Intex Recreation Corp v. Bestway Inflatables Material Corp

1. Case Identification

• Case #: IPR2023-00488
• Patent #: 10,687,633
• Filed: January 21, 2023
• Petitioner(s): Intex Recreation Corp.; Intex Development Company Ltd.; Intex Industries (Xiamen) Co., Ltd.; and Intex Marketing Ltd.
• Patent Owner(s): Bestway Inflatables & Materials Corp.
• Challenged Claims: 3-15, 17

2. Patent Overview

• Title: Inflatable Bed
• Brief Description: The ’633 patent is directed to an inflatable bed featuring a multi-part internal support structure. This structure is configured to limit the outward bulging and deformation of the bed’s side walls when inflated, thereby improving stability, comfort, and safety by reducing the risk of roll-over.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aoki - Claims 3-11 and 17 are obvious over Aoki.

• Prior Art Relied Upon: Aoki (Japanese Utility Model Publication No. JPU-1-1974-034811).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Aoki, a 1972 reference for a "box-shaped air mattress," discloses all elements of the challenged claims. Petitioner asserted that Aoki teaches an inflatable bed with a top sheet, bottom sheet, and side walls forming an air chamber. The claimed "first tensioning structure" was mapped to Aoki's "vertical hanging sheets," which connect the top and bottom sheets. Crucially, the claimed "second tensioning structure" (connecting the top sheet and side wall) and "third tensioning structure" (connecting the bottom sheet and side wall) were mapped to Aoki's "diagonal bracing hanging sheets," which are explicitly disclosed to prevent side wall bulging, maintain a 90-degree angle at the corners, and improve stability in taller mattresses.
  • Motivation to Combine (within Aoki): Although a single-reference ground, Petitioner argued that to the extent Aoki's teaching of using multiple diagonal braces (Fig. 4) is a separate embodiment from its general mattress design (Figs. 1-2), a POSITA would have been motivated to apply the multiple-brace teaching to all corners of the mattress. This was necessary to achieve the stated benefits of stability and uniform shape, as applying them to only one corner would result in an asymmetric and unstable product, defeating Aoki's purpose.
  • Expectation of Success: A POSITA would have had a high expectation of success in applying multiple diagonal braces to all corners of the mattress, as this was a straightforward application of Aoki's own teachings to solve the exact problems of bulging and instability that Aoki identified.

Ground 2: Obviousness over Aoki in view of Lin ’773 - Claims 3-14 and 17 are obvious over Aoki in view of Lin ’773.

• Prior Art Relied Upon: Aoki (JPU-1-1974-034811) and Lin ’773 (Patent 8,562,773).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that even if Aoki alone does not render the claims obvious, the combination with Lin ’773 does. Petitioner argued Lin ’773 discloses modern, lightweight, and cost-effective tensioning structures made of flexible threads or strands captured between plastic weld strips. This combination was argued to teach limitations in dependent claims requiring specific materials or constructions, such as tensioning structures made of thermoplastic sheets (claim 12), comprising threads (claim 13), or having threads sandwiched between plastic strips (claim 14).
  • Motivation to Combine: Petitioner contended a POSITA starting with Aoki's 1972 design would be motivated to look to more recent art like Lin ’773 for improved materials. Lin ’773 addresses the same problem of preventing mattress deformation but with superior, modern materials that reduce weight and cost while maintaining high tensile strength. A POSITA would combine Aoki's structural configuration with Lin ’773's superior tensioning material as a simple substitution of an old element with a known, improved one.
  • Expectation of Success: Success was predictable, as using modern materials like those in Lin ’773 for internal tensioning structures in an inflatable bed was well-known. A POSITA would expect that replacing Aoki's fabric sheets with Lin ’773's thread-and-strip structures would predictably result in a lighter, cheaper, and equally stable inflatable bed.

Ground 3: Obviousness over Aoki, Lin ’773, and Liu - Claim 15 is obvious over Aoki in view of Lin ’773 and Liu.

• Prior Art Relied Upon: Aoki (JPU-1-1974-034811), Lin ’773 (Patent 8,562,773), and Liu (Application # 2015/0335164).

• Core Argument for this Ground:

  • Prior Art Mapping: This combination targeted claim 15, which depends from claim 13 and requires that the threads of the tensioning structure are sandwiched within a "U-shaped plastic strip." Petitioner argued that while Lin ’773 teaches sandwiching threads between two separate plastic strips, Liu explicitly discloses an alternative method: using a single plastic weld strip that is folded over the ends of the threads or mesh to form a U-shape.
  • Motivation to Combine: Petitioner argued that a POSITA, seeking to implement the tensioning structure from Lin ’773 into Aoki’s bed, would recognize there were a finite number of predictable ways to sandwich the threads. Using two separate strips (per Lin ’773) or a single folded U-shaped strip (per Liu) were two well-known and obvious design choices to accomplish the same function. Liu's U-shaped strip provided a simple, durable, and low-cost manufacturing option.
  • Expectation of Success: A POSITA would expect success because folding a single strip to capture threads is functionally equivalent to using two separate strips and was a common technique in the art. The result—threads securely captured for tensioning—was entirely predictable.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 12 based on Aoki in view of Metzger (Patent 7,089,618), arguing Metzger provided a further motivation to make all internal tensioning structures entirely from thermoplastic materials like PVC.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv factors, stating that the parallel district court litigation has been stayed pending the resolution of this and other IPR petitions. The stay, Petitioner contended, eliminates concerns of inefficiency and duplicative efforts, weighing heavily against denial.
• Petitioner also argued against denial under 35 U.S.C. §325(d), asserting that the primary prior art references, Aoki and Metzger, were never presented to or considered by the Examiner during the original prosecution. While other references were of record, Petitioner argued the specific combinations and invalidity arguments presented in the petition are new and were never considered by the Office.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 3-15 and 17 of Patent 10,687,633 as unpatentable.