Document Is Prior Art Via Public Dissemination Or By Being Made Sufficiently Available IPR2015-01651


Takeaway: A document can become prior art by way of public dissemination or by being made sufficiently available to the public (e.g., via a search engine).

In its Decision, the Board instituted inter partes review of claims 1-20 of the ’271 patent.

According to the Board, the ’271 patent relates to a bottle cap (i.e., crown cap) that is made with thinner and harder steel compared to conventional crown caps. Petitioner asserted the following challenges to the ’271 patent: (1) claims 1-4, 10, 12-15, and 17-20 as obvious over Frishman and Industrial Heating; (2) claims 11 and 16 as obvious over Frishman, Industrial Heating, and Wagner; (3) claims 1-4 and 10-20 as obvious over Industrial Heating and Wagner; (4) claims 5-9 as obvious over Frishman, Industrial Heating, Mumford, and U.S. Steel; and (5) claims 5-9 as obvious over Industrial Heating, Wagner, Mumford, and U.S. Steel. Petitioner asserted that “average hardness” is hardness plus variations, and that “hardness” refers to Rockwell Hardness. Patent Owner did not dispute these assertions.

Petitioner’s obviousness challenges rely upon Industrial Heating for showing the particular steel recited in each claim. Patent Owner argued that (1) one of ordinary skill in the art would not have looked to Industrial Heating, (2) Petitioner has not provided the full article of Industrial Heating; and (3) Industrial Heating’s disclosure is “an obvious error.”

The Board surmised Patent Owner’s first point as being “Industrial Heating reference is not prior art because of the purported difficulty in finding it, especially by modern search technology.” The Board was not persuaded by this argument because documents become prior art by way of public dissemination or by being made sufficiently available to the public (e.g., via a search engine). Industrial Heating, according to the Board, appears to be a periodical trade magazine that is regularly and widely disseminated.

Regarding Patent Owner’s second point, the Board stated that Patent Owner can seek the remaining portions of the Industrial Heating article in discovery after institution.

Patent Owner’s last argument is that Industrial Heating’s disclosure of T4 continuously annealed steel having hardness in the range of 60-65 on the 30T scale is an obvious error. Patent Owner cites several documents in asserting that the T4 steel has a hardness of 58-64 on the 30T scale. The Board was not persuaded by this argument based on the values of hardness of T4 steel provided by various sources that fall outside the cited range. The Board also stated that Industrial Heating teaches crown caps having 60-65 Rockwell hardness. Therefore, there is no evidence to show an error. Furthermore, the Board noted that Exhibit 1011 lists many different “tempers and thicknesses to enable downgauging and cost reduction” of steel crown caps.

The Board, therefore, was not persuaded by Patent Owner’s arguments regarding Industrial Heating. The Board stated that Petitioner’s alleged grounds address each limitation of each challenged dependent claim and why it would have been obvious to combine the teachings in the manner proposed. The Board concluded that Petitioner had demonstrated a reasonable likelihood of showing claims 1–20 to be unpatentable.

Paper 6: Decision
Dated: February 11, 2016
Patent 8,550,271
Before: William V. Saindon, Stacey G. White, and Jon B. Tornquist
Written by: Saindon
Related Proceedings:  World Bottling Cap, LLC v. Crown Packaging Tech., LLC, Case IPR2015-00296 (PTAB May 14, 2015).