On Thursday, January 19th, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board issued a final decision in an inter partes review (IPR) proceeding which upheld the validity of a patent protecting a beverage bottle cap based on the commercial market success of the cap in a foreign market. The judicial finding, which Law360 called “a rare move,” provides an interesting perspective on building a successful defense in the face of the institution of IPR proceedings.
The case, IPR2015-01651, featured an IPR petition filed by World Bottling Cap, LLC of Carrollton, TX, to challenge a patent held by Crown Packaging Technology Inc. of Philadelphia, PA. World Bottling Cap was petitioning PTAB to challenge the validity of U.S. Patent No. 8550271, issued under the title Low Gauge Crown Cap. The patent protects a lightweight crown cap for application to a glass beverage bottle having a shell made of steel with an average hardness of 62 on the 30-T scale, the shell including a peripheral skirt with downwardly depending flutes capable of being crimped to affix the cap to a bottle; the shell also has a round panel integrally formed with the skirt and having a recessed circular groove with its center at the longitudinal center of the panel. According to the patent, the invention addresses a need for improved and lower weight crown caps. The patent was issued in October 2013 and lists one inventor, Alfredo Merino Caballero of Lima, Peru.
World Bottling Cap filed the petition for these IPR proceedings in late July 2015, in which it argued that multiple claims of the ‘271 patent are obvious in light of an earlier patent, U.S. Patent No. 8061544, titled Easy-Pull Crown Bottle Cap. This patent was issued in November 2011, assigned to World Bottling Cap and listing one inventor, Abe Frishman of Carrollton, TX. World Bottling Cap argued that elements of the ‘271 patent, such as the round panel formed integrally with the skirt and the recessed circular groove, were obvious in light of the ‘544 patent. The petitioner also argued that claims of the ‘271 patent, especially those related to the 30-T hardness scale, were initially disclosed in the 1950s by Industrial Heating, a steel industry periodical published at that time.
World Bottling Cap cited aspects of the prosecution history for the ‘271 patent as further proof of the obvious nature of the technology. The petitioner points to Crown Packaging’s own concession that “the basic structure of a bottlecap has been unchanged for over 120 years.” Examiner rejections during the prosecution process were cited, including claim rejections for obviousness in light of U.S. Patent No. 3450291, titled Bottle Caps and issued in 1969. World Bottling Cap also argued that the use of grooves in a bottle cap and a steel closure of harder metal were both well-known prior to the invention covered by the ‘271 patent.
The final written decision issued by PTAB in this case found evidence in the prior art submitted by World Bottling Cap that suggested that a person of ordinary skill in the art would have selected steel of the specific hardness claimed in the ‘271 patent. However, the patent owner made a successful argument regarding secondary considerations, specifically relating to the market success of the bottle cap in the country of Peru, which led in large part to PTAB upholding the validity of the ‘271 patent.
A 7 percent increase in market share in that country during a five-year period after the new cap product was released to the Peruvian market led PTAB to find that the market share increase was attributable to the merits of the new product. The petitioner had argued that the use of Peruvian economic data was dismissable evidence but PTAB found that the evidence to support the petitioner’s view was lacking. Additionally, PTAB noted the lifting of international trade restrictions in Peru during the product period, exposing Crown Packaging to more competitors and lending additional weight to the market share increase. Crown Packaging successfully argued a strong nexus between the new bottle cap and the merits of the claimed invention. The patent owner also was successful with an argument that, although the use of grooves were known, the harder steel and grooves provided an unexpected and welcome development which overcame a technical roadblock in using harder steel in caps.
This final written decision marks the second time that an IPR filed by World Bottling Cap against the ‘271 patent was ended without invalidating claims of the patent. A previous IPR filed in November 2014 resulted in a May 2015 decision from a PTAB administrative law judge (ALJ) denying institution of the IPR because World Bottling Cap did not meet the burden of showing a reasonable likelihood of prevailing on its contentions of invalidity.