Secondary Considerations Get Short Shrift in Airbed Patent Fight

by Dennis Crouch

Team Worldwide Corp v. Intex Recreation Corp. (Fed. Cir 2023)

I was disappointed to see the Federal Circuit’s no-opinion affirmance in this case — affirming the PTAB finding that Team Worldwide’s inflatable airbed invention was unpatentable as obvious.  US9211018. The case peaked my interest because I have been working on a short article focusing on what the courts term “secondary considerations” of obviousness, and the patentee raised substantial evidence of commercial success.   Ultimately the PTAB sided with the patent challenger and and that determination was affirmed on appeal in a R.36 no-opinion judgment.

TWC’s patent claims an “inflatable product,” such as an air mattress, that has a built-in electric pump.  In particular, the electric pump is built into and recessed within the exterior wall of the mattress with just one side of the pump body exposed through the exterior wall. The rest of the pump body is hidden inside the inflatable body and permanently held in place within the exterior wall of the inflatable body. The recessed design keeps the pump partially hidden and out of the way when not in use.

The key prior art references in the case are

  • U.S. Patent No. 6,018,960 (1996) (“Parienti”), which discloses an air mattress having an externally-attached solar powered pump.
  • U.S. Patent No. 2,493,067 (1945) (“Goldsmith”), which discloses ordinary inner-spring mattress having an attached fan used for temperature control (not inflation).  One embodiment includes “housing arranged within … said mattress and carrying a blower and temperature changing means therein.

This product has been a huge seller via brands such as Intex, Bestway, Boyd, Airtek, Air Cloud, Air Comfort, AirBedz, Altimair, Pittman, and TexSport.  The patentee has sued a number of folks for infringement, and they fought back with this Inter partes review proceeding.

The PTAB initially sided with the patentee, concluding that the claims had not been proven obvious. However, on appeal, the Federal Circuit vacated and remanded.

The Board misapplied the obviousness standard, and misapprehended 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 modification showed that Parienti was already close to the challenged 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 [under KSR]. The Board erred in concluding to the contrary.

Intex (Fed. Cir. 2021).  Thus, in its 2021 decision the Federal Circuit concluded that Intex had satisfied its burden of proving the invention obvious. The only problem though was that the PTAB/CAFed had not yet considered secondary indicia of non-obviousness offered by the patentee.  Thus, remand was needed for the PTAB to address issues it previously declined to reach. Specifically, the PTAB had not addressed Team Worldwide’s evidence on objective indicia of non-obviousness.

On remand, the PTAB flipped its decision, finding the claims obvious despite substantial sales and other secondary considerations.  In its most recent appeal, Team Worldwide argued that the PTAB erred in its assessment of the objective evidence of nonobviousness. Specifically, Team Worldwide argued that the PTAB did not properly weigh the evidence presented regarding commercial success, failure of others, and industry praise.

Regarding commercial success, the PTAB found that Team Worldwide was entitled to only “some, but not considerable, weight in favor of non-obviousness” for the evidence of sales of infringing products, citing the impact of non-patented features on customer demand.  However, Team Worldwide argued that the PTAB ignored evidence that the majority of sales were of products admitted or shown to infringe, which constitutes overwhelming commercial success under Federal Circuit precedent. See Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1376 (Fed. Cir. 2011).

For failure of others, the PTAB concluded that Team Worldwide’s evidence was entitled to only “some weight.” But Team Worldwide argued that the PTAB improperly minimized competitors’ failed attempts to design around the claims, contrary to Federal Circuit precedent finding failure of others entitled to considerable weight. See WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016).

Regarding industry praise, the PTAB found Team Worldwide’s evidence was entitled to some, but not considerable weight. However, Team Worldwide contended that the PTAB ignored relevant testimony praising the invention, which should be afforded considerable weight under Federal Circuit law. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. 2016) (en banc).

In sum, Team Worldwide argued that the PTAB did not properly weigh the objective evidence of nonobviousness as required under controlling Federal Circuit precedent and that this evidence outweighed the PTAB’s finding of obviousness.

Unfortunately, on appeal the Federal Circuit did not take the time to work through these issues but rather simply issued its R.36 Affirmance without opinion.

In addition to the general role of objective indicia, the appeal asked an important question about burdens of proof: “Did the Board err by inappropriately applying a standard of proof that required TWW to prove the validity of its claims in light of secondary considerations when the burden of proof statutorily remains with Petitioner to prove invalidity including in light of secondary considerations?”

47 thoughts on “Secondary Considerations Get Short Shrift in Airbed Patent Fight

  1. 13

    Does anyone have experience responding to rejections of design patent claims under 35 USC 171 (the design application equivalent of getting a 101 rejection)? The Examiner has given up on making prior art rejections and has obviously been taking lessons from their colleagues examining utility patent applications. So much for compact prosecution.

      1. 13.1.1

        Thank you, anon. Yes, I already took a look at the MPEP and did some online searches. I was hoping to find a PTAB case that provided some practical guidance.
        The Examiner demanding a 1.132 declaration from the applicant demonstrating that “the design is ornamental” and the evidence should demonstrate “thought of ornament” in the design where the declaration (1) states the ornamental considerations which entered the design of the article; and (2) identify what aspects of the design meet those considerations.
        The Examiner has taken the position that the design is too basic a shape but my understanding is that the shape is protectable by a design
        patent if the shape or configuration is not dictated by the function of the
        object. I’m thinking that In re SurgiSil may even have applications because the claim states what the article of manufacture is, and as long as it can be shown that the article of manufacture comes in various other shapes. From my initial research, when there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose, and patentable under 35 USC 171.
        In case I wasn’t clear about it, this is the same matter I previously posted where the Examiner stridently ignored In re SurgiSil, and it’s been nearly a year since the Examiner got a count for preparing an Office Action, but the Office Action was not mailed. Now it looks like that Office Action (which PAIR indicated was a Final Office Action) was yanked in favor of the current Office Action which rejects only under 35 USC 171.


          Not my client (in other words, what does your client want to do?), but I would be tempted to invite the Ombudsman into your case, as it appears to me that the Examiner is simply refusing to do their job – the immediate request is not appropriate.

          For others, the 37 CFR 1.132 section (link at link to ) provides:

          When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.

          The Examiner’s ejection is prima facie met with the mere filing of the application, which contains the oath from the inventor that the application is to a design patent. This is necessarily averring to the fact that the design is ornamental. There is no requirement of “thought of ornament” (no basis for this to be requested by the Examiner), so no “considerations” need be provided. If the Examiner thinks this to be “too basic,” then it should be easy enough for him to reject under 102 or 103.


            Could be.
            Because of In re SurgiSil, they could not get my client on prior art so now they are trying to allege that the design is not ornamental.

  2. 12

    Secondary Considerations Get Short Shrift…

    I am not sure that this is really the right headline. Not all “secondary considerations” are equal. Unexpected results are a really powerful species of secondary consideration. Commercial success lies at the other end of the spectrum. The more accurate headline would have been “Commercial Success Evidence Gets Short Shrift… .”

    1. 12.1

      Interesting piece Greg, I did not know that us jewish identifiers (1% of the pop) had a whole entire “seat” on the USSC. The more you know!

  3. 11

    “when challenged”

    This phrase is doing a heck of a lot work here. Patents are still being filed at historic levels and patent licensing continues to be a thing because robust, well-written claims that are not abstract at the point of novelty and/or which are licensed for a reasonable fee are not routinely challenged.

  4. 10

    So very odd that PTAB – the King’s court – is not required to follow the law of claim construction for an issued patent that binds everyone else. This BRI construct is of course a pet feature of the Kings court that is striking close to the gist or heart of the invention test specifically overturned in the ’52 Act. Here, apparently the CAFC is specifically upholding the BRI construct in the remand. To be sure, this BRI was captured from the old ex parte standard – return to examination – but PTAB is or was supposed to be different because it is a quasi-adversarial proceeding. Did USPTO adopt BRI for PTAB by rule making? or was it just there from the beginning with the sloppy legal justification of USPTO – because that is the way we did ex parte? I know why USPTO wants the BRI standard because they use it to evade comity with Art III judgments. Maybe it’s something that can be fixed with legislation – if we are going to suffer this star chamber – make them at least follow the law (Markman) and force comity with the Art III department.

    1. 10.2


      Broadest “Reasonable” Interpretation is a definite misnomer in my experience. It is more like “Unreasonable.”

  5. 9

    “I was disappointed to see the Federal Circuit’s no-opinion affirmance in this case…”

    Imagine how the appellant felt.

  6. 8

    Seems pretty clear that the real problem was overbroad claiming by the patentee. The concept of a recessed pump was old as was the motivation to use such a design for anything that needs pumping up. So the questions are: was there a technical problem that kept people from doing it, what was the solution to that problem, and is that solution recited in the claims?

    “ the PTAB found that Team Worldwide was entitled to only “some, but not considerable, weight in favor of non-obviousness” for the evidence of sales of infringing products, citing the impact of non-patented features on customer demand”

    Commercial success shouldn’t even be s consideration because post-filing evidence is barred by the statute. Regardless, it almost always will be (and should be) difficult to prove for typical product improvements in a mature market for that product. The exceptions will be those rare cases when there is a bona fide teaching away in the art (in which case the teaching away will be the best evidence for non-obviousness anyway).

    1. 8.1

      because post-filing evidence is barred by the statute.

      You keep on saying this and you keep on getting this wrong because you keep on letting your emotions (and yes, that does read as you being anti-patent, no matter how you try to gaslight otherwise) get in the way.

      The post-filing date of the data for secondary considerations is just not the pertinent item as the data is being used — as ANY (legal) evidence would be used — for changes OF the invention AT the invention’s filing date.

      It’s a use of effect to show cause.

      You want to ban “effects” because effects are always later, and that is just utter nonsense.

      1. 8.1.1

        I keep saying it because it’s true. The statute isn’t ambiguous on this point AND it makes sense to bar post-filing evidence such as commercial success for reasons that should be, well, obvious to anyone who’s been paying attention.


          Let’s be exceedingly clear as to the legal point to which you choose to you use the phrase, “The statute isn’t ambiguous on this point” – the point being post-filing date evidence for the sake of secondary considerations.

          You may be attempting to conflate timing, evidence, and the combination thereof.

          I am not going to disagree with a notion that post-filing evidence that evinces a LATER CONDUCTED research plan cannot provide that which must be possessed at the time of filing (and yes, I am looking at you Pharma and the substantial number of as-claimed items that do NOT make it through FDA trials, thereby showing that the claimed utility was not actually possessed at the time of filing).

          The Statute (and here I am looking at 35 USC et al), has nine sections in which the word “evidence” can be found: 135, 261, 273, 287, 301, 312, 316, 322, and 326.

          Which — if any — of these are you referring to, in your oh-so-adamant way?

          Hint: I know that you will not be specific, as you are just pulling this out of your arse.

    2. 8.2

      Post-filing evidence of invalidity is barred. Post-filing evidence can be used to confirm enablement.

      I have used the taking of licenses by others to show non-obviousness. As long as a nexus to the claimed invention can be shown, it is relevant.

  7. 7

    Not saying anything about the legal question of obviousness, but the short shrift is most definitely a Rule 36 by the CAFC on an item before it that has multiple contested points.

  8. 6

    Two points:

    1. The CAFC had yet again Rule 36 abdicated their sworn adjudication duty (“while we require that all who come before us must explain themselves; as kings and queens, we don’t have to hold ourselves to that same requirement”).

    2. If you have to rely on secondary considerations to prevail at the Patent Office (I feel your pain), you’re in trouble. Big trouble.

  9. 5

    “evidence that the majority of sales were of products admitted or shown to infringe, which constitutes overwhelming commercial success under Federal Circuit precedent.”

    I don’t think Star Scientific really supports the above proposition. The case was about amounts paid specifically to license the asserted patents. Sales revenue for products that infringe is not the same thing, in my view at least.

    1. 5.1

      It’s apples and oranges. If I think your patent is invalid, why would I license it? Why would I stop selling my product that doesn’t infringe a valid patent? If anything, the sales offered as evidence here show that the industry believed the patent was obvious and invalid.


          The “presumption of validity” is just another way for the COURT saying that the burden of proving invalidity is initially on the challenger. It’s certainly not a mandate for how people must feel about a patent that was mistakenly granted, you ridiculous and impossibly silly child.

    2. 5.2

      Star Scientific absolutely does not support that proposition. Here’s the relevant text:

      “Finally, as evidenced by Brown & Williamson’s licenses, which cost millions of dollars, Williams’ invention had achieved considerable market acceptance and commercial success.”

      1. 5.2.1

        Thanks for that.

        It’s too bad I have to double-check these citations. This being a blog after all, I can certainly overlook spelling and grammar mistakes. But it is a patent law blog, so one would expect the patent law itself not to be mischaracterized. (To be clear I’m not saying it was deliberate.)

  10. 4

    When I’ve made commercial success arguments in the past, the Examiners seem to have a policy of dismissing evidence as being “mere opinion” and force the applicant to kick it up on appeal to the PTAB to decide if there was commercial success.

    1. 4.1

      ^^^ sounds like the likes of Random, who seemingly rejoices in ‘not being a lawyer,’ and instead l0ves being a bureaucratic despot who decides ‘what’ everything is (without recognition of his duty to “examine under the law.”)

    2. 4.2

      I was an examiner and I tried to look at secondary considerations seriously because an obviousness determination is a tough call to make. A lot of examiners get institutionalized and think everything is obvious. The USPTO and CAFC seem to have a god complex. link to

    1. 3.1

      Not prior art.

      The first thing I always check when getting an Office Action is whether the art is, in fact, prior art. Over the many years, I have identified a not insubstantial number of instances in which the art cited was not, in fact, prior art.

      1. 3.1.1

        Not prior art but appears to be an independent attempt to patent the same thing at roughly the same time …?

  11. 1

    There is no “securing to inventors the exclusive right to their discoveries” any more in the U.S.

    1. 1.1

      What do you mean by “any more”? U.S. patentees win in infringement suits now at about the same rate that they have won historically—which is well less than half the time.

      It has always been hard for a patentee to win in the U.S. The words “any more” make it sound like this is a new trend, when in fact this is how it has always been. Remember, when Justice Jackson quipped that “the only patent that is valid is one which this Court has not been able to get its hands on,” (Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572), that was in 1949, more than 70 years ago.

      1. 1.1.2

        PTAB has what? 75% + kill or maim rate? Name another federal agency that invalidates or renders worthless 75% of its work product when challenged. How’s that for objective evidence something is broken. Very broken.


          > PTAB has what? 75% + kill or maim rate? Name another federal
          > agency that invalidates or renders worthless 75% of its work
          > product when challenged. How’s that for objective evidence
          > something is broken. Very broken

          That’s not a very sound analysis. There are approximately 380,000 patents issued each year in the U.S., and approximately 5 million patents currently in force. An infinitesimally small percentage of those patents are ever subject to any kind of post-grant challenge; there are usually under 1,500 IPR petitions filed per year, for example. So in a given year, if you assumed a 100% success rate for every single IPR/PGR petition filed, the percentage of issued patents affected would fall well below some of the rarest diseases on the planet.

          And you also have to take into account the selection dynamics in play with post-grant proceedings like IPRs; the few patents that are actually challenged tend to those with broader and more widely applicable claims that are obviously more susceptible to invalidity challenges, and the companies that file those IPR challenges have powerful incentives to present strong unpatentability cases. I’m actually somewhat surprised, considering the selection dynamics in play, that the PTAB kill rate in IPR is not closer to 100%.


            While you raise some good points, it would be a fair guess that you have chosen the wrong denominator – as the term is used.


          That is just silly. The rate of invalidation at the PTAB is much less than 75%. That “75%” figure comes from looking only at instituted trials. In other words, it is based on ignoring >50% of the petitions filed in the PTAB.

          If one includes all petitions in the denominator when calculating percentages, then >50% of petitions end with not even one claim affected by the PTAB. What is the point of citing such an egregiously useless statistic?


            What’s the point? Convincing people who won’t bother to understand that the statistic is (intentionally) misleading, mostly.


            Defining “win” as having to spend money on petitions that should never have been brought is hardly a real win.

            (By the by, hitting “is instituted” merely means a case could be made – but why actually admit to nuance that does not support your position, eh?)

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