Intex Recreation Corp v. Team Worldwide Corp

1. Case Identification

• Case #: PGR2019-00015
• Patent #: 9,989,979
• Filed: November 12, 2018
• Petitioner(s): Intex Recreation Corp.
• Patent Owner(s): Team Worldwide Corporation
• Challenged Claims: 1-5

2. Patent Overview

• Title: Inflating Module for Use with an Inflatable Object
• Brief Description: The ’979 patent relates to an inflating module for an inflatable object, such as an air mattress. The module is designed to inflate the object and provide supplemental air pressure from a secondary device when the internal air pressure drops below a predetermined level.

3. Grounds for Unpatentability

Ground 1: Claim 1 is anticipated by Price

• Prior Art Relied Upon: Price (Patent 6,721,980).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Price, which was not considered during prosecution, teaches every limitation of claim 1. Price discloses an air mattress system with an inflating module (controller 18) adapted to an inflatable object (air mattress 12). Price’s system uses a primary blower (33) for initial inflation and a supplemental pump (31) for maintaining pressure. Petitioner asserted that Price's pneumatic system (27) and controller software constitute the claimed "pressure controlling assembly," as they are configured to monitor air pressure after initial inflation and automatically activate the supplemental pump (31) when pressure falls below a predetermined minimum, thereby maintaining pressure within a set range.

Ground 2: Claims 2-4 are obvious over Price in view of Lathrop

• Prior Art Relied Upon: Price (Patent 6,721,980) and Lathrop (Patent 7,789,194).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Price teaches the base system of claim 1, while Lathrop supplies the noise-reduction features recited in dependent claims 2-4. Specifically, Lathrop, which teaches a silencer for CPAP blower devices, discloses an "absorbent" (Lathrop’s dissipative foam elements 92) within an "air chamber" (Lathrop’s acoustic chamber 50), satisfying claim 2. Lathrop further discloses an "outer housing" (housing assembly 28) with an "inner housing" (acoustic housing 52) formed inside, meeting claim 3. Finally, Lathrop teaches a "noise silencer" (thick sections 68) positioned between its outer and inner housings, addressing claim 4.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Lathrop’s teachings with Price's system because excessive noise from automatically activating pumps is a well-known problem for air mattresses used for sleeping. Lathrop addresses the analogous problem of noise in CPAP devices, which are also often used at night, making its noise-dampening solutions suitable for application to Price's pump.
  • Expectation of Success: A POSA would have a reasonable expectation of success in incorporating Lathrop’s known sound-absorbing materials and housing designs into Price’s pump system to predictably reduce operational noise.

• Additional Grounds: Petitioner asserted that claims 1-5 are invalid under 35 U.S.C. §112 for indefiniteness and lack of written description. Petitioner also asserted additional obviousness grounds, including that claims 3 and 4 are obvious over Price in view of Shan-Chieh (Patent 5,716,199) for its housing-in-housing design, and that claim 5 is obvious over Price in view of Wilkinson (Patent 7,434,283) for its teaching of using absorbent material inside a nozzle.

4. Key Claim Construction Positions

• "pressure controlling assembly": Petitioner argued this term, recited in claims 1-5, is governed by §112(f) as a means-plus-function term. Because the specification allegedly fails to disclose any corresponding structure for performing the recited functions (monitoring pressure, detecting pressure drops, activating a pump), Petitioner contended the term is indefinite. Alternatively, if not treated under §112(f), Petitioner argued the term is indefinite under §112(b) because its meaning is unclear from the claims and specification, leaving a POSA uncertain about its scope.
• "absorbent": Based on the specification, Petitioner proposed that "absorbent" (claims 2, 5) should be construed as any material, such as the disclosed "cotton silencer," that minimizes noise caused by airflow from a blower or pump, or that reduces noise inside an inlet or nozzle.
• "the inflating module used in conjunction with a pump that provides primary air pressure": Petitioner argued this preamble phrase in claim 1 is indefinite because it improperly recites both an apparatus and a method of use. The term’s meaning is also unclear, as the specification provides no definition for "primary air pressure," leaving ambiguity as to when this condition is met.

5. Key Technical Contentions (Beyond Claim Construction)

• Lack of Written Description for PGR Eligibility: A central contention is that the ’979 patent is eligible for Post-Grant Review (PGR) despite claiming priority to pre-AIA applications. Petitioner argued that the ’979 patent is a "transition application" because claims were added during prosecution (e.g., specifying the inflatable object as an "air bed" or "inflatable sofa") that lacked written description support in the pre-AIA ’847 application. These claims, therefore, have an effective filing date after March 16, 2013, making the entire patent subject to PGR.
• Lack of Written Description in Challenged Claims: Petitioner further contended that the issued claims 1-5 themselves lack written description support in the priority applications. Key terms like "pressure controlling assembly" and "primary air pressure" are not found in the original specification, and the specification allegedly fails to describe the structure or concepts sufficiently to demonstrate that the inventor possessed the claimed invention at the time of the earlier filing.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the ’979 patent is properly subject to PGR and that review should not be denied on threshold eligibility grounds. The core argument is that the patent qualifies as a "transition application" under the America Invents Act (AIA). This is because the application that issued as the ’979 patent contained, at one time, at least one claim (e.g., the cancelled claims to an "air bed") that was not supported by the written description of its pre-AIA parent application. Petitioner asserted that this lack of support gives such a claim a post-AIA effective filing date, which renders the entire patent eligible for PGR, even if the unsupported claims were later cancelled.

7. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-5 of the ’979 patent as unpatentable.