Combine: A POSITA would combine Kuhn’s highly-insulated container with Loeffler’s active cooling system to achieve enhanced cooling performance and maintain precise temperatures over extended periods, a known requirement for transporting high-value goods.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in the combination because both references were directed to insulated shipping containers for temperature-sensitive cargo and used a shell-in-shell design. Integrating an active cooling system like Loeffler’s into a container like Kuhn’s was a predictable design choice to improve performance.

Ground 3: Obviousness over Ekerot and Cur - Claims 19–21, 28, 31, and 35–37 are obvious over Ekerot in view of Cur.

• Prior Art Relied Upon: Ekerot (Application # 2003/0019870) and Cur (Patent 5,082,335).

• Core Argument for this Ground:

  • Prior Art Mapping: Ekerot taught a temperature-controlled freight container with molded composite inner and outer shells made of reinforced polymer materials, with an interspace between them for insulation. Cur taught advanced, thin, multi-compartment VIPs that provided superior thermal insulation. Petitioner argued a POSITA would place Cur’s advanced VIPs into the interspace of Ekerot’s container. Cur’s disclosure of multi-compartment panels, with internal sealed bags and flexible film wrapping, met the limitations for insulation cassettes comprising multiple layers and panels (claims 20, 21, 28). Ekerot’s disclosed manufacturing method—separately casting the shells, inserting the inner shell into the outer shell, and injecting insulation—provided the basis for the method claims (35-37).
  • Motivation to Combine: A POSITA would be motivated to use Cur’s thinner, more efficient VIPs in Ekerot’s container to achieve Ekerot’s stated goals of a lighter-weight container with improved thermal efficiency. Ekerot’s rigid composite shells would provide the necessary support for Cur’s VIPs without requiring the polyurethane foam also taught by Cur, resulting in a simpler and more efficient design.
  • Expectation of Success: Success was predictable because both references concern insulated containers, and Ekerot’s interspace was specifically designed to be filled with insulation panels like those taught by Cur.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Sinclair in view of Kuhn and Broussard in view of Cur, relying on similar arguments for substituting more advanced VIP insulation into existing container structures to improve thermal performance.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §325(d) and §314(a) (Fintiv).
• Against §325(d) Denial: Petitioner contended that the vast majority of the asserted prior art was never considered during the original prosecution of the ’855 patent. For the one reference that was cited (Broussard), Petitioner argued the Examiner made a material error by overlooking its significance, especially since the European Patent Office rejected corresponding European claims based on Broussard and Cur.
• Against Fintiv Denial: Petitioner asserted that the parallel district court litigation was in a nascent stage, as the petition was filed shortly after the answer, and no scheduling conference, discovery, or trial date had occurred. Petitioner argued that the low investment in the court case, the likelihood of a stay pending IPR, and the strong merits of the invalidity grounds all weighed heavily against discretionary denial.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 19-21, 23, 26-31, 33, 35-37, and 41 of the ’855 patent as unpatentable.