PTAB

IPR2024-00889

Bote LLC v. STeamBoat PaddleSports LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Inflatable Paddle Board
  • Brief Description: The ’458 patent describes an inflatable paddle board comprising a lower inflatable chamber forming a stand-up board and an upper, U-shaped inflatable chamber connected to the lower chamber to form a rail. The combination of chambers may form a curve-shaped front hull, and a "tent covering" may be included between the chambers.

3. Grounds for Unpatentability

Ground 1: Claims 13 and 14 are anticipated by Hoffmann.

  • Prior Art Relied Upon: Hoffmann (DE 2612881).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hoffmann, which discloses an inflatable boat, teaches every element of method claims 13 and 14. Hoffmann's drop-stitched, surfboard-shaped floor (floor 6) was mapped to the claimed "inflatable stand-up board chamber," as it provides "standing options." Its inflatable side tubes (side tubes 4), which are glued to the floor to form a gunwale, were mapped to the "upper inflatable chamber" connected to form a rail. For claim 14, Hoffmann’s curved bow pieces (curved pieces 7), which connect the side tubes and floor at the front, were argued to be the claimed "tent covering" that forms a "front hull."

Ground 2: Claims 1-2, 4, 6, and 8-9 are obvious over Hoge.

  • Prior Art Relied Upon: Hoge (Application # 2016/0096591).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Hoge, which discloses an inflatable kayak, renders the apparatus claims obvious. Hoge’s inflatable floor (floor 12), made of high-pressure drop-stitch material, was identified as the claimed "inflatable stand-up board chamber." Hoge’s inflatable sides (sides 14, 16), which are also drop-stitch and glued directly to the sides of the floor, were mapped to the "stacked sidewalls to form a rail." The fabric floor (fabric floor 28) covering the bottom of the craft was asserted to be the claimed "tent covering." Petitioner further argued Hoge teaches limitations of dependent claims, including the rail overhanging the board chamber (claim 2), the board chamber being wider than the rail (claim 4), and the rails sloping outward (claim 8).
    • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference. Petitioner argued Hoge discloses all elements in an integrated design.
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 3: Claims 1-9 are obvious over the combination of Hoge, Hoffmann, Swan, and Scadden.

  • Prior Art Relied Upon: Hoge (Application # 2016/0096591), Hoffmann (DE 2612881), Swan (Application # 2014/0245943), and Scadden (Patent 8,438,985).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that the primary structure is taught by Hoge, as detailed in Ground 2. The combination with other references was argued to supply or reinforce certain claim elements. For instance, Swan and Scadden were cited for their explicit disclosure of inflatable paddleboard floors suitable for standing, making it obvious to use Hoge's floor as a stand-up board. Hoffmann was cited for its teaching of stacking curved side tubes onto a tapered floor, which Petitioner argued would be an obvious modification to Hoge’s design to improve the glued connection. For dependent claim 3 ("the rail under-hangs"), Petitioner pointed to Scadden’s disclosure of inflatable pontoons that under-hang the central platform, arguing it would be obvious to modify Hoge’s rails similarly.
    • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references because they all relate to the same field of inflatable watercraft and address common problems. A POSITA would look to known designs like those in Hoffmann, Swan, and Scadden to improve the features of Hoge’s kayak, such as stability, durability, and versatility (e.g., adding a removable stand-up floor from Swan).
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because the references disclose similar technologies and combining their known mechanical components would involve routine implementation yielding predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claim 13 over Hoge (§103); claims 13-15 over Hoffmann in combination with Swan, Hoge, and Scadden (§103); and claims 10-12 over Hoffmann in combination with Swan and Hoge (§103). These grounds relied on similar arguments and motivations for combining the prior art.

4. Key Claim Construction Positions

  • "stand-up board": Petitioner proposed this term be construed as "a generally elongated board (like a surf board) that a user can stand upon and use a paddle to maneuver over the water." This construction supports treating the floors of prior art boats like Hoge and Hoffmann as the claimed board.
  • "rail": Petitioner proposed construing this term as "structure extending along at least a portion of the peripheral sides of the paddleboard." This broad construction allows the inflatable side tubes of the prior art references to meet the limitation.
  • "stacked sidewalls": Petitioner argued this term should be construed as "sidewalls stacked onto another object." This construction is critical for applying Hoge, where the inflatable sides are attached on top of the edges of the inflatable floor.
  • "tent covering": Petitioner proposed the construction "a sheet of material covering one or more objects to provide a shape over or between such objects." This allows various structures in the prior art, such as fabric floors or bow covers, to satisfy the claim element.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued the Board should not exercise discretionary denial under Fintiv despite a parallel district court litigation. Petitioner stipulated that if the inter partes review (IPR) is instituted, it will not pursue in the district court any ground raised or that reasonably could have been raised in the petition. Further, Petitioner noted the parallel case is in its earliest stages, with only a complaint filed and no case schedule, minimal expenditures, and no trial date set.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-15 of the ’458 patent as unpatentable.