Case: 20-1144 Document: 101 Page: 1 Filed: 06/21/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTEX RECREATION CORP.,
Appellant
v.
TEAM WORLDWIDE CORPORATION,
Appellee
ANDREW HIRSHFELD, PERMFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1144
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00859.
______________________
Decided: June 21, 2021
______________________
R. TREVOR CARTER, Faegre Drinker Biddle & Reath
LLP, Indianapolis, IN, argued for appellant. Also
Case: 20-1144 Document: 101 Page: 2 Filed: 06/21/2021
2 INTEX RECREATION CORP. v.
TEAM WORLDWIDE CORPORATION
represented by REID E. DODGE, ANDREW M. MCCOY.
ROBERT M. HARKINS, JR., RuyakCherian LLP, Berke-
ley, CA, argued for appellee. Also represented by KORULA
T. CHERIAN; TIMOTHY E. BIANCHI, Schwegman Lundberg &
Woessner, PA, Minneapolis, MN.
MOLLY R. SILFEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by DANIEL KAZHDAN, THOMAS
W. KRAUSE, FARHEENA YASMEEN RASHEED.
______________________
Before NEWMAN, REYNA, and STOLL ∗, Circuit Judges.
REYNA, Circuit Judge.
Intex Recreation Corp. appeals the Patent Trial and
Appeal Board’s decision that none of the challenged claims
of U.S. Patent No. 9,211,018 are unpatentable for obvious-
ness. Intex challenges the Board’s construction of “inflata-
ble body” as requiring substantial airtightness, as well as
the Board’s conclusion of non-obviousness. For the reasons
explained below, we affirm the Board’s construction of the
term “inflatable body” and vacate the Board’s conclusion of
non-obviousness.
BACKGROUND
The ’018 patent
Team Worldwide Corp. owns U.S. Patent No. 9,211,018
(“’018 patent”), titled “Inflatable Airbed Provided with
Electric Pump Having Pump Body Recessed into the Inflat-
able Airbed.” See ’018 patent col. 1 ll. 1–3. The ’018 patent
∗ Judge Stoll did not participate in deciding this
case, and instead it was decided by the remaining judges in
accordance with Fed. Cir. Rule 47.11.
Case: 20-1144 Document: 101 Page: 3 Filed: 06/21/2021
INTEX RECREATION CORP. v. 3
TEAM WORLDWIDE CORPORATION
was filed on January 10, 2005, and it stems from a series
of applications beginning with U.S. Patent Application
No. 09/542,477, filed on April 4, 2000. For purposes of the
claims at issue in this case, Team Worldwide claims prior-
ity to U.S. Patent Application No. 09/738,331, filed on De-
cember 18, 2000.
The ’018 patent is directed to an inflatable airbed with
an electric pump that is “wholly or partially recessed into
the inflatable body.” Id. at abstract. The patent recites two
independent claims 1 and 14, which are identical in all re-
spects material to this appeal. 1 Claim 1 is representative
recites:
1. An inflatable product comprising:
an inflatable body comprising an exterior wall; and
an electric pump for pumping the inflatable body,
the electric pump comprising a pump body and an
air outlet, wherein the pump body is built into the
exterior wall and wholly or partially recessed into
the inflatable body, leaving at least a portion of the
pump body exposed by the exterior wall, and
wherein the pump body is permanently held by the
inflatable body.
’018 patent col. 7 ll. 27–36.
On March 30, 2018, Intex Recreation Corp. (“Intex”)
filed a petition for inter partes review (“IPR”) of the ’018
patent. J.A. 100, 168–252.
Grounds 3 and 4
In its petition, Intex asserted ground 3, contending
that claims 1, 7, and 12–14 were anticipated by U.S. Patent
No. 5,564,963 (“Chan”), and ground 4, contending that
1 Claim 14 is identical to claim 1 except that it omits
claim 1’s final “wherein” clause. J.A. 95.
Case: 20-1144 Document: 101 Page: 4 Filed: 06/21/2021
4 INTEX RECREATION CORP. v.
TEAM WORLDWIDE CORPORATION
claims 5 and 11 would have been obvious to a person of or-
dinary skill in the art (“POSA”) based on Chan in view of
U.S. Patent No. 4,890,344 (“Walker”).
Chan was filed on September 2, 1993, issued on Octo-
ber 15, 1996, and is titled “Air-Cushioned Toy.” J.A. 2799.
The toy includes a platform that sits on top of a pillow. Id.
According to Chan, the toy uses a motorized fan to draw air
into the pillow, which in turn expels the air through perfo-
rations on the bottom surface of the pillow, enabling a child
lying on it to “hover.” Id.
Walker issued on January 2, 1990, and is titled “Air
Control System for Air Bed.” J.A. 2807. Walker discloses,
among other things, an air supply and control apparatus
having an air pump for purposes of supplying pressurized
air to an air mattress. Id.
In the context of grounds 3 and 4, the parties disputed
the meaning of the claim term, “inflatable body.” See
J.A. 29–30. In its decision instituting an IPR, the Board
preliminarily construed the phrase to mean “a substan-
tially airtight structure that expands when filled with air
or other gases,” as proposed by Team Worldwide. J.A. 21.
During the IPR, Intex argued that the Board’s construction
was unduly narrow because it included the “substantial
airtightness” requirement. J.A. 21–22. Team Worldwide
responded that the prosecution history supports the limi-
tation. J.A. 22. Specifically, Team Worldwide contended
that, during prosecution, the applicant took the position
that the claims did not cover bodies that did not expand
because they were not substantially airtight. Id. Intex re-
sponded that the applicant’s statements were ambiguous
and failed to rise to the level of a clear and unmistakable
disavowal of claim scope.
In its Final Written Decision issued on October 21,
2019, the Board agreed with Team Worldwide and rea-
dopted the construction that “inflatable body” means “a
substantially airtight structure that expands when filled
Case: 20-1144 Document: 101 Page: 5 Filed: 06/21/2021
INTEX RECREATION CORP. v. 5
TEAM WORLDWIDE CORPORATION
with air or other gases.” J.A. 23–24. Subsequently, when
addressing grounds 3 and 4, the Board found that those
grounds failed to render the challenged claims unpatenta-
ble because Chan did not disclose a substantially airtight
inflatable body as required by the construed claims.
J.A. 29–30.
Grounds 5 and 6
Intex also asserted ground 5, contending that claims 1,
7, and 11–14 would have been obvious to a POSA based on
U.S. Patent No. 6,018,960 (“Parienti”) in view of U.S. Pa-
tent No. 2,493,067 (“Goldsmith”), and ground 6, contending
that claim 5 should have been obvious based on Parienti in
view of Goldsmith and Walker. J.A. 7.
Parienti was filed in France pursuant to the Patent Co-
operation Treaty (“PCT”) on July 22, 1996. J.A. 2776. The
PCT application published on February 13, 1997, and en-
tered the U.S. national stage under 35 U.S.C. § 371 on
March 20, 1998. The application issued as U.S. Patent
No. 6,018,960 on February 1, 2000, about ten months be-
fore Team Worldwide’s claimed priority date.
Parienti discloses an “automatically inflatable, deflat-
able and foldable” mattress whose top surface is attached
to a solar-powered pump device. Figure 4 depicts a cross-
section of the pump device. Id.
J.A. 2778. As shown in Figure 4, the solar-powered pump
device that is attached to the top of the air mattress in-
cludes a protective grid for intaking air (8), a motor (2), a
turbine (4), a voltaic cell array (1), and a pipe (9) with a
Case: 20-1144 Document: 101 Page: 6 Filed: 06/21/2021
6 INTEX RECREATION CORP. v.
TEAM WORLDWIDE CORPORATION
valve (19) to guide the air into and out of the air mattress.
J.A. 2780–81.
Goldsmith was filed in 1945 and issued in 1950. It dis-
closes an inner spring mattress that includes an electri-
cally operated blower unit that blows temperature-
controlled air into the mattress and thereby regulates the
mattress’s temperature. See, e.g., J.A. 2797 at col. 1 ll. 4–
12. In one embodiment, the blower unit is mounted on a
stand located outside the mattress and blows air into the
mattress via a tube. J.A. 2796; J.A. 2798 at col. 3 ll. 1–10.
In another embodiment, pertinent to this appeal, the
blower unit is mounted to the mattress wall, and all but
one surface of the blower resides within the mattress.
Goldsmith explains that, in this embodiment, “no outside
unit is necessary.” J.A. 2796; J.A. 2797 at col. 1 ll. 41–44;
J.A. 2798 at col. 4 ll. 1–15.
Intex argued in its petition that the combination of
Parienti and Goldsmith satisfied the following claim lan-
guage for purposes of § 103: “wherein the pump body is
built into the exterior wall and wholly or partially recessed
into the inflatable body, leaving at least a portion of the
pump body exposed by the exterior wall.” J.A. 247. Intex
contended that, although Parienti does not clearly disclose
recessing the body portion of the pump device into the in-
flatable body, it would have been obvious for a POSA to do
so in view of Goldsmith. J.A. 248. Intex pointed to Gold-
smith’s embodiment having an air blower mounted to the
mattress wall, arranged to blow air into the mattress and
leaving only a surface of the blower exposed to the outside.
J.A. 249–51.
Intex argued that a POSA would have been motivated
by, among other things, a desire for spatial efficiency to
combine Parienti with Goldsmith and thereby arrive at the
claimed inventions. J.A. 251, 1819–20. According to Intex,
it was well known in the art as of December 18, 2000, that
a more compact design would reduce the opportunity for a
Case: 20-1144 Document: 101 Page: 7 Filed: 06/21/2021
INTEX RECREATION CORP. v. 7
TEAM WORLDWIDE CORPORATION
pump’s components “to impact or interfere with the use of”
an airbed. J.A. 251. In support, Intex cited U.S. Patent
No. 7,039,972 (“Chaffee”), filed on May 17, 2001—about
five months after Team Worldwide’s claimed priority
date—which disclosed an air mattress with a “recessed”
pump. Id. (citing Chaffee col. 4 ll. 50–56 (J.A. 2792)). Intex
also pointed to U.S. Patent No. 5,529,377 (“Miller”), issued
in 1996, which disclosed an air cell module for an automo-
tive seat and taught that disposing an air pump inside the
air cell “provide[d] a compact design to facilitate handling
and shipment and to reduce space requirements in the
seat.” J.A. 251; Miller col. 2 ll. 40–52 (J.A. 3013).
Intex also relied on the opinions of its expert, Dr.
Beaman, regarding the spatial efficiency motivation. See
J.A. 251 (citing Beaman Decl. ¶¶ 61–70 (J.A. 1824–28),
¶ 232 (J.A. 1916)). For example, Dr. Beaman reiterated
Goldsmith’s teaching that, when the blower is recessed into
the mattress, “no outside unit is necessary.” J.A. 1826 (cit-
ing Goldsmith fig. 6, col. 4 ll. 1–15). Dr. Beaman also
pointed to U.S. Patent No. 388,037 (“Hargin”), filed in 1887
and issued in 1888, which disclosed a wooden, manual
pump that was “wholly inclosed within the covering of the
air mattress.” J.A. 1825; Hargin p. 1 ll. 53–58 (J.A. 2884).
Hargin later explained, as Dr. Beaman pointed out, that
the “pump must be wholly inclosed within the air-tight cov-
ering of the mattress to protect it from accident, injury, or
separation when plunged into water.” J.A. 1820; Hargin
p. 2 ll. 129–31 (J.A. 2885).
Dr. Beaman identified a host of various inflatable prod-
ucts designed throughout the twentieth century that in-
cluded built-in pumps. J.A. 1825 at ¶ 64 n.8. Dr. Beaman
cited, among others, U.S. Patent No. 4,702,235 (“Hong”), a
1987 patent on an inflatable lumbar brace; U.S. Patent
No. 4,862,533 (“Adams”), a 1989 patent on an air mattress
combined with a sleeping bag; U.S. Patent No. 5,467,543
(“Fink”), a 1995 patent on an inflatable decoy automotive
passenger; and U.S. Patent No. 6,287,095 (“Saputo”), a
Case: 20-1144 Document: 101 Page: 8 Filed: 06/21/2021
8 INTEX RECREATION CORP. v.
TEAM WORLDWIDE CORPORATION
2001 patent filed in 1999 on an “internal pump for inflata-
bles.” Id. Based on the cited references, Dr. Beaman
opined that inventors going back to at least 1888 and
throughout the twentieth century “recognize[d] the ad-
vantages of designing pumps, both motorized and manual,
built into the body of the inflatable product.” J.A. 1825.
On January 29, 2019, Team Worldwide filed its Patent
Owner’s Response. Team Worldwide argued that a POSA
would not modify Parienti by recessing the pump portion
because doing so “would not yield an appreciable improve-
ment.” J.A. 712. According to Team Worldwide, Parienti’s
mattress is better unmodified because, among other things,
leaving the pump unrecessed would “encourage a user to
not lay over [it].” J.A. 716. Team Worldwide further con-
tended that the additional references cited by Intex do not
support the spatial efficiency motivation to combine be-
cause, for example, they involve pumps that are “already
inconspicuous without modification” or they involved man-
ual pumps rather than electric pumps such as those dis-
closed in Parienti. J.A. 718–19.
In its Final Written Decision, the Board concluded that
claims 1, 7, and 11–14 were not proven unpatentable under
§ 103 based on Parenti and Goldsmith. J.A. 53. The Board
focused on whether a POSA would have made Intex’s pro-
posed modification to Parienti in light of Goldsmith,
namely moving the pump body slightly so that it is not
merely attached to the air mattress’s surface, but at least
partially recessed within it. J.A. 41. According to the
Board, Intex did not “provide persuasive factual underpin-
nings for its reasoning.” Id. The Board rejected Chaffee on
the grounds that it was not prior art. J.A. 43. The Board
also gave Miller and Goldsmith minimal weight on the
grounds that they dispose the pump entirely within the in-
flatable objection rather than only partially within it.
J.A. 44–45. Elsewhere, however, the Board acknowledged
that the claim language was so broad that it did “not re-
quire[]” the prior art to specifically disclose only partially
Case: 20-1144 Document: 101 Page: 9 Filed: 06/21/2021
INTEX RECREATION CORP. v. 9
TEAM WORLDWIDE CORPORATION
recessing the pump. J.A. 50 (“[A]lthough not required, nei-
ther Parienti nor Goldsmith discloses the proposed modifi-
cation, as Goldsmith discloses a configuration with the
pump body disposed well inside of the bed’s mattress, ra-
ther than only partially recessed.” (emphasis added)). The
Board also dismissed the “‘numerous other prior art’ refer-
ences” cited by Intex and Dr. Beaman as failing to support
Intex’s specific proposed modification on the grounds that
they are factually distinguishable in certain respects. See
J.A. 46. Based solely on its determination as to claims 1,
4, and 7–11, the Board further determined that Intex failed
to prove claim 5 obvious in light of Parienti, Goldsmith and
Walker. J.A. 54–55.
Intex appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4).
STANDARD OF REVIEW
We review claim construction based on intrinsic evi-
dence de novo. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
574 U.S. 318, 331 (2015). We review a Board’s ultimate le-
gal determination on obviousness de novo and its underly-
ing factual findings for substantial evidence. Uber Techs.,
Inc. v. X One, Inc., 957 F.3d 1334, 1337 (Fed. Cir. 2020).
DISCUSSION
Construction of “Inflatable Body” for Purposes of
Grounds 3 and 4 2
The claims and specification of the ’018 patent lack any
limiting definition of the term, “inflatable body.” Team
2 Because Intex filed its petition on March 30, 2018,
the Board applied the broadest reasonable interpretation
claim construction standard in effect at that time. J.A. 18–
19. We therefore apply the same standard. See, e.g., Ethi-
con LLC v. Intuitive Surgical, Inc., No. 2020-1600,
2021 WL 960766, at *3 n.4 (Fed. Cir. Mar. 15, 2021).
Case: 20-1144 Document: 101 Page: 10 Filed: 06/21/2021
10 INTEX RECREATION CORP. v.
TEAM WORLDWIDE CORPORATION
Worldwide points, however, to the prosecution history to
argue that “inflatable body” is limited by the applicant’s
assertions to the examiner during prosecution.
We have held that a statement during prosecution lim-
its a claim where it constitutes a clear and unmistakable
disavowal of claim scope. Toshiba Corp. v. Imation Corp.,
681 F.3d 1358, 1370 (Fed. Cir. 2012); see also Braintree
Lab’ys, Inc. v. Novel Lab’ys, Inc., 749 F.3d 1349, 1355 (Fed.
Cir. 2014).
In an office action dated August 22, 2006, the examiner
rejected certain claims, stating that U.S. Patent
No. 5,068,933 (“Sexton”) met the claim limitation, “inflata-
ble body.” J.A. 2588. The applicant responded arguing
that Sexton failed to meet that limitation because the pil-
low case cited “is expressly disclosed not to be substantially
airtight. Consequently, the cloth pillow case of Sexton
would not in and of itself expand when filled with air.”
J.A. 2577. The applicant further contended, “[F]or the
combined structure to be an inflatable body, it must itself
meet the criterion of an inflatable body, i.e., the combined
structure taken as a whole must be substantially airtight
and expand when filled with air or other gas.” Id.
Intex argues that the Board erred in finding the appli-
cant’s assertions to the examiner limited the claim scope.
See Appellant’s Br. 27–28. Specifically, Intex argues that
the applicant, in distinguishing Sexton, focused primarily
on whether or not Sexton’s pillow case expands and fills
with gas. According to Intex, the applicant never distin-
guished Sexton solely on the ground that Sexton’s pillow
case lets air escape.
We conclude the applicant’s statement was a clear and
unmistakable disavowal of claim scope that limits the per-
tinent claims by defining the claim term, “inflatable body.”
We have held that an applicant’s use of the term, “i.e.,” in
a definitional way with respect to a claim term may limit
the claim scope. Rembrandt Wireless Techs., LP v.
Case: 20-1144 Document: 101 Page: 11 Filed: 06/21/2021
INTEX RECREATION CORP. v. 11
TEAM WORLDWIDE CORPORATION
Samsung Elecs. Co., 853 F.3d 1370, 1376–77 (Fed. Cir.
2017) (holding that the applicant’s use of “i.e.” to define the
“different types” claim language during prosecution limited
the claim scope); see also Edwards Lifesciences LLC v. Cook
Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (“[U]se of ‘i.e.’
signals an intent to define the word to which it refers.”).
“Whether a statement to the PTO that includes ‘i.e.’ consti-
tutes a clear and unmistakable disavowal of claim scope
depends on the context.” Braintree, 749 F.3d at 1355.
Here, the applicant expressly set forth the “criterion,” fol-
lowed by the term, “i.e.,” for an “inflatable body”: it must
be “substantially airtight and expand when filled with air
or other gas.” J.A. 2577. The examiner accepted that def-
inition and allowed the patent. Under these circum-
stances, we affirm the Board’s construction. On this basis,
we affirm the Board’s determination that Chan failed to
disclose an “inflatable body.”
Obviousness Based on Grounds 5 and 6
Section 103 provides that a patent claim is unpatenta-
ble where the differences between the claimed invention
and the prior art are such that the claimed invention as a
whole would have been obvious to a POSA. 35 U.S.C. § 103.
In Graham v. John Deere Co., the Supreme Court enumer-
ated four factors for determining obviousness: the scope
and content of the prior art, the differences between the
prior art and the claims at issue, the level of ordinary skill
in the pertinent art, and objective indicia of non-obvious-
ness. 383 U.S. 1, 17–18 (1966). In KSR International Co.
v. Teleflex, Inc., the Court clarified that the proper ap-
proach is an “expansive and flexible” one and that the
teaching, suggestion, or motivation test is not a “rigid and
mandatory formula,” but a “[h]elpful insight[].” 550 U.S.
398, 415, 418–19 (2007). The Court further explained that,
“[u]nder the correct analysis, any need or problem known
in the field of endeavor at the time of invention and ad-
dressed by the patent can provide a reason for combining
the elements in the manner claimed. Id. at 420.
Case: 20-1144 Document: 101 Page: 12 Filed: 06/21/2021
12 INTEX RECREATION CORP. v.
TEAM WORLDWIDE CORPORATION
Intex argues that the Board erred in determining that
it failed to prove claims 1, 7, and 11–14 obvious. Intex
points out that the claim language at issue requires that
the “pump body” must be “wholly or partially recessed.”
See, e.g., Appellant’s Br. 38 (emphasis added). According
to Intex, the obviousness question at hand is therefore
whether a POSA would have found it obvious to modify
Parienti’s pump so that it is at least partially embedded
into the mattress body rather than merely attached to the
outside surface. See Appellant’s Br. 36–37. Intex further
points to the “volumes of prior art,” including Goldsmith
and others throughout the 1900s, that discuss recessed
pump designs. Id. at 37. According to Intex, “[T]here
should have been no question that a POSA, using her cre-
ativity and common sense,” would have arrived at the
claimed inventions. Id. at 42. Intex contends that the
Board’s analysis was “laser-focused” on the reasoning that
the prior art’s repeated disclosure of wholly-recessed
pumps detracted from Intex’s proposed modification in the
form of a partially-recessed pump. Id. at 45. We agree.
We conclude that the Board erred in determining that
Intex failed to prove claims 1, 7, and 11–14 obvious. The
Board misapplied the obviousness standard, and misappre-
hended Intex’s argument, when it fixated on whether the
prior art literally disclosed Intex’s theory of modifying
Parienti only slightly by taking the pump attached to the
outside of the mattress and recessing it partially within the
mattress. Intex’s argument regarding its proposed modifi-
cation showed that Parienti was already close to the chal-
lenged claims, and only a slight change was needed to
satisfy the broadest reasonable interpretation of “wholly or
partially” recessing a pump. This showing, together with
Intex’s showing that numerous references since the late
1800s illustrated prior artisans’ intuitive desire to recess
pumps to save space, satisfied Intex’s burden. The Board
erred in concluding to the contrary.
Case: 20-1144 Document: 101 Page: 13 Filed: 06/21/2021
INTEX RECREATION CORP. v. 13
TEAM WORLDWIDE CORPORATION
Finally, we note that the Board declined to conduct cer-
tain analyses on the grounds that they were not necessary
in light of its determination. Specifically, the Board did not
address Team Worldwide’s evidence regarding objective in-
dicia of non-obviousness, nor did it address whether claim
5 was obvious based on asserted ground 6. Because we hold
that Intex satisfied its burden of proving obviousness, we
remand for the Board to conduct further proceedings con-
sistent with his opinion, including resolving these two is-
sues that the Board declined to reach.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons set forth
above, we affirm the Board’s determination that grounds 3
and 4 fail to render the challenged claims unpatentable.
We further vacate the Board’s determination that claims 1,
5, 7, and 11–14 are not unpatentable based on grounds 5
and 6, and we remand for further proceedings consistent
with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.