CASper Sleep Inc v. Werner Media Partners LLC

1. Case Identification

• Case #: IPR2024-00474
• Patent #: 10,842,301
• Filed: January 18, 2024
• Petitioner(s): Casper Sleep Inc.
• Patent Owner(s): Werner Media Partners, LLC
• Challenged Claims: 1-2

2. Patent Overview

• Title: Cooling Pillow
• Brief Description: The ’301 patent discloses a manufacturing process for bedding, such as a pillow, made from a resilient foam block. The process involves forming holes in the block, cracking the block, and coating its surface with a phase change material (PCM) to provide a cooling effect when a user's compression displaces air through the holes.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 are obvious over Lievestro in view of Schneider

• Prior Art Relied Upon: Lievestro (NL 1020305C2) and Schneider (WO 2016/090258 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lievestro discloses a method for manufacturing bedding that meets every limitation of claims 1 and 2 except for applying a phase change material (PCM). Lievestro teaches providing a solid, resilient, compressible foam block; compressing it before and during the formation of holes (meeting the sequence of claim 2); and crushing the block with rollers to break cell walls, which Petitioner equated to the “cracking said block” limitation of claim 1. Schneider was asserted to supply the missing element, as it discloses coating a removable memory foam layer of a mattress—which also includes holes—with a layer of PCM gel to provide significant cooling benefits.
  • Motivation to Combine: Petitioner contended that since both references are in the field of bedding and aim to enhance user comfort, a POSITA would be motivated to add Schneider’s known cooling PCM layer to Lievestro’s perforated foam block. This combination would predictably improve the thermal comfort of the bedding article, a well-known goal in the art.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in achieving an enhanced cooling effect from the predictable combination of airflow through Lievestro's holes and thermal absorption from Schneider's PCM.

Ground 2: Claims 1-2 are obvious over Crawford in view of Lievestro

• Prior Art Relied Upon: Crawford (Application # 2014/0141233) and Lievestro (NL 1020305C2).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Crawford discloses a method for manufacturing mattresses that teaches every limitation of the challenged claims except for forming holes. Crawford teaches providing a resilient, compressible foam block, applying a PCM-infused gel mixture to its surface, and roller-compressing the foam by up to 90%, which Petitioner argued meets the “cracking said block” limitation. To supply the missing hole-forming steps, Petitioner relied on Lievestro, which explicitly teaches an efficient method for creating holes in foam blocks by compressing the block and punching the holes while it is compressed.
  • Motivation to Combine: A POSITA would be motivated to incorporate Lievestro’s hole-forming process into Crawford’s method to further enhance thermal comfort. The holes would improve temperature regulation through increased airflow, complementing the cooling effect of Crawford’s PCM layer.
  • Expectation of Success: Petitioner argued the combination would yield the predictable result of a bedding product with superior cooling properties. This could be achieved through a modification within the skill of a POSITA, such as adapting Crawford's compression rollers to incorporate Lievestro's hole-punching die-roll body.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 1-2 based on Ohta in view of Schneider, and Ohta in view of Crawford.

4. Key Claim Construction Positions

• "cracking said block" (claim 1): Petitioner proposed this term means "opening (breaking) some of the foam block's closed cells, such as by compression, without complete separation of the foam block." This construction was central to Petitioner's arguments, allowing it to map the general compression steps disclosed in the prior art (e.g., roller-pressing in Lievestro and Crawford) to this specific claim limitation.
• "solid...foam block" (claims 1-2): Petitioner asserted this means "a piece of foam that tends to keep its form." This foundational construction supported the assertion that the foam substrates in the prior art references, such as mattresses and pillows, met this basic limitation.
• "compressing" / "compressed" (claim 2): Petitioner argued these terms should be given their plain meanings of "making more compact by pressure" and "pressed together, made more compact by pressure," respectively. This enabled mapping the compression steps in Lievestro and another primary reference, Ohta, which occur before and during hole formation, to the specific sequence required by claim 2.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution is appropriate under 35 U.S.C. §325(d) because the primary prior art references relied upon—Lievestro, Ohta, Crawford, and Schneider—are not the same or substantially the same as the references previously considered by the USPTO during the original prosecution or a subsequent reexamination of the ’301 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1 and 2 of the ’301 patent as unpatentable.