Lifefactory, Inc. of Sausalito, CA, is a developer of glass drinking bottles for all ages, from babies to adults. The company, which used to be known as Baby Life, touts the benefits of glass bottles and how it doesn’t leach chemicals into liquids like plastic bottles. Its products run the gamut from bottles that can fit into a lunchbox to bottles adults can bring to yoga class, according to Lifefactory’s CEO, Roy Mabrey. “With glass, our focus is on the best taste every time you drink,” Mabrey said. “When you open your best bottle of wine, you would never pour it into a metal or plastic cup. We want people to drink out of the best material all day long.”
One drawback to the use of glass as a portable drink container is the danger associated with breaking glass. To increase the durability of the glass used in Lifefactory bottles, the company has invented a silicone sleeve that improves a person’s ability to grip the bottle and reinforces the glass. “The invention that launched Lifefactory was the protective sleeve,” Mabrey said.
On Monday, August 22nd, Lifefactory announced that a patent it holds, which covers the protective sleeve technology, survived a challenge at the Patent Trial and Appeal Board (PTAB) with most of its claims intact. The company announced that 13 of 21 claims in U.S. Patent No. 8579133, titled Protective Sleeves for Containers, were deemed valid as a result of an inter partes review (IPR) filed by Leapfrog Product Development of Chicago, IL. As Lifefactory’s press release on the matter notes, Leapfrog markets water bottles branded as Ello and Zulu.
The ‘133 patent claims a protective sleeve for holding a container made of a molded tubular body having openings at either end, a lip adjacent to one of the openings and a main body. Other claims are directed to the circular shape of the openings, gripping elements on the tubular body and the body’s elastic nature. The patent’s background section notes the need for bottles which don’t leach chemicals like bisphenol A (BPA) or phthalates into contained liquids while also being durable for an active lifestyle. The ‘133 patent was issued to Lifefactory in November 2013.
Leapfrog filed the IPR in January of 2015, according to documents available through the PTAB End to End (E2E) online search portal. As the original IPR filing notes, the ‘133 patent was at issue in a previous case between Lifefactory and Leapfrog, filed in the U.S. District Court for the Northern District of California (N.D. Cal.), which was dismissed. Leapfrog argued that every claim of the ‘133 patent would have been obvious in light of other patents, including U.S. Patent No. 1690509, titled Bottle Protector and issued November 1928 to inventors Martin and Grace Thoreson of Los Angeles. The patent protected a bottle for baby nursing which was covered by by a protective agent to prevent breaking. Leapfrog’s IPR also asked PTAB to consider obviousness of the ‘133 patent in light of U.S. Patent No. 3760968, titled Composite Container Article and issued September 1973 to Owens-Illinois Inc. of Toledo, OH, protecting a bottle with a sleeve covering.
In its final decision issued August 17th, PTAB found in favor Leapfrog on claims 13-19 and 21 in the ‘133 patent, rendering them unpatentable subject matter. However, Leapfrog lost out on arguments that would have eradicated claims 1 through 20 by providing an unpersuasive challenge of obviousness in light of U.S. Patent Application No. 20040084460, titled Insulating Sleeve for a Beverage Container. This patent application disclosed a sleeve that protects a beverage container received through the sleeve’s passageway. Lifefactory was successful in arguing that the ‘460 patent application wouldn’t be a basis for obviousness because it doesn’t cover the bottom of the bottle with a protective material.
Lifefactory also made a compelling argument to PTAB thanks to its commercial success. The final decision noted that Lifefactory’s contention that it sold $20 million worth of sleeved glass bottles between August 2013 and August 2015 was credible. Lifefactory also argued that it had achieved 25 percent of the market for water bottles and 95 percent of the market for glass bottles sold at natural product supermarkets. Leapfrog responded that Lifefactory defined the market so narrowly as to exclude the primary competitors to its products and the testimony of Leapfrog CEO Kurt Sward placed the market share of Lifefactory’s products at 1 percent. The source of that information was never offered and PTAB considered that information to be unpersuasive and non-responsive.
The acknowledgement of Lifefactory’s commercial success and its role in protecting the ‘133 patent’s claims during the IPR was very exciting for the company, according to Mabrey. “This was a very validating moment for our company,” he said. “Since Lifefactory has been commercially successful, even if the technology seemed to be obvious, someone would have been doing it much sooner than we did.” Although a strong technical argument was acknowledged in the case, the commercial success also makes the silicone sleeve an important invention. “In the ruling from the USPTO […] they believe we proved that, based on our market share in the natural grocery sector, that Lifefactory was commercially successful because of the patent,” Mabrey said. “We feel like it’s a good leg to stand on going forward.”
This ruling ends a tense period for Lifefactory, which faced the same high likelihood that many or all claims would be overturned that any patent owner who has been targeted by an IPR faces. Mabrey credited David Hoffman, principal partner in Fish & Richardson’s offices in Austin, TX, with being very helpful in making the technical arguments as to why the claims of the ‘133 patent weren’t obvious. The results, given the low rate of claims that leave IPR proceedings unscathed, were very satisfying. “Not only did we feel like the odds were against us, there was an acknowledgement that we were doing something important,” Mabrey said.
The ‘133 patent is not currently involved in any current litigation as of our August 26th interview with Mabrey. According to Mabrey, the company wanted to wait to see the outcome of the IPR process before deciding on a strategy.
Lifefactory’s patent portfolio includes 22 active U.S. patents according to the patent portfolio analysis tools available through Innography. As the text cluster posted here will show readers, a great deal of this portfolio focuses on research and development related to protecting a container, although tubular body and fluid containers are also areas of R&D focus for the company.