IPR 2015-01651 involved a dispute over the obviousness of claims in U.S. Patent No. 8,551,271 owned by Crown Packaging Technology, Inc. and drawn to a grooved crown bottle cap with thinner, harder steel than used in conventional caps. World Bottling Cap, LLC, petitioned the Board to cancel the ’271 patent claims as being obvious based on two lines of attack. The Board held the evidence of obviousness to be insufficient, with evidence of secondary considerations of non-obviousness contributing to the Board’s decision that no claims of the ’271 patent were unpatentable.
Petitioner cited various combinations of references, anchored by either the Wagner or Frishman primary references, in support of its position that the claims were obvious. Petitioner characterized each of the primary references as disclosing metal caps having a crimpable skirt. A common secondary reference, Industrial Heating, was cited as teaching steels of the claim-recited hardness for use in making bottle caps. The Board found that Wagner’s caps required stretching of the steel skirt to form the bottle closure and that Frishman’s caps had pull-tabs requiring the tearing of bottle cap steel in operation. Patent Owner (PO) argued that one of ordinary skill would not modify the Wagner cap by substituting harder steel because that could interfere with the stretching of the steel required to form a bottle closure. PO also argued that one of ordinary skill would not modify Frishman’s cap by substituting harder steel because that could interfere with the tearing of the steel required in using the pull-tab.
The Board’s obviousness analysis cited the four Graham factors guiding obviousness inquiries, but the Final Written Decision did not address in detail the scope and content of the prior art or the level of ordinary skill in the art. The Board found that there were minimal differences between the prior art and claimed invention, noting that Wagner’s cap differed from the claimed subject matter only in the hardness of the steel. PO’s argument that harder steel would make Wagner’s cap harder to stretch did establish a deleterious effect of using harder steel, but did not rise to the level of teaching away from the claimed subject matter because Industrial Heating taught the use of harder steel in bottle caps. The Board adopted an analogous position with respect to the obviousness attacks relying on the Frishman reference, with its need for tearing of the cap steel to use the pull-tab. The Board then turned to the fourth Graham factor, secondary considerations of non-obviousness.
In its analysis of secondary considerations, the Board considered evidence of (1) a nexus between PO’s commercial product and the claimed invention, (2) commercial success, (3) industry praise, and (4) copying. The Board found a strong nexus in PO’s commercial product being a crown cap with a groove and a stretchable skirt useful in forming a bottle seal. The Board noted that the claimed invention was the commercial product, not just a component of the commercial product. Although the hardness of the steel in the commercial product exceeded the lower bound of the claim-recited hardness range, the Board found this to be a maximization of the invention’s benefit rather than limiting the secondary consideration to a small fraction of the claim scope. The PO established commercial success by showing that the inventive bottle cap did not merely supplant the PO’s sales of the conventional cap, but that sales of the inventive cap resulted in an increase in market share. The Board found persuasive the evidence of commercial success, although it was narrowly focused on sales in Peru, rather than in the United States or other countries. The industry praise cited by PO was significant, in part, because that praise of the commercial product was praise of the invention itself. Moreover, the evidence of praise also showed that there was a technical difficulty in the industry’s ongoing movement to increasingly harder, thinner steels, and that difficulty was overcome by PO’s use of grooves in the steel. Thus, the Board found that the nexus, commercial success, and industry praise all provided evidence of non-obviousness. Evidence of copying, however, did not support non-obviousness. The Board noted that evidence showing the similarity of PO’s commercial product and Petitioner’s bottle cap was insufficient. What is required, and found wanting here, is evidence that the similarities arose from Petitioner using PO’s product as a guide in the design of its bottle cap.
In conclusion, the Board weighed the evidence of obviousness and non-obviousness, determining that in view of the evidence of commercial success, Petitioner failed to show the unpatentability of any of the challenged claims. Patent Owners should keep in mind that, although the Board is not often swayed by evidence of commercial success, persuasive evidence of commercial success and other secondary factors may sometimes be helpful in defending patent claims challenged in an IPR.