Air Mattress Patent Deflated by CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued two opinions today on appeals from a total of six inter partes review (IPR) decisions, affirming two of the decisions and dismissing the remaining four as moot.

In the first decision, the CAFC affirmed the Patent Trial and Appeal Board’s (PTAB’s) finding in IPR2018-00874 that certain claims of Team Worldwide Corporation’s U.S. Patent 7,246,394, which is directed to an inflatable product, like an air mattress, with a built-in pump, were shown to be unpatentable as obvious. Because of that affirmance, the holdings in IPR2018-00872 and IPR2018-00873, from which Intex appealed, and the holdings in IPR2018-00870 and IPR2018-00871, from which Team Worldwide also cross-appealed along with its cross-appeal of the ‘874 decision, were rendered moot.

Intex asserted various combinations of ten references across its five IPR petitions, yielding 16 different obviousness grounds, according to the CAFC opinion. In the ‘872 and ‘873 decisions, the PTAB found Intex had not established the unpatentability of the challenged claims. In the ‘870 and ‘874 decisions, the PTAB said Intex had established unpatentability, and in the ‘871 decision, the Board additionally held that Intex had established the unpatentability of a subset of those claims.

Team Worldwide argued on appeal that the PTAB had erred in multiple instances when determining that the asserted prior art – “Chaffee” and “Wu” – would have rendered the challenged claims obvious. It also argued that the Board had failed to properly consider the secondary considerations of non-obviousness Team Worldwide submitted, and that it was “entitled to a presumption of nexus regarding (1) competitor products for which infringement was stipulated; (2) its own products; and (3) airbeds advertised as ‘built-in pump’ air beds.”

The court agreed with the PTAB that Team Worldwide failed to provide sufficient support that its products embodied any of the challenged claims and that “its arguments regarding advertised air beds are conclusory at best.” The opinion noted that Team Worldwide “never provided an analysis to establish coextensiveness, and therefore could not have established a presumption of nexus for its products.” The court added that Team Worldwide had also failed to provide a sufficient analysis to establish nexus for the first category, competitor products, but Intex had not appealed the Board’s holding that a presumption of nexus existed for that category.

To demonstrate that secondary considerations are the “‘direct result of the unique characteristics of the claimed invention,’” a patent owner is also permitted to provide evidence, but the CAFC said Team Worldwide’s evidence only showed that “non-patented features, such as durability, comfort features, and firmness, drove sales, rather than the built-in pump.”

In the second opinion, the CAFC issued a short ruling determining that the PTAB had not erred in its finding that the prior art “taught an anticipatory embodiment in which its pack was not detachable or readily removed from the mattress wall,” thereby rendering the challenged claims of Team Worldwide’s U.S. Patent 7,346,950 unpatentable as anticipated.