Jodi Schwendimann

Patent Trials and Appeals Board

Nov 6, 2020

IPR2020-00636 (P.T.A.B. Nov. 6, 2020)

Trials@uspto.gov Paper 12
571-272-7822 Entered: November 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NEENAH, INC. AND AVERY PRODUCTS CORPORATION,
Petitioner,

v.

JODI A. SCHWENDIMANN, f/k/a JODI A. DALVEY,
and NUCOAT, INC.,
Patent Owner.
____________

Case IPR2020-00636
Patent 7,771,554 B2
____________

Before JEFFREY W. ABRAHAM, MICHELLE N. ANKENBRAND, and
AVELYN M. ROSS, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request on Rehearing of Decision Denying Institution
37 C.F.R. § 42.71(d)

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Patent 7,771,554 B2
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I. INTRODUCTION
On October 15, 2020, Neenah, Inc. and Avery Products Corporation
(collectively, “Petitioner”) filed a Request for Rehearing (Paper 11,
“Rehearing Request” or “Reh’g Req.”) of our Decision denying institution
of an inter partes review (Paper 10, “Decision” or “Dec.”) of claims 1–14 of
U.S. Patent No. 7,771,554 B2 (“the ’554 patent,” Ex. 1006). In the
Decision, we determined that Petitioner failed to establish a reasonable
likelihood that it would prevail on any of the four asserted grounds. See
generally Dec. Petitioner requests rehearing of our Decision as to two of the
asserted grounds: (1) Ground 3 challenging claims 1–14 as having been
obvious over Oez-US1 and Oez-PCT,2 and (2) Ground 4 challenging claims
1–14 as having been obvious over Kronzer3 and Oez-US.
We deny the Rehearing Request for the reasons set forth below.
II. ANALYSIS
When considering a request for rehearing from a decision whether to
institute a petition, the Board reviews its decision for an abuse of
discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the
burden of showing that the decision should be modified, and “[t]he request
must specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed” in the Petition. 37 C.F.R. § 42.71(d).

1 U.S. Patent No. 5,665,476, issued Sept. 9, 1997 (Ex. 1013).
2 WO 97/41489, published Nov. 6, 1997 (Ex. 1016).
3 U.S. Patent No. 5,798,179, issued Aug. 25, 1998 (Ex. 1018).
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A. Ground 3 – Oez-US and Oez-PCT
Petitioner argues that our Decision as to Ground 3 “misapplied the
law on obviousness and overlooked or misapprehended” the rationale to
combine set forth in the Petition. Reh’g Req. 4 (emphasis omitted). We
address these arguments in turn.
Petitioner first appears to assert that we misapplied the law on
obviousness because we required “an explicit ‘teaching, suggestion, or
motivation,’” which is not necessary to demonstrate obviousness.” Id. at 4–
5 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407, 415–22 (2007)).
Petitioner, however, does not point to anything in our decision that required
Petitioner to provide a teaching, suggestion, or motivation to combine from
the prior art. See id. Rather, consistent with KSR, we required Petitioner to
provide an articulated reasoning with a rational underpinning to support the
conclusion of obviousness. See, e.g., Dec. 21. And we determined that
Petitioner’s reason to combine discussion was insufficient. Id. at 21, 21–22.
Petitioner next asserts that “combining the teachings of Oez-PCT and
Oez-US would have required nothing more than common sense” because
both references are directed to substantially the same transfer sheet and
address the same problem related to transferring images onto dark fabrics.
Reh’g Req. 5. Thus, continues Petitioner, a person of ordinary skill in the
art “implementing Oez-PCT would have naturally looked to Oez-US, which
provides further details on the amount of white pigment to include in the
transfer sheet and how to use the transfer sheet to transfer an image onto a
fabric.” Id. at 5–6 (citing Pet. 50–53).
Initially, we note that Petitioner did not raise a common sense
argument in the Petition. Rather, as we highlighted in the Decision,
Petitioner’s entire reason to combine argument was:
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Patent 7,771,554 B2
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Not only are Oez-PCT and Oez-US authored by the same
inventor, but also both are specifically directed to image
transfer sheets with white layers for improving the quality of
image transfer onto dark fabrics. Accordingly, a [person of
ordinary skill in the art] would have been motivated to combine
the teachings of Oez-PCT and Oez-US, such as to use the
transfer sheet application process taught by Oez-US.
Dec. 21 (quoting Pet. 48–49 (section titled “Introduction [to Oez-PCT] and
Motivation to Combine”)). The Petition did not contain any other reason to
combine discussion for this particular ground. Petitioner’s Rehearing
Request, however, directs us to additional portions of the Petition that
Petitioner now contends we should have considered as supporting its
argument for reason to combine. Req. 6–7. Here, Petitioner’s post hoc
attempt to cobble together a reason to combine discussion does not persuade
us that that we overlooked or misapprehended any rationale to combine set
forth in the Petition.
Petitioner further argues that “a motivation to combine prior art
reference may be found in the nature of the problem to be solved” and
provides additional argument as to how Oez-PCT and Oez-US allegedly
teach “the same technique for solving the exact same problem in the art.”
Id. at 7–8 (citing Pet. 5–7, 23, 49–50). As with Petitioner’s other arguments,
however, this argument did not appear in the Petition. We could not have
overlooked or misapprehended an argument presented for the first time on
rehearing.
B. Ground 4 – Kronzer and Oez-US
Petitioner argues that our Decision misapprehended its obviousness
combination involving Kronzer and Oez-US. Reh’g Req. 9–15.
Specifically, Petitioner points to our statement that the Petition “fails to
show sufficiently how Oez-US discloses a white layer that melts and mixes
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with another layer.” Reh’g Req. 9 (quoting Dec. 23) (emphasis omitted).
Petitioner contends that, unlike in one of its other grounds that relied on
Oez-US as disclosing a white layer that melts and mixes with another layer,
this particular ground proposes adding Oez-US’s white pigment into one of
the layers in Kronzer’s transfer sheet. Id. at 10. In other words, Petitioner
contends that the Kronzer and Oez-US ground “relies on Oez-US only for its
teaching that a white pigment can be added into a transfer sheet layer—not
for any of the specific layers that are used in Oez-US’ transfer sheets.” Id.;
see id. at 11–13. Petitioner further points to three other related institution
decisions as “correctly recogniz[ing] that [its ground] was based on
incorporating white pigment into Kronzer’s transfer sheet layer(s).” Id.
at 13–14 (citing IPR2020-00628, Paper 10 at 32; IPR2020-00629, Paper 10
at 19; IPR2020-00634, Paper 13 at 33).
We do not agree that we misapprehended Petitioner’s obviousness
argument, but even if we did, the Petition does not establish a reasonable
likelihood that Petitioner will prevail on its asserted ground. First, as to this
particular ground, the Petition is not a model of clarity. For example, as
Petitioner explained in the Petition, the challenged claims do not recite the
term “white layer.” Pet. 20; see Ex. 1006, 11:20–12:62 (’554 patent claims).
Petitioner and Patent Owner, however, agreed that all of the challenged
claims include a “white layer.” Id.; Paper 8, 13–14 (Patent Owner’s
Preliminary Response). We construed “white layer” to require, inter alia, “a
layer comprising a concentration or configuration of pigment providing a
white background for received indicia and which further comprises a
polymer that melts and mixes with another layer or layers during
application.” Dec. 10–11.
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In the Petition, Petitioner read the “white layer” into two limitations of
independent claim 1: (1) limitation [A2] “a titanium oxide or other white or
luminescent pigment,” and (2) limitation [A6] “the titanium oxide or other
white or luminescent pigment present in a concentration and configurations
sufficient to provide an opaque background for indicia received by the ink
receptive portion.” Pet. 12 (Petitioner’s numbering of claim 1’s elements
from [Pre] through [A6]), 29–32 (Petitioner’s arguments as to how Oez-US
and another reference teach limitations 1[A2] and 1[A6], in which Petitioner
discusses the requirement that the polymer melts and mixes with another
layer or layers during application). For the ground based on Kronzer and
Oez-US, Petitioner argued that “Kronzer in view of Oez-US teaches 1[A2]”
and that “Kronzer in view of Oez-US teaches 1[A6].” Id. at 62, 64. For its
substantive argument, however, Petitioner referred back to the section of the
Petition in which Petitioner argued that Oez-US discloses the “white layer.”
See id. (referring to Pet. § VII.A.2.d, which describes Oez-US and another
reference as disclosing the melt and mix requirement of the white layer).
Thus, it was not clear from the Petition which reference Petitioner was
relying on to teach the “white layer” that melts and mixes with another layer.
Even if we agree with Petitioner that we misapprehended or
overlooked that the Petition relies on Kronzer as teaching the layers and
Oez-US as teaching only the white pigment, the Petition does not discuss
how the combined teachings of Kronzer and Oez-US disclose a white layer
that melts and mixes with another layer or layers. As we explained in the
Decision, although Petitioner asserted that Kronzer teaches the melting
temperatures of various polymers used in its layers and discloses examples
of applying heat transfer sheets to fabrics with an iron set at about 163°–
177° C, that general statement failed “to explain sufficiently how a white
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layer of the asserted Kronzer and Oez-US combination would melt with
another layer.” Dec. 23–24. Further to that point, we note that the Petition
in this case does not contain an analysis in the Kronzer and Oez-US ground
that discusses the melt and mix requirement, unlike the Petitions in the
related cases Petitioner cites in its Rehearing Request. Compare Pet. 59–70,
specifically 62, 64, with e.g., IPR2020-00634, Paper 2 at 71–72 (Petitioner
explaining how “Kronzer and Oez-US further teach the ‘melt and mix’
requirement”). Petitioner appears to acknowledge as much in the Rehearing
Request, arguing that its Kronzer and Oez-US ground in this case
demonstrates that layers in contact with one another will melt and mix, but
citing only to the portions of the Petition addressing how Oez-US and
another reference allegedly disclose the “melt and mix” requirement. Reh’g
Req. 15 (citing Pet. 31 and § VII.A.2.d; Ex. 1020 ¶¶ 112–115, 38–60). We
could not have overlooked or misapprehended an argument about Kronzer
and Oez-US disclosing the melt and mix requirement because Petitioner did
not make such an argument in the Petition. Accordingly, Petitioner does not
persuade us that we abused our discretion in denying to institute an inter
partes review.
III. ORDER
It is:
ORDERED that the Petitioner’s Request for Rehearing is denied.
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Patent 7,771,554 B2
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FOR PETITIONER:
Joseph J. Richetti
Ethan R. Fitzpatrick
Abigail M. Cotton
BRYAN CAVE LEIGHTON PAISNER LLP
joe.richetti@bclplaw.com
ethan.fitzpatrick@bclplaw.com
abigail.cotton@bclplaw.com

FOR PATENT OWNER:
Devan V. Padmanabhan
Michelle E. Dawson
PADMANABHAN & DAWSON, PLLC
devan@paddalawgroup.com
michelle@paddalawgroup.com