Volume Distributors Inc v. Simplehuman LLC

1. Case Identification

• Case #: IPR2024-00050
• Patent #: 10,683,165
• Filed: October 16, 2023
• Petitioner(s): Volume Distributors, Inc.
• Patent Owner(s): Simplehuman LLC
• Challenged Claims: 1, 2, 7, 10, 11, 13, and 15

2. Patent Overview

• Title: Trash Can Assembly
• Brief Description: The ’165 patent discloses a trash can assembly featuring a body, a pivoting lid, and a distinct pivoting "trim member" used to secure a trash bag. The claimed assembly also includes a power transmission device to operate the lid and a retaining mechanism configured to hold the trim member in an open position to facilitate changing the bag.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 10, 11, and 15 are obvious over Yang ’865 in view of Miller.

• Prior Art Relied Upon: Yang ’865 (Application # 2010/0147865) and Miller (Patent 4,753,367).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yang ’865, a publication from the patent owner, discloses a trash can with all elements of independent claim 1 except for a retaining mechanism that holds the trim member open against gravity. Miller was asserted to cure this deficiency by explicitly teaching a retaining mechanism ("a feature... to lock the bezel") that solves the known problem of needing to hold a trim/bezel open with one hand while changing a trash bag. For dependent claim 2, Miller's locking feature was argued to be a detent.
  • Motivation to Combine: A POSITA would combine Miller’s retaining feature with the Yang ’865 trash can to achieve the well-understood benefit of freeing both of a user's hands when replacing a trash bag. This modification addresses a problem that Miller explicitly identifies and solves.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involves applying a known mechanical solution (Miller's lock) to a known problem in a structurally analogous device (Yang '865's trash can), as both feature similar pivoting trim/bezel components.

Ground 2: Claims 1, 2, 10, 11, and 15 are obvious over Koda in view of Miller.

• Prior Art Relied Upon: Koda (Patent 4,953,740) and Miller (Patent 4,753,367).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Koda discloses a wastebasket with a body, a pivoting lid, a power transmission device (foot pedal), and a "retainer ring" for securing a trash bag. Crucially, Koda explicitly directs a person of ordinary skill to the Miller patent for details regarding its retainer ring, stating it has a "similar construction." Petitioner argued that when Koda is properly understood by incorporating Miller's teachings as directed, the combination discloses a retaining mechanism that holds the retainer ring (the claimed "trim member") in an open position.
  • Motivation to Combine: The motivation was asserted to be explicit, as Koda itself refers the reader to Miller to understand the full construction and operation of its corresponding component. A POSITA would therefore naturally look to Miller to implement the retaining mechanism in Koda's design.
  • Expectation of Success: Success would be expected because a POSITA is merely following an explicit instruction in the primary reference (Koda) to incorporate features from a secondary reference (Miller) for a corresponding part.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 7 and 13 based on adding Yang ’532 (Application # 2009/0194532) to the Yang '865/Miller and Koda/Miller combinations. Yang '532 was used to teach a known "lid-within-a-trim" aesthetic design and a motorized power transmission device as a predictable and commercially known alternative to a foot pedal.

4. Key Claim Construction Positions

• Petitioner stated it would adopt Patent Owner's proposed constructions for purposes of the petition. The construction for "trim member" as an "externally visible ornamentation member" was central to Petitioner's arguments. Petitioner used this construction to argue that distinct components in the Koda reference—either its "retaining ring 100" or its "lid rim 42"—satisfied the "trim member" limitation, as both are externally visible during different stages of operation.

5. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued institution should not be denied under 35 U.S.C. §325(d) because the specific prior art combinations asserted in the petition were never presented to or considered by the U.S. Patent and Trademark Office during prosecution. It was highlighted that the examiner who allowed the ’165 patent claims did so without any rejections after a cursory, single-afternoon search of over 650 references. This was contrasted with a different examiner's repeated rejections of similar claims in the parent application, suggesting the office erred.
• Fintiv Arguments: Petitioner argued against discretionary denial under Fintiv, noting that the parallel district court proceeding is in its earliest stages, with no trial date set and key events like the Markman hearing yet to occur. Further, Petitioner made a Sotera stipulation, agreeing not to pursue in the district court litigation any ground raised or that could have been reasonably raised in the IPR. Petitioner contended these factors, combined with compelling evidence of unpatentability, weigh heavily against discretionary denial.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 7, 10, 11, 13, and 15 of the ’165 patent as unpatentable.