Docket No. 2016-1769 (IPR2914-01244)
DYK, MOORE, REYNA
June 16, 2017
Brief Summary: Board obviousness decision based on reasoning adopted from Geox’s arguments affirmed. The FC panel also explained that “[t]he Board was not required to limit its motivation to combine inquiry to the problem faced by the inventor of the ‘171 patent”.
Summary: Outdry appealed PTAB IPR decision that claims 1-15 of US 6,855,171 claiming a method for waterproofing leather would have been obvious over US 5,244,716 (“Thornton”) and two other prior art references (“Scott” and “Hayton”). The Board found Thornton, “directed to ‘waterproof but breathable articles of clothing” disclosed “all elements of claims 1 an 9” (the only ‘171 independent claims) “except the density of the dots (claims 1)” (“wherein the glue pattern is formed of a multiplicity of dots having a density included between 50 dots/cm2 and 200 dots/cm2”) “and the sizes of the dots (claim 9)” (“a multiplicity of dots having a diameter included between 0.1 mm and 0.8 mm”). The ‘171 patent is described as overcoming prior art methods in which “‘water penetrates the leather and becomes trapped between the membrane and interior surface of the leather’…by ‘directly pressing’ a semi-permeable onto the leather via [the] dotted glue pattern”. The Board defined “directly pressing” as meaning “applying pressure without any intervening materials or layers other than the recited adhesive” under the broadest reasonable interpretation (BRI; In re Cuozzo, FC 2015) and concluded Thornton describes that concept. It relied on Scott and Hayton for disclosure of “the density and sizes of the dots”. In this appeal, Outdry argued “directly pressing” should be construed as meaning “applying pressure to create a ‘uniform, sealed sheet of waterproof leather so that a water cushion cannot develop’” and that this is not disclosed by Thornton. The FC panel agreed with the Board, however, because the specification “uses the term ‘directly’ only once” consistent with the Board’s definition (also agreeing Outdry’s proposed construction lacks support in the specification). Outdry also argued that the preamble phrase “‘process for waterproofing leather’” is a “limitation is not disclosed in Thornton” but the FC panel found that to be “simply a statement of use, not a separate claim limitation” (Boehringer Ingelheim, FC 2003) “that must be disclosed in Thornton in order to uphold the Board’s obviousness determination.” Outdry also argued “the Board failed to adequately articulate” the motivation to combine the references by relying “solely on Geox’s petition…without making any explicit findings of its own” and “failed to identify a reason why one of skill in the art would have been motivated to combine” the references “to solve the problem identified by the ‘171 patent-the development of water cushions in leather shoes” as, it alleged, is required by KSR (US 2007; citing Apple, FC 2016). The FC panel found “[n]either argument has merit” since this is not a case in which the Board did not cite “evidenece, reasoned explanations, or explicit findings” in its decision (Rovalma, FC 2017; Van Os, FC 2016 (finding that it would have been intuitive to combine prior art lacked the requisite reasoning because “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious” (also citing Arendi, FC 2016; Cutsforth , 2016 (“references to ‘common sense’…cannot be used a wholesale substitute for reasoned analysis and evidentiary support”), In re Nuvasive, FC 2016; and ICON Fitness, FC 2017). Here, the FC panel concluded “[t]he Board clearly articulated Geox’s arguments…and expressly adopted Geox’s rationale” (without incorporating it by reference) as showing the motivation to combine. The FC panel also explained that “[t]he Board was not required to limit its motivation to combine inquiry to the problem faced by the inventor of the ‘171 patent” (KSR (“the problem motivating the patentee may be only one of many addressed by the patent’s subject matter”); Par Pharm., FC 2014; Alcon, FC 2012). Thus, the Board’s obviousness decision was affirmed.