Paul Hartmann AG

Patent Trials and Appeals Board

Feb 22, 2022

IPR2020-01478 (P.T.A.B. Feb. 22, 2022)

Trials@uspto.gov Paper 30 571-272-7822 Date: February 22, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ATTENDS HEALTHCARE PRODUCTS, INC., Petitioner, v. PAUL HARTMANN AG, Patent Owner. IPR2020-01478 Patent 8,784,398 B2 Before PATRICK R. SCANLON, HYUN J. JUNG, and NEIL T. POWELL, Administrative Patent Judges. JUNG, Administrative Patent Judge. JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a) IPR2020-01478 Patent 8,784,398 B2 2 I. INTRODUCTION We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Attends Healthcare Products, Inc. (“Petitioner”) has shown by a preponderance of the evidence that claims 1-30 of U.S. Patent No. 8,784,398 B2 (Ex. 1001, “the ’398 patent”) are unpatentable. A. Background and Summary Petitioner filed a Petition (Paper 12,1 “Pet.”) requesting institution of an inter partes review of claims 1-30 of the ’398 patent. Paul Hartmann AG (“Patent Owner”) filed a Preliminary Response (Paper 6). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of the ’398 patent. Paper 13 (“Inst. Dec.”). In particular, we instituted review of claims 1-30 on all presented challenges. Inst. Dec. 2, 21, 24. After institution, Patent Owner filed a Response (Paper 18, “PO Resp.”), to which Petitioner filed a Reply (Paper 22, “Pet. Reply”), and Patent Owner thereafter filed a Sur-reply (Paper 26, “PO Sur-reply”). An oral hearing in this proceeding was held on December 2, 2021; a transcript of the hearing is included in the record. Paper 29. B. Real Parties in Interest Petitioner identifies Attends Healthcare Products, Inc. and Domtar Corporation as real parties in interest (Pet. 1), and Patent Owner identifies Paul Hartmann AG as a real party in interest (Paper 4, 1). 1 With our authorization (Paper 8), Petitioner filed a Motion to File Corrected Petition (Paper 9), to which Patent Owner filed an Opposition (Paper 10). We granted Petitioner’s motion (Paper 11), and Petitioner filed a Corrected Petition (Paper 12), which we cite below. IPR2020-01478 Patent 8,784,398 B2 3 C. Related Matters The parties identify IPR2013-00173, IPR2020-01477, IPR2020- 01479, and IPR2020-01480 as matters that may affect or be affected by the present proceeding. Pet. 1; Paper 4, 1. According to the parties, a related patent was previously challenged in IPR2013-00173, but the proceeding was terminated due to settlement. Pet. 1; Paper 4, 1. D. The ’398 Patent (Ex. 1001) The ’398 patent issued on July 22, 2014 from an application filed February 24, 2012 that is a continuation of an application filed on October 18, 2007 and claims priority to a foreign application filed on October 27, 2006. Ex. 1001, codes (22), (30), (45), (63), 1:4-8. The ’398 patent relates to incontinence diapers. Ex. 1001, 1:13. Figure 1 of the ’398 patent is reproduced below. Figure 1 shows a top view of an outer face of an incontinence diaper. Ex. 1001, 11:62-63, 12:17-18. Incontinence diaper 2 has main part 4 that IPR2020-01478 Patent 8,784,398 B2 4 consists of front area 6, crotch area 12, and rear area 8. Id. at 12:19-22. Absorbent body 14 is between liquid-permeable topsheet 11 and liquid- impermeable backsheet 10. Id. at 12:22-26. Incontinence diaper 2 also includes front side parts 16 and rear side parts 17 attached to main part 4. Ex. 1001, 12:31-32. Side parts 16, 17 can connect to each other by closure means 32 with mechanical closure aides 31 when incontinence diaper 2 is worn. Id. at 12:41-47. “The over-abdomen retaining forces between the closure means 32 and the outer face of the side parts 16 . . . are higher than the over-abdomen retaining forces between the closure means 32 and the outer face of the backsheet nonwoven material component.” Id. at 13:43-46. E. Illustrative Claim The ’398 patent includes claims 1-30, all of which Petitioner challenges. Of those, claims 1, 26, 28, and 30 are independent, and claim 1 is reproduced below. An absorbent incontinence diaper, comprising: a chassis having an inner face which, when in use, is directed toward a user body and an outer face which, when in use, is directed away from the user body, wherein an entire area of said outer face of said chassis is constituted by a first nonwoven material, said chassis having an absorption body and a backsheet on a side of said absorption body which, when in use, is directed away from the user body, said absorption body having a smaller width than said backsheet, said chassis also having a rear area, a front area and a crotch area lying between said rear area and said front area, said chassis further defining first and second side edges; four discrete, not directly connected side parts, each of said side parts having an inner face and an outer face, each of said side parts joined to one of said first and said second side edges, with a side part being attached to a side edge on each side IPR2020-01478 Patent 8,784,398 B2 5 of said front area and a side part being attached to a side edge on each side of said rear area; closure means having mechanical closure aids, said closure means connected to said side parts at said rear area, said closure means configured for selective detachable fastening to said outer face of said chassis and to said outer face of said side parts in said front area, wherein retaining forces between said closure means and said outer face of said chassis secure said diaper on the user body, when in use, and are lower than retaining forces between said closure means and said outer face of said side parts in said front area; and said entire area of said outer face excludes mechanical closures other than said first nonwoven material when not fastened to said closure means. Ex. 1001, 15:59-16:22 (emphasis added). Relevant to our discussion below, independent claims 26, 28, and 30 have limitations similar to the ones emphasized above. Specifically, claim 26 recites: wherein retaining forces between said closure means and said first nonwoven material of said outer face of said chassis secure said diaper on the user body, when in use, and are lower than retaining forces between said closure means and said outer face of said side parts in said front area. Ex. 1001, 18:9-14. Claim 28 recites “wherein retaining forces between said closure means and said first nonwoven material are determined as over- abdomen retaining forces and are between 57-20 N/25mm and are lower than retaining forces between said closure means and said second nonwoven material.” Id. at 18:49-54. Claim 30 recites: wherein retaining forces between said closure means and said first nonwoven material are between 57-20 N/25mm when determined using a pull-off angle tangential to a curved surface and kept constant, said curved surface having a radius of curvature of 400 mm and said retaining forces are lower than retaining forces between said closure means and said second nonwoven material when determined using a pull-off angle IPR2020-01478 Patent 8,784,398 B2 6 tangential to a curved surface and kept constant, said curved surface having a radius of curvature of 400 mm. Id. at 20:6-15. F. Asserted Prior Art and Proffered Testimonial Evidence Petitioner identifies the following references as prior art in the asserted grounds of unpatentability: Name Reference Exhibit Jacobs US 5,814,178, issued Sept. 29, 1998 1007 Anderson US 6,605,172 B1, issued Aug. 12, 2003 1008 Fernfors US 2002/0193776 A1, published Dec. 19, 2002 1045 Karami ’626 US 2003/0220626 A1, published Nov. 27, 2003 1004 Miyamoto ’499 US 2004/0016499 A1, published Jan. 29, 2004 1005 Benning US 2005/0256496 A1, published Nov. 17, 2005 1002 Karami ’772 US 2006/0058772 A1, published Mar. 16, 2006 1003 Stupperich DE 10 2004 053 469 A1, published May 4, 2006 1009 Pet. 4-5. Petitioner also contends that all the grounds are supported by the general knowledge of one of ordinary skill in the art. Id. at 4 n.1. Petitioner further provides a Declaration of Arrigo D. Jezzi. Ex. 1012. Patent Owner provides a Declaration of G.A.M. (Tony) Butterworth. Ex. 2004. Deposition transcripts for both Mr. Jezzi and Mr. Butterworth were filed. Ex. 1054; Ex. 2003. IPR2020-01478 Patent 8,784,398 B2 7 G. Asserted Grounds Petitioner asserts that claims 1-30 are unpatentable on the following grounds: Claim(s) Challenged 35 U.S.C. § References/Basis 1-5, 7, 8, 11-16, 19-22, 24, 25, 28 103(a) 2 Karami ’772, Benning 1-5, 7, 8, 11-16, 19-22, 24, 25, 28 103(a) Benning, Karami ’626 1-5, 7, 8, 11, 16, 19-22, 24, 25 103(a) Benning, Karami ’626, Stupperich 6, 26, 27, 29, 30 103(a) Karami ’772, Benning, Miyamoto ’499 6, 26, 27, 29, 30 103(a) Benning, Karami ’626, Miyamoto ’499 6, 26, 27 103(a) Benning, Karami ’626, Stupperich, Miyamoto ’499 9, 17 103(a) Karami ’772, Benning, Jacobs 9, 17 103(a) Benning, Karami ’626, Jacobs 8, 10, 18 103(a) Karami ’772, Benning, Anderson 8, 10, 18 103(a) Benning, Karami ’626, Anderson 23 103(a) Karami ’772, Benning, Fernfors 23 103(a) Benning, Karami ’626, Fernfors 23 103(a) Benning, Karami ’626, Stupperich, Fernfors 2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16, 2013. Because the ’398 patent claims priority to an application filed before that date, our citations to 35 U.S.C. § 103(a) are to its pre-AIA version. IPR2020-01478 Patent 8,784,398 B2 8 II. ANALYSIS A. Legal Standards In an inter partes review, Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). The U.S. Supreme Court set forth the framework for applying the statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966): Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As explained by the Supreme Court in KSR International Co. v. Teleflex Inc.: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. IPR2020-01478 Patent 8,784,398 B2 9 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). “Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360-61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068-69 (Fed. Cir. 2012)). As described below, the parties’ disputes are related to the scope and content of the asserted prior art and the differences between claims 1, 15, 19, 24, 25, 26, 28, and 30 and the asserted prior art. After reviewing the complete record, we conclude that Petitioner has shown by a preponderance of the evidence that the proposed combinations including Benning and Karami ’626, by themselves or further modified by one of Miyamoto ’499, Jacobs, Anderson, or Fernfors, teach or suggest the limitations of claims 1-30 and that a person of ordinary skill in the art would have had a reason to combine these references with a reasonable expectation of success. B. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have had a bachelor’s degree in chemistry, physics, mechanical, chemical, or process IPR2020-01478 Patent 8,784,398 B2 10 engineering, or a related degree and 2-3 years of experience designing diapers” and would have been “familiar with different diaper wing configurations (e.g., integral- and separate-wing), nonwoven materials, cloth-like backsheets, and hook-and-loop fastening systems.” Pet. 14-15 (citing Ex. 1012 ¶ 18). In our Decision granting institution, we preliminarily adopted Petitioner’s unopposed proposal. Inst. Dec. 8. Patent Owner does not challenge Petitioner’s proposed level of ordinary skill and does not propose a level of ordinary skill. See generally PO Resp.; PO Sur-reply. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation and internal quotation marks omitted). Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “would have had a bachelor’s degree in chemistry, physics, mechanical, chemical, or process engineering, or a related degree and 2-3 years of experience designing diapers” and would have been “familiar with different diaper wing configurations (e.g., integral- and separate-wing), nonwoven materials, cloth-like backsheets, and hook-and-loop fastening systems.” Pet. 14-15; Inst. Dec. 8. This level of skill in the art is consistent with the disclosure of the ’398 patent and the prior art of record. IPR2020-01478 Patent 8,784,398 B2 11 C. Claim Construction In an inter partes review based on a petition filed on or after November 13, 2018, the claims are construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020); see Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). Petitioner proposes interpretations for “closure means having mechanical closure aids,” “foil,” “reinforcing means,” and “over abdomen retaining forces” with citations to the ’398 patent and declarant testimony. Pet. 18-20. Petitioner contends that formal interpretations of “closure means having mechanical closure aids,” “reinforcing means,” and “over abdomen retaining forces” are not required. Id. at 21, 22. In our Decision granting institution, we preliminarily adopted Petitioner’s proposed interpretations for the asserted means-plus-function limitations “closure means having mechanical closure aids” and “reinforcing means.” Inst. Dec. 9-10. We determined that the record at the time IPR2020-01478 Patent 8,784,398 B2 12 supported Petitioner’s asserted functions and corresponding structures for “mechanical closure means having mechanical closure aids” and “reinforcing means.” Pet. 18 (citing Ex. 1001, 4:37-5:3, 12:41-53, 15:32- 37, 16:12-16; Ex. 1012 ¶¶ 50-52), 19 (citing Ex. 1001, 11:18-30, 17:32-39; Ex. 1012 ¶ 54). Patent Owner does not challenge Petitioner’s proposed interpretations and does not provide expressly any proposed interpretation. See generally PO Resp.; PO Sur-reply. Based on the full record, we maintain and affirm our preliminary interpretation for “mechanical closure means having mechanical closure aids” recited by claims 1, 28, and 30. We determine that (1) the “function is to ‘detachabl[y] fasten[]’ to outer faces of a diaper’s main and side parts” and (2) the “corresponding structure is a ‘strip [of] material’ including ‘hooks of a hook-and-loop fastener,’ optionally with one or more adhesive regions.” Pet. 18 (alterations in original); Ex. 1001, 4:37-5:3, 12:41-53, 15:32-37, 16:12-16; Ex. 1012 ¶¶ 50-52. We also determine that no other claim term requires express interpretation. See Vivid Techs., 200 F.3d at 803; Nidec Motor, 868 F.3d at 1017; see also Pet. 20 (arguing that “formal construction is not required for “over abdomen retaining forces”). D. Scope and Content of the Asserted Prior Art 1. Benning (Ex. 1002) Benning “relates to an absorbent incontinence article.” Ex. 1002 ¶ 2. Figure 4 of Benning is reproduced below. IPR2020-01478 Patent 8,784,398 B2 13 Figure 4 “shows a plan view of a hygienic article . . . in a schematic representation.” Ex. 1002 ¶ 13. Main body portion 20 includes back region 24, crotch region 26, front region 22, and absorbent core 28. Id. ¶ 53. Around absorbent core 28 are underlayer 30 that can form an outer side of the article and topsheet 32. Id. Material sections 34 that form side flaps or lateral sections are attached to an edge of main body portion 20. Id. ¶ 54. Material sections 34 on the right of the figure are unfolded. Id. ¶ 55. Material section 34 can have two closures 42 in the form of closing tapes 44 that can “interact in a releasably adherent manner with an outside 46 of the front region 22.” Id. IPR2020-01478 Patent 8,784,398 B2 14 2. Karami ’626 (Ex. 1004) Karami ’626 relates to “an absorbent article having a fastener element which does not require a special loop providing landing zone.” Ex. 1004 ¶ 2. Figure 1 of Karami ’626 is reproduced below. Figure 1 shows a top plan view of a disposable absorbent article. Ex. 1004 ¶ 24. Absorbent article 10 has back portion 20, crotch portion 24, front portion 22, frontsheet 30, backsheet 32, and an absorbent core between frontsheet 30 and backsheet 32. Id. ¶¶ 35, 36. Wings 40 extend laterally from back portion 20, and one wing 40 has at least one hook-type fastener element 41. Id. ¶ 37. Frontsheet 30 has fastener elements 42. Id. “[F]astener elements 41, 42 do not require landing zones and may engage directly with any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 or wings 40.” Ex. 1004 ¶ 40. One wing 40 can contact both fasteners 42 on frontsheet 30; both wings 40 can be secured to each other to form a belt; or each wing 40 can be secured to a respective fastener element 42. Id. ¶¶ 39, 40. IPR2020-01478 Patent 8,784,398 B2 15 3. Miyamoto ’499 (Ex. 1005) Miyamoto ’499 “relates to a method for forming a plurality of pairs of fastening members, each fastening assembly comprising a base panel and a tab having fastening materials spacedly positioned.” Ex. 1005 ¶ 1. Figure 4 of Miyamoto ’499 is reproduced below. Figure 4 shows “an enlarged top plan view of the fastening member.” Ex. 1005 ¶ 13. Miyamoto ’499 states that “ear panel 49 may comprise any material such as a plastic film, woven or nonwoven webs of natural fibers,” “ear panel 49 is preferably compliant, soft feeling, and non-irritating to the wearer’s skin as the ear panel 49 touches the wearer’s skin when in use,” and “at least a portion of the ear panel 49 may be vapor pervious, permitting vapor to readily penetrate through its thickness.” Ex. 1005 ¶ 31. Miyamoto ’499 also states that “fastening material 100 is provided on the shaped tab 51.” Ex. 1005 ¶ 33. “[F]astening material 100 comprises a first fastening material 106,” and “first fastening material 106 comprises a IPR2020-01478 Patent 8,784,398 B2 16 first hook fastening material comprising a plurality of hooks 102 and the base substrate 104 to support the hooks 102.” Id. “[F]astening material 100 may also have a second fastening material 108,” and “second adhesive material 108 may comprise the adhesive means 63 of the connective portion 59 or may comprise a different adhesive means” to “provide[] a supplemental fastening means.” Id. ¶ 34. 4. Jacobs (Ex. 1007) Jacobs “is related to a laminate containing a fibrous layer and a film layer.” Ex. 1007, 1:6-7. Jacobs states that there are “[v]arious disposable articles, e.g., diapers . . . and incontinence care products, that contain an outer layer of a liquid impervious or barrier material” and “a bonded nonwoven fabric can be placed in juxtaposition with a film and then bonded to form a composite” that has “soft, cloth-like textural properties [that] are highly useful outer cover materials for various garments, such as diapers.” Id. at 1:10-13, 1:26-30. According to Jacobs, “there remains a need for further improving tactile properties and thermal stability of liquid resistant composites.” Id. at 1:45-46. Jacobs summarizes its process as having: the steps of placing the fibrous layer and the liquid resistant layer in juxtaposition to form a laminate, attaching the fibrous layer and the liquid resistant layer at a plurality of spaced-apart bond locations, heating the bonded laminate to a temperature that activates the latent shrinkability of the liquid resistant layer, and allowing the heated laminate to retract such that the liquid resistant layer shrinks and said fibrous layer forms gathers between said bond locations, thereby forming a three dimensional texture and heat annealing the laminate. IPR2020-01478 Patent 8,784,398 B2 17 Ex. 1007, 1:54-64. Jacobs also provides “three dimensionally texturized laminate having a fibrous layer and nonelastic liquid resistant layer.” Id. at 1:65-66. In Jacobs, “a three dimensionally texturized liquid resistant laminate containing at least one fibrous layer and at least one liquid resistant layer . . . are placed in juxtaposition and bonded to impart spaced-apart bond sites, forming a unitary laminate” that is “thermally annealed.” Ex. 1007, 2:66- 3:6. “The laminate provides highly desirable properties including improved loft, softness, cloth-like texture and pleasing gathered appearance.” Id. at 3:7-9. “[T]he liquid resistant layer exhibits a higher level of latent shrinkability than the fibrous layer” and the “thin thermoplastic material (e.g., film or microfiber web) is drawn or oriented to improve strength properties of the material in the oriented direction” and to achieve “vapor transmittability and a more economical use of the material.” Id. at 3:46-56. The film is passed through heated rollers “desirably between the softening temperature and the melting point,” and “particularly desirable stretching temperatures for the liquid resistant layer are in the range between about 60° C. and about 120° C.” Ex. 1007, 4:9-21. The film is passed through more rollers “to apply a stretching tension to stretch and orient the molecules of the film.” Id. at 4:21-39. The stretched film is cooled “below the softening temperature of the film” by chilled rollers and placed juxtaposed with a fibrous web to form a laminate. Id. at 4:46-53. The bonded laminate is “thermally annealed” via heated rollers to “a suitable range for the annealing temperature . . . between about 5° C. and about 30° C. higher than the stretching temperature.” Id. at 5:24-43. While traveling through subsequent rollers and nip, “the heated film layer of the IPR2020-01478 Patent 8,784,398 B2 18 laminate shrinks and thermally anneals” with a “sequentially further shrinking and annealing.” Id. at 5:48-63. “During the annealing process, the shrinkage of the film layer causes the fibrous layer, which has a lower latent shrinkage than the film layer, to gather and bulk up between adjacent bond sites, forming a three dimensionally texturized laminate and improving textural properties of the laminate.” Ex. 1007, 6:6-11. “The resulting annealed laminate is three dimensionally texturized and thermally stable, and the laminate exhibits highly desirable textural and visual properties.” Id. at 6:23-26. Jacobs’s “laminate 60 has a plurality of spaced-apart bond sites 62 that attach the fibrous layer 64 and the liquid resistant layer 66,” and “the fibrous layer 64 of the texturized laminate 60 is gathered between the bond sites 62” to form “loop-like gathers that impart the three dimensional texture in the laminate.” Ex. 1007, 6:30-38. Jacobs states that “[t]he three dimensionally texturized laminate of the present invention exhibits soft, drapable, lofty characteristics,” “provides improved breathability when a breathable liquid resistant layer is utilized,” and “is highly useful for various applications where, for example, cloth-like texture and liquid resistance are required,” such as a “diaper outer cover.” Id. at 9:32-43. 5. Anderson (Ex. 1008) Anderson “relates to an improved breathable web and an economical method for advantageously modifying the physical properties of a web for use as a component of a disposable absorbent article, and to disposable articles incorporating such modified webs.” Ex. 1008, 1:8-12. Anderson states that “[i]t is further desirable that the improved material has a soft, cloth-like outer surface and extensibility useful for comfort and fit provided by absorbent articles containing such a material.” IPR2020-01478 Patent 8,784,398 B2 19 Ex. 1008, 2:41-44; see also id. at 1:28-34 (describing that passage of moisture vapor improves comfort). Anderson also states that “webs may be films, nonwovens, or composites of films and nonwoven webs, such as laminates.” Id. at 3:8-9. Anderson’s method modifies the web, and “the resultant microporous web is breathable to air or vapor, but acts as a liquid barrier under the impact pressure commonly imposed by the wearer of an absorbent article.” Id. at 2:65-3:1. Anderson’s “modified web can have a soft, cloth-like surface and extensibility for improved fit and wearer comfort.” Id. at 3:5-7. Anderson describes web 5 being drawn or extruded and fed to opposed forming rolls 8, 9. Ex. 1008, 5:49-6:17, Figs. 1, 3, 4. Figure 2 of Anderson is reproduced below. Figure 2 shows “a fragmentary perspective view of a pair of closely- spaced forming rolls each having alternating and interengaging peripheral teeth and grooves.” Ex. 1008, 3:29-31. Anderson states that its process modifies the physical properties of a web, and “[w]hen the web materials, such as nonwoven webs, films, or laminates thereof, are incorporated in a IPR2020-01478 Patent 8,784,398 B2 20 disposable absorbent article,” the properties can be modified such that the “web more easily . . . conforms with and adapts to the contours of the body of a wearer of a disposable article, both during application of the article to the body as well as while being worn and being subjected to loads as a result of body movements of the wearer.” Id. at 11:1-11:11, 11:23-46. Anderson states that “[t]he improved fit and adaptability to changing wearing conditions leads to greater wearer comfort.” Id. at 11:46-48. According to Anderson, its “modification process and apparatus . . . advantageously impart breathability to the modified film while imparting minimal adverse effect on the leakage performance of the modified web.” Ex. 1008, 12:12-17; see also id. at 16:4-5 (stating that “such a microporous web has good breathability and good fluid impermeability”). In another embodiment, Anderson joins nonwoven web 5 with polymeric film 11 “to provide a composite web 12 that can be utilized as a backsheet for a disposable absorbent article, such as a disposable diaper, or the like,” and film 11 can “form[] one layer of a composite backsheet that includes a liquid-impervious barrier film and at least one layer of a thin, nonwoven sheet that is attached to at least one surface of the film.” Ex. 1008, 17:49-58; see also id. at 17:65-18:51 (describing how the film and nonwoven can be joined). 6. Fernfors (Ex. 1045) Fernfors “relates to an absorbent article, such as a diaper or an incontinence guard, which is provided with a belt.” Ex. 1045 ¶ 2. Figure 1 of Fernfors is reproduced below. IPR2020-01478 Patent 8,784,398 B2 21 Figure 1 “schematically and with a cut-away portion shows an absorbent article.” Ex. 1045 ¶ 16. Absorbent article 1 includes liquid- pervious topsheet 2, substantially liquid-impermeable backsheet 3, absorbent body in between, and belt 9, 9’ attached to back portion 6 to be attached to front portion 5. Id. ¶¶ 22, 27, 33. “[B]elt halves 9, 9 can be attached to the topsheet 2 within the bonding areas 13, 13'.” Ex. 1045 ¶ 32. “[P]ieces of reinforcement material (only shown in FIG. 6) are permanently attached to opposite edge portions of the topsheet, wherein the insides of one end of the belt halves within bonding areas are attached to the topsheet via the pieces of reinforcement material.” Id. ¶ 30. E. Obviousness Based on Benning and Karami ’626 Petitioner provides a chart that labels the limitations of each challenged claim. Pet. vii-xiv. Petitioner challenges claims 1-5, 7, 8, 11- IPR2020-01478 Patent 8,784,398 B2 22 16, 19-22, 24, 25, and 28 as unpatentable over Benning and Karami ’626 with citations to the asserted references and declarant testimony. Pet. 48-70. Petitioner also challenges, with citations to the record, claims 6, 8-10, 17, 18, 23, 26, 27, 29, and 30 as unpatentable over Benning, Karami ’626, and at least one of Miyamoto ’499, Jacobs, Anderson, and Fernfors. Id. at 78-94. Petitioner further challenges claims 1-5, 7, 8, 11, 16, 19-22, 24, and 25 as unpatentable over Benning, Karami ’626, and Stupperich. Id. at 71-77. For the challenges based on Benning and Karami ’626, Patent Owner responds that Petitioner fails to show that one of ordinary skill in the art would have modified Benning with the teachings of Karami ’626 in the manner asserted by Petitioner. PO Resp. 40-49. Patent Owner also responds that the proposed modification lacks the detachable fastening of closures to front and side parts and the retaining forces would not be sufficient to hold and fasten the diaper. Id. at 50-56. Patent Owner further responds that one of ordinary skill in the art would not have modified Benning in view of Stupperich as proposed by Petitioner and that the other relied-upon references fail to cure the deficiencies asserted by Patent Owner. Id. at 56-58, 62. For the reasons below, a preponderance of the evidence persuades us that Petitioner’s proposed combinations including Benning and Karami ’626 teach or suggest the limitations of claims 1-21 and that one of ordinary skill in the art would have combined these references in the manner asserted by Petitioner with a reasonable expectation of success. 1. Analysis of Claim 1 a) An absorbent incontinence diaper, comprising: Petitioner argues, and Patent Owner does not dispute, that Benning teaches “an absorbent incontinence diaper.” Pet. vii (labeling as “1[p]”), 56 IPR2020-01478 Patent 8,784,398 B2 23 (citing Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶¶ 62-63); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches an “incontinence article” with “absorbent core 28,” as illustrated in Benning’s Figure 4. Ex. 1002 ¶ 53. We also credit Petitioner’s declarant testimony regarding the preamble because the cited portions of Benning support it. Ex. 1012 ¶¶ 62-63 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). Based on the full record, because Benning describes an incontinence article with absorbent core 28, Petitioner persuades us that Benning teaches the preamble of claim 1. b) a chassis having an inner face which, when in use, is directed toward a user body and an outer face which, when in use, is directed away from the user body, Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 with sheet 32 facing a user body and underlayer or backsheet 30 facing away from the body teaches the above-quoted limitation. Pet. vii (labeling the limitation as “1[a][1]”), 56 (citing Ex. 1002 ¶ 53, Figs. 5, 6); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches main body portion or chassis 20 with crotch region 26 that is “positioned between the legs of a wearer when the hygienic article is applied to a wearer” and fluid- impermeable underlayer 30 that can “form the outer visible side of the incontinence article.” Ex. 1002 ¶ 53, Figs. 5, 6. IPR2020-01478 Patent 8,784,398 B2 24 Based on the full record, because Benning’s incontinence article has chassis 20 with crotch portion 26 applied to a wearer when in use and fluid- impermeable underlayer 30 forming an outer visible side, which is directed away from the use when in use, Petitioner persuades us that Benning teaches “a chassis having an inner face which, when in use, is directed toward a user body and an outer face which, when in use, is directed away from the user body.” c) wherein an entire area of said outer face of said chassis is constituted by a first nonwoven material, Petitioner argues, and Patent Owner, does not dispute, that Benning’s underlayer 30 covers all of chassis 20 to form an outer visible side. Pet. vii (labeling the limitation as “1[a][2]”), 56 (citing Ex. 1002 ¶ 53, Figs. 4-6); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). Petitioner also argues that it proposes modifying underlayer 30 to be a nonwoven material. Pet. 56 (citing Ex. 1012 ¶ 121). We find that the relied-upon portion of Benning teaches chassis 20 with fluid-impermeable underlayer 30 that can “form the outer visible side of the incontinence article.” Ex. 1002 ¶ 53, Fig. 4. As discussed below, Petitioner proposes modifying underlayer 30 with Karami ’626’s nonwoven material. Ex. 1012 ¶ 121. Based on the full record, because Benning’s incontinence article includes chassis 20 with fluid-impermeable underlayer 30 forms an outer visible side and, as discussed below, Karami ’626 teaches a nonwoven material, Petitioner persuades us that Benning and Karami ’626 teach “wherein an entire area of said outer face of said chassis is constituted by a first nonwoven material.” For the reasons below, Petitioner persuades us IPR2020-01478 Patent 8,784,398 B2 25 that one of ordinary skill in the art would have modified Benning with the nonwoven of Karami ’626. d) said chassis having an absorption body and a backsheet on a side of said absorption body which, when in use, is directed away from the user body, Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 includes absorbent core 28 and underlayer 30 on a side of core 28 opposite the wearer and thus teaches the above-quoted limitation. Pet. vii (labeling the limitation as “1[a][3]”), 57 (citing Ex. 1002 ¶ 53, Figs. 4-6; Ex. 1012 ¶ 63); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches chassis 20 with absorbent core 28 having fluid-impermeable underlayer 30 that can “form the outer visible side of the incontinence article.” Ex. 1002 ¶ 53, Fig. 4. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 63 (citing Ex. 1002 ¶¶ 3, 33, 53, Figs. 4, 5). Based on the full record, because Benning’s incontinence article includes chassis 20 having absorbent core 28 with fluid-impermeable underlayer 30 forming an outer visible side, Petitioner persuades us that Benning teaches “said chassis having an absorption body and a backsheet on a side of said absorption body which, when in use, is directed away from the user body.” e) said absorption body having a smaller width than said backsheet, Petitioner argues, and Patent Owner does not dispute, that Benning shows that absorbent core 28 has a smaller width than underlayer 30, thereby IPR2020-01478 Patent 8,784,398 B2 26 teaching the above-quoted limitation. Pet. vii (labeling the limitation as “1[a][4]”), 57 (citing Ex. 1002, Figs. 4-6; Ex. 1012 ¶ 63); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that Benning shows that absorbent core 28 has a smaller width than underlayer 30. Ex. 1002, Figs. 4-6. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 63 (citing Ex. 1002 ¶¶ 3, 33, 53, Figs. 4, 5). Based on the full record, because Benning’s incontinence article has absorbent core 28 with a smaller width than underlayer 30, Petitioner persuades us that Benning teaches “said absorption body having a smaller width than said backsheet.” f) said chassis also having a rear area, a front area and a crotch area lying between said rear area and said front area, Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 includes front region 22, back region 24, and crotch region 26 in between, thereby teaching the above-quoted limitation. Pet. vii (labeling the limitation as “1[a][5]”), 57 (citing Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 62); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portions of Benning teach and show that “main body portion 20 comprises a front region 22, a back region 24 and a crotch region 26.” Ex. 1002 ¶ 53, Fig. 4. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 62 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). IPR2020-01478 Patent 8,784,398 B2 27 Based on the full record, because Benning’s incontinence article includes chassis 20 having back region 24, front region 22, and crotch region 26 in between, Petitioner persuades us that Benning teaches “said chassis also having a rear area, a front area and a crotch area lying between said rear area and said front area.” g) said chassis further defining first and second side edges, Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 has lengthwise edges 40 on each side and, thus, teaches the above-quoted limitation. Pet. vii (labeling the limitation as “1[a][6]”), 57 (citing Ex. 1002 ¶ 55, Fig. 4; Ex. 1012 ¶ 62); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches and shows “matching lengthwise edge 40 of the main body portion 20.” Ex. 1002 ¶ 55, Fig. 4. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 62 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). Based on the full record, because Benning’s incontinence article includes chassis 20 having lengthwise edges 40, Petitioner persuades us that Benning teaches “said chassis further defining first and second side edges.” h) four discrete, not directly connected side parts, each of said side parts having an inner face and an outer face Petitioner argues, and Patent Owner does not dispute, that Benning’s diaper has four wings 34 that are not connected directly to one another and that Benning shows wings 34 with inner and outer faces. Pet. vii (labeling the limitation as “1[b][1]”), 57-58 (citing Ex. 1002 ¶¶ 3, 29, 54-56, Figs. 4- 6; Ex. 1012 ¶ 62); PO Resp. 40-62 (disputing other limitations for proposed IPR2020-01478 Patent 8,784,398 B2 28 combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portions of Benning teach and show four wings 34 that are not connected to each other and that each has an inner and outer faces. Ex. 1002 ¶¶ 3 (stating that “the material section forming the side parts on the incontinence article, often described as ‘wings,’ can breathe”), 29 (describing “[t]he extension of a material section attached to the main body portion”), 54 (describing that “[i]n the back region 24 on both sides of the main body portion 20, a material section 34 forming side flaps or lateral sections is attached to a lengthwise edge section 36 of the main body portion 20”), 55 (describing that material sections 34 are shown “folded over themselves” in Figs. 4, 5), 56 (describing how material section 34 are folded to be grasped and unfolded), Figs. 4-6 (showing material sections 34 with inner and outer faces). We also credit Petitioner’s declarant testimony regarding this limitation because the record supports it. Ex. 1012 ¶ 62. Based on the full record, because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that Benning teaches “four discrete, not directly connected side parts, each of said side parts having an inner face and an outer face.” i) each of said side parts joined to one of said first and said second side edges with a side part being attached to a side edge on each side of said front area and a side part being attached to a side edge on each side of said rear area Petitioner argues, and Patent Owner does not dispute, that Benning’s wings 34 are attached at back region 24 at each of lengthwise edges 40 and at front region 22 at each of lengthwise edges 40. Pet. vii (labeling the limitation as “1[b][2]”), 58 (citing Ex. 1002 ¶¶ 29, 54, 55, Figs. 4-6; IPR2020-01478 Patent 8,784,398 B2 29 Ex. 1012 ¶ 62); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). As discussed above for the previous limitation, we find that a relied- upon portion of Benning teaches that “[i]n the back region 24 on both sides of the main body portion 20, a material section 34 forming side flaps or lateral sections is attached to a lengthwise edge section 36 of the main body portion 20.” Ex. 1002 ¶ 54. We also find that Figures 4-6 show material sections 34 attached to lengthwise edges on opposing sides of front region 22. We also credit Petitioner’s declarant testimony regarding this limitation because the record supports it. Ex. 1012 ¶ 62. Based on the full record, because Benning teaches and shows four material sections 34 each joined to sides edges with two attached at back region 24 and another two attached at front region 22, Petitioner persuades us that Benning teaches “each of said side parts joined to one of said first and said second side edges with a side part being attached to a side edge on each side of said front area and a side part being attached to a side edge on each side of said rear area.” j) closure means having mechanical closure aids Petitioner argues, and Patent Owner does not dispute, that Benning’s diaper includes closures 42 “[t]o close the incontinence article when it is worn” that are or would have been obviously “designed to grip mechanically.” Pet. vii (labeling the limitation as “1[c][1]”), 58 (citing Ex. 1002 ¶¶ 30, 55); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). IPR2020-01478 Patent 8,784,398 B2 30 We find that a relied-upon portion of Benning teaches that “material section 34 has two closures 42 in the form of closing tapes 44” and that “tapes 44 interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20.” Ex. 1002 ¶ 55. We also find that Benning teaches that, “[t]o close the incontinence article when it is worn by a user, the material sections have closures which can be designed to grip mechanically.” Id. ¶ 30. As discussed in more detail below, Petitioner argues that one of ordinary skill in the art would have been motivated to use Karami ’626’s hook-type fasteners for Benning’s fasteners 42, 44. Pet. 54 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶¶ 114-116); see also id. at 51-54 (asserting what Karami ’626 teaches regarding its hook-type fasteners) (citing Ex. 1004 ¶¶ 3, 4, 6- 11, 37-41, 55, Figs. 1, 7, 9, 10; Ex. 1012 ¶¶ 104-107, 114-116). Regarding what Karami ’626 teaches about its hook-type fasteners, we find that the relied-upon portions teach “a disposable absorbent article which, in one preferred embodiment, incorporates a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional non-woven material” and that “the fastener assembly provides size adjustability.” Ex. 1004 ¶¶ 7, 10. We credit Petitioner’s declarant testimony that minihooks can releasably engage with conventional nonwovens because Karami ’626 supports it. Ex. 1012 ¶ 112 (citing Ex. 1004 ¶¶ 57-60, 70). Because Benning’s incontinence article includes closures 42 that can “interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20” and Benning’s closures “can be designed to grip mechanically” (Ex. 1002 ¶¶ 30, 55), we find that Benning’s closures 42, in accordance with our interpretation of “closure means” IPR2020-01478 Patent 8,784,398 B2 31 determined above, perform the function of “‘detachabl[y] fasten[ing]’ to outer faces of a diaper’s main and side parts” and are each “a ‘strip [of] material’ . . . with one or more adhesive regions.” Ex. 1001, 4:37-5:3, 12:41-53, 15:32-37, 16:12-16; Ex. 1012 ¶¶ 50-52. Also, because Karami ’626’s “disposable absorbent . . . article incorporates a fastener assembly consisting exclusively of a minihook fastener element,” we find that Karami ’626’s fastener assembly performs the function of “‘detachabl[y] fasten[ing]’ to outer faces of a diaper’s main and side parts” and are each “a ‘strip [of] material’ including ‘hooks of a hook-and-loop fastener.” We address below whether one of ordinary skill in the art would have made Petitioner’s proposed modification. Based on the full record, Petitioner persuades us that Benning and Karami ’626 teach “closure means having mechanical closure aids.” k) said closure means connected to said side parts at said rear area Petitioner argues, and Patent Owner does not dispute, that Benning’s closures 42 are attached to material sections 34 at back region 24. Pet. vii (labeling the limitation as “1[c][2]”), 58 (citing Ex. 1002 ¶¶ 30, 54, 55, Fig. 4; Ex. 1012 ¶ 62); PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portions of Benning teach and show four wings 34 that are not connected to each other and that each has an inner and outer faces. Ex. 1002 ¶¶ 30 (describing that “[t]o close the incontinence article when it is worn by a user, the material sections have closures” and “[i]t proves expedient if the material sections in the back region have closures of a type which can act in concert in a releasably gripping or IPR2020-01478 Patent 8,784,398 B2 32 adhering fashion with a landing zone on the main part of the diaper”), 54 (describing that “[i]n the back region 24 on both sides of the main body portion 20, a material section 34 forming side flaps or lateral sections is attached to a lengthwise edge section 36 of the main body portion 20”), 55 (describing that, as shown in Fig. 4, “right material section 34 has two closures 42 in the form of closing tapes 44 folded over themselves which are unfolded when the article is to be used in the intended manner”), Fig. 4 (showing material sections 34 at back region 24 having closures 42). We also credit Petitioner’s declarant testimony regarding this limitation because the record supports it. Ex. 1012 ¶ 62. Based on the full record, because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that Benning teaches “said closure means connected to said side parts at said rear area.” l) said closure means configured for selective detachable fastening to said outer face of said chassis and to said outer face of said side parts in said front area Petitioner argues that it proposes modifying “to use a film-nonwoven backsheet like Karami ’626’s for Benning’s underlayer 30, and fasteners like Karami ’626’s for Benning’s closures 42” and Karami ’626’s “fasteners are designed (configured) to detachably fasten to conventional nonwovens,” such as the modified underlayer and Benning’s material sections 34. Pet. vii (labeling the limitation as “1[c][3]”), 58-59 (citing Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 7, 62-64, 70, 78). Petitioner also argues that, after Benning has been modified with Karami ’626’s backsheet and fasteners, Benning’s closures 42, which “interact . . . with an outside 46 of the front region 22,” IPR2020-01478 Patent 8,784,398 B2 33 would have interacted with the outer face of underlayer 30 and outer faces of front wings 34. Id. at 59 (citing Ex. 1002 ¶ 55). As discussed below in more detail, Petitioner contends that it would have been obvious to use Karami ’626’s fastener in Benning and to use Karami ’626’s film nonwoven backsheet for Benning’s underlayer 30. Pet. 58. According to Petitioner, the modified Benning diaper would have fasteners that interact with an outer face of the backsheet and an outer face of front wings 34 with the claimed differing retaining forces. The parties dispute whether Petitioner’s proposed modification would have sufficient retaining forces to fasten and hold the modified diaper on a wearer. Because Petitioner contends that its proposed combination of Benning and Karami ’626 has the claimed retaining forces, we analyze these limitations below together with Petitioner’s proposed modifications to Benning in view of Karami ’626. m) wherein retaining forces between said closure means and said outer face of said chassis secure said diaper on the user body, when in use, and are lower than retaining forces between said closure means and said outer face of said side parts in said front area Petitioner argues that the proposed modification of Benning would have had a higher-basis-weight nonwoven for its wings 34 than its modified underlayer based on the ranges of basis weight taught in Benning and Karami ’626. Pet. vii (labeling the limitation as “1[c][4]”), 59 (citing Ex. 1002 ¶ 32; Ex. 1004 ¶ 65). Petitioner also argues that “[f]or higher- basis-weight wings 34, ‘more loops [would have been] available for engagement by the hook portion of the fastener’” and, thus, have higher retaining forces than the lower-basis-weight nonwoven of underlayer 30. Id. (citing Ex. 1012 ¶ 128; Ex. 1040, 2:35-39; Ex. 1044, 5:3-7). According to IPR2020-01478 Patent 8,784,398 B2 34 Petitioner, the ’398 patent confirms the correlation between basis weight and retaining forces. Id. at 59-60 (citing Ex. 1001, 7:25-32, 13:42-49; Ex. 1012 ¶ 128). The parties dispute whether Petitioner’s proposed modification would have the recited difference in retaining forces. Because Petitioner contends that its proposed combination of Benning and Karami ’626 has the claimed retaining forces, we analyze these limitations below together with Petitioner’s proposed modifications to Benning in view of Karami ’626. n) said entire area of said outer face excludes mechanical closures other than said first nonwoven material when not fastened to said closure means Petitioner argues that, with its proposed modifications of Benning, “[t]he entire outer face of chassis 22 comprises the nonwoven of modified underlayer 30 . . . , whose landing zones were eliminated by the same” and “excludes ‘mechanical closures other than [that nonwoven].’” Pet. vii (labeling the limitation as “1[c][5]”), 60 (referring to arguments for limitation “1[a][2]”). As discussed above, we find that Benning teaches chassis 20 with fluid-impermeable underlayer 30 that can “form the outer visible side of the incontinence article.” Ex. 1002 ¶ 53, Fig. 4. Petitioner proposes modifying underlayer 30 with Karami ’626’s nonwoven material to eliminate the need for a landing zone. Ex. 1012 ¶ 121. Based on the full record, because Benning’s chassis 20 with fluid- impermeable underlayer 30 forms an outer visible side and, as discussed below, Karami ’626 teaches a fastener assembly and nonwoven material that do not require landing zones, Petitioner persuades us that Benning and Karami ’626 teach “said entire area of said outer face excludes mechanical IPR2020-01478 Patent 8,784,398 B2 35 closures other than said first nonwoven material when not fastened to said closure means.” For the reasons below, Petitioner persuades us that one of ordinary skill in the art would have modified Benning with the nonwoven of Karami ’626. o) Proposed Modifications (1) Film-Nonwoven Backsheet Petitioner argues that “Karami ’626’s diaper has a film-nonwoven backsheet” and such a backsheet prevented leakage because of the film and “promote[d] wearer comfort and visual appeal” because of its “cloth-like outer surface.” Pet. 50-51 (citing Ex. 1004 ¶¶ 62, 64; Ex. 1008, 1:51-67; Ex. 1012 ¶¶ 30, 31, 108, 112, 113; Ex. 1019, 1:55-2:32; Ex. 1023, 8:3-28; Ex. 1037 ¶ 60). According to Petitioner, one of ordinary skill in the art would have understood Karami ’626’s film-nonwoven laminate to be “particularly suited to the above benefits given its nonwoven’s lower (e.g., ‘optimally 20 gsm’) basis weight, which was known to promote ‘a generally cloth-like texture.’” Id. (citing Ex. 1012 ¶ 113; Ex. 1023, 8:18-24; Ex. 1037 ¶ 60). Petitioner, thus, argues that the ordinarily skilled artisan “would have been motivated to use a film-nonwoven laminate like Karami ’626’s for Benning’s underlayer 30” because the film-nonwoven laminate would “a) provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper; and b) improve adjustability by enabling fasteners like Karami ’626’s to ‘[e]ngage directly with any portion of [a diaper’s] nonwoven surface[s]’ to secure the diaper on a wearer.” Pet. 51 (alterations in original) (citing Ex. 1004 ¶ 40; Ex. 1012 ¶ 112). IPR2020-01478 Patent 8,784,398 B2 36 (2) Fasteners According to Petitioner, Karami ’626 explains that the fasteners used in Benning were disadvantageous because they required landing zones that limited where they could be secured and, thus, limited size adjustability. Pet. 51-52 (citing Ex. 1002 ¶ 30; Ex. 1004 ¶¶ 3, 4, 6; Ex. 1012 ¶ 114). Petitioner contends that Karami ’626’s hook-type fasteners can engage directly with a conventional nonwoven that can be used for a diaper’s backsheet and wings and, thus, accommodate small- and large-waisted wearers. Id. at 52 (citing Ex. 1004 ¶¶ 6-11, 39-41, 55; Ex. 1012 ¶¶ 104, 107, 114, 115). Petitioner specifically points to Karami ’626’s T-shaped diaper to explain how Karami ’626’s hook-type fasteners can be used for small- and large-waisted users. Pet. 52-53 (citing Ex. 1004 ¶¶ 37-40, Figs. 1, 7; Ex. 1012 ¶¶ 105-107, 116). Petitioner also argues that Karami ’626 explains that similar or analogous improvements in fit can be achieved for Karami ’626’s integral-chassis diaper 14 with rear wings that would have been understood to be able to engage with front wings for a larger-waisted wearer or a central portion of the front for a smaller-waisted wearer. Id. at 54 (citing Ex. 1004 ¶¶ 37-40, 55, Figs. 9, 10; Ex. 1012 ¶¶ 106, 107, 116). Petitioner, thus, argues that one of ordinary skill in the art would have been motivated to use Karami ’626’s hook-type fasteners for Benning’s fasteners 42, 44 “at least to improve size-adjustability by directly engag[ing] with a backsheet nonwoven . . . or its nonwoven wings 34.” Pet. 54 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶¶ 114-116). Petitioner also argues that Benning’s wings 34 are “preferably spunbond material” with a surface weight of 25-50 gsm, which is like Karami ’626’s film-nonwoven backsheet, so that Karami ’626’s hook-type fasteners can engage Benning’s preferred wing material. IPR2020-01478 Patent 8,784,398 B2 37 Id. (citing Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 39, 40, 62, 63, 65; Ex. 1012 ¶ 115). Petitioner further argues that “implementing Karami ’626’s teachings would have involved attaching hook-type fasteners in place of Benning’s tapes 44 such that the hooks would engage either of the front wings 34 for larger- waisted users, or backsheet for smaller-waisted users (like Karami ’626’s T- shaped and integral diapers, supra).” Id. at 54-55 (citing Ex. 1012 ¶¶ 115, 116). (3) Lower Basis Weight Nonwoven for a Backsheet Petitioner argues that modifying the Benning diaper to include a film- nonwoven backsheet like Karami ’626’s would have resulted in the backsheet being “optimally 20 gsm” and wings 34 being 25-50 gsm. Pet. 55 (citing Ex. 1002 ¶ 32; Ex. 1004 ¶ 65; Ex. 1012 ¶ 112, 113, 117, 118). Petitioner also argues that Karami ’626 teaches the use of different basis weight nonwovens for its wings and backsheet, specifically noting that Karami ’626’s T-shaped diaper has “20-40 gsm (optimally 34 gsm)” preferred for its wings and “15-30 gsm (optimally 20 gsm)” preferred for its backsheet. Id. (citing Ex. 1004 ¶ 65; Ex. 1012 ¶ 118). Petitioner, thus, argues that one of ordinary skill in the art would have understood that a higher basis weight nonwoven for the wings of Benning’s diaper is preferred, “given that, like Karami ’626’s T-shaped diaper, its wings were separate from the backsheet, would encircle a wearer’s waist when worn, and would be engaged by fasteners.” Id. (citing Ex. 1012 ¶ 118). Petitioner further argues that one of ordinary skill in the art would have “recognized that higher-basis-weight (e.g., 18-60 gsm, such as 30 gsm) wings would have desirably promoted diaper-strength while lower-basis- weight nonwovens (e.g., 10-30 gsm, such as 20 gsm) for backsheets would IPR2020-01478 Patent 8,784,398 B2 38 have desirably promoted wearer-comfort.” Pet. 55-56 (citing Ex. 1012 ¶ 118). (4) Patent Owner’s Response Patent Owner responds that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in the claimed differing retaining forces, in particular limitations 1[c][3], 1[c][4], 26[c][3], 26[c][4], 28[c][3], 28[c][4], 28[d][1], 28[d][2], 30[c][3], 30[c][4], 30[d][1], and 30[d][2] and dependent claims 15, 19, 24, 25. PO Resp. 40 (citing Ex. 2004 ¶¶ 79, 88, 156), 50. Patent Owner also responds that one of ordinary skill in the art would not have modified Benning in view of Karami ’626 in the manner Petitioner asserts. Id. at 41 (citing Ex. 2004 ¶¶ 158-163, 171-181), 42 (citing Pet. 55-56; Ex. 2004 ¶¶ 158-170). According to Patent Owner, Petitioner proposes engaging the side flaps of Benning with the front of Karami ’626’s T-shaped diaper, but those portions were not designed to engage fasteners. PO Resp. 41 (citing Ex. 2004 ¶¶ 158-162). Patent Owner argues that Benning teaches making its side flaps more flexible, so they would not be heavier and more rigid than its underlayer. Id. (citing Ex. 2004 ¶ 163). Patent Owner also argues that the proposed combination would necessarily result in the claimed retaining forces because “many other factors impact the ability of a nonwoven surface to engage fasteners.” Id. at 41-42 (citing Ex. 2004 ¶¶ 99-110, 176-181). In Patent Owner’s view, Benning’s diaper and Karami ’626’s T- shaped diaper “are designed differently and operate fundamentally differently,” and one of ordinary skill in the art would not have replaced Benning’s underlayer which engages fasteners with Karami ’626’s backsheet which does not engage fasteners. PO Resp. 42 (citing Ex. 2004 ¶¶ 97, 158-170). Patent Owner provides its understanding of how Karami IPR2020-01478 Patent 8,784,398 B2 39 ’626’s T-shaped diaper has fasteners that engage wings or a belt. Id. at 42- 43 (citing Ex. 1004 ¶¶ 37, 38, Fig. 1; Ex. 2003, 163:18-164:18; Ex. 2004 ¶¶ 81, 82, 160-162, 165, 167). Patent Owner also explains how it understands the fasteners of Benning’s diaper engage the front, not side flaps. Id. at 43-44 (citing Ex. 1002 ¶¶ 28, 54, 55; Ex. 2004 ¶¶ 76, 165-167). Patent Owner, thus, argues that one of ordinary skill in the art would not have made Petitioner’s proposed modification because “modifying the underlayer does not turn Benning’s diaper into a T-shaped diaper or alter the function of the side flaps, which were not designed to engage fasteners.” Id. (citing Ex. 2004 ¶ 166). Patent Owner also contends that Petitioner’s declarant did not understand how Karami ’626’s T-shaped diaper worked and erroneously thought its fasteners engaged the backsheet. PO Resp. 43-44 (citing Ex. 2003, 143:7-149:3, 151:1-158:13). According to Patent Owner, Petitioner’s declarant agreed with Patent Owner’s understanding of how Karami ’626’s T-shaped diaper worked. Id. at 44 (citing Ex. 2003, 163:18- 21, 164:13-19). Patent Owner also responds that one of ordinary skill in the art would have understood that Karami ’626 does not teach fasteners engaging the front of its T-shaped diaper, does not care if a nonwoven is used for the front, and “is only concerned about the wings because that is the only surface that engages fasteners.” PO Resp. 44 (citing Ex. 1004 ¶ 16; Ex. 2003, 163:18-21, 164:13-19; Ex. 2004 ¶¶ 81-86, 159, 160, 165-167). Patent Owner, thus, argues that one of ordinary skill in the art would not have used Karami ’626’s front portion which does not engage fasteners as Benning’s underlayer which does engage fasteners. Id. at 44-45 (citing Ex. 2004 ¶ 167). IPR2020-01478 Patent 8,784,398 B2 40 Regarding size adjustability as a reason for modifying, Patent Owner responds that one of ordinary skill in the art would not have made the proposed modification because Karami ’626 does not teach fasteners that can engage anywhere on a diaper and “expressly ties size adjustability to the T-shaped diaper and use of the wings.” PO Resp. 45-46 (citing Pet. 51-52; Ex. 1004 ¶¶ 40, 41, 50, 51; Ex. 1012 ¶¶ 107, 115, 116; Ex. 2003, 161:21- 163:11, 163:18-21, 164:13-19; Ex. 2004 ¶¶ 83-86, 168-170). According to Patent Owner, one of ordinary skill in the art would have understood Karami ’626 to be teaching that “fasteners can engage any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 of wings 40.” Id. at 46 (citing Ex. 1004 ¶¶ 40, 47, 49, 74; Ex. 2003, 203:4-19; Ex. 2004 ¶¶ 85-86). Patent Owner, thus, argues that one of ordinary skill in the art would not have considered size adjustability as a reason for modifying Benning because Karami ’626 teaches size adjustability based on fasteners engaging different parts of wings, not an underlayer. Id. (citing Ex. 2004 ¶ 169). Patent Owner also argues that size adjustability would not have been a reason to use nonwovens with different basis weights because one of ordinary skill in the art would have understood that size adjustability is provided by fasteners engaging the same nonwoven, not nonwovens of different basis weights. PO Resp. 46-47 (citing Ex. 2004 ¶ 143). Regarding the use of higher basis weight nonwovens for the side flaps, Patent Owner responds that one of ordinary skill in the art would not have used a higher basis weight because “Benning expressly teaches that the side flaps should be designed for comfort” which “would lead to a lower basis weight nonwoven at the sides, not a higher one.” PO Resp. 47 (citing Pet. 55-56; Ex. 1002 ¶ 33; Ex. 1012 ¶ 118; Ex. 2004 ¶¶ 182-183). Patent Owner also argues that Benning teaches that the sides should be less rigid IPR2020-01478 Patent 8,784,398 B2 41 than the backsheet, and, thus, one of ordinary skill in the art would not have made the sides heavier and more rigid than the underlayer. Id. at 48 (citing Ex. 1002 ¶ 33; Ex. 2004 ¶¶ 182, 183). Patent Owner further argues that Benning teaches that the side flaps are wider than a belt in a T-shaped diaper, which would make the side flaps even heavier in Petitioner’s modified Benning diaper, and that higher basis weight nonwovens would have been more expensive. Id. (citing Ex. 1002 ¶ 28; Ex. 1012 ¶ 118; Ex. 2004 ¶ 183). Patent Owner contends that Petitioner does not address these teachings. Id. Patent Owner also responds that Petitioner’s citation to Karami ’626 relates to T-shaped diapers with fasteners that do not engage the front of the diaper. PO Resp. 48-49 (citing Pet. 55; Ex. 1004 ¶ 65; Ex. 2003, 163:18- 21, 164:13-19; Ex. 2004 ¶¶ 89-91, 184). Patent Owner asserts that one of ordinary skill in the art would have understood Karami ’626’s preference for different basis weight nonwovens applied to T-shaped diapers, not diapers like Benning’s. Id. at 49-50 (citing Ex. 2004 ¶ 184). In Patent Owner’s view, one of ordinary skill in the art seeking to modify Benning’s underlayer in view of Karami ’626 would have used higher basis weight nonwoven for Benning’s underlayer because Karami ’626’s fasteners engage a higher basis weight nonwoven wing or belt. PO Resp. 49 (citing Ex. 2004 ¶ 184). Patent Owner argues that Petitioner has not established that Karami ’626’s backsheet can engage fasteners “to secure the modified diaper on the user as claimed” because the front of the T- shaped diaper does not engage fasteners. Id. at 50 (citing Pet. 51, 55, 59, 63, 64, 69, 70; Ex. 2003, 163:18-164:18; Ex. 2004 ¶¶ 82-86, 159-162, 171- 173). Patent Owner also argues that “Karami ’626’s mention of using a 20 gsm nonwoven at the front of that diaper is not evidence that the nonwoven IPR2020-01478 Patent 8,784,398 B2 42 could engage fasteners or engage them sufficiently to fasten and hold the diaper.” Id. According to Patent Owner, Petitioner does not allege that its asserted fasteners are “said closure means configured for selective detachable fastening to said outer face of said chassis and to said outer face of said side parts in said front area” and does not explain why those fasteners would necessarily be able to fasten detachably because the proposed combination has “a nonwoven from Karami ’626 that does not engage fasteners a[t] the outer face.” PO Resp. 50 (citing Pet. 58-59, 69-70, 80, 82). Patent Owner also argues that Petitioner merely contends that the fasteners can detachably fasten to conventional nonwovens, not the nonwoven from Karami ’626. Id. at 51 (citing Pet. 58-59). Patent Owner further argues that Petitioner only contends that the fasteners would interact with the outer face of underlayer 30, not detachably fasten to the outer face, as claimed. Id. (citing Pet. 58- 59). Patent Owner additionally argues that Karami ’626’s nonwoven includes interstices or holes that would make it hard for a hook fastener to engage the nonwoven. Id. (citing Ex. 1004 ¶ 63; Ex. 2004 ¶ 92). Regarding the retaining forces being sufficient to fasten and hold the diaper, Patent Owner argues that Petitioner does not show or explain that the retaining forces of its proposed combination are sufficient to secure the diaper on the user. PO Resp. 51-52 (citing Pet. 54, 59-60, 69-70, 80, 82; Ex. 1001, 16:11-23). Patent Owner also argues that, because fasteners do not engage Karami ’626’s 20 gsm backsheet, one of ordinary skill in the art would not have expected fasteners to engage such a nonwoven sufficiently to fasten and hold a diaper. Id. at 52 (citing Ex. 2004 ¶ 173). Patent Owner turns to Karami ’772 to argue that Karami ’772 did not even test an untreated 20 gsm nonwoven with fastener Binder 25445 and that one of IPR2020-01478 Patent 8,784,398 B2 43 ordinary skill in the art would have understood from Karami ’772 that a 20 gsm backsheet would need to be treated to engage a fastener to fasten and hold a diaper. Id. (citing Ex. 1003 ¶ 41, Table 1; Ex. 1004 ¶¶ 5, 13, 78; Ex. 2004 ¶ 173). Patent Owner, thus, argues that one of ordinary skill in the art would have understood that Petitioner’s modified Benning diaper with an untreated 20 gsm nonwoven would not have sufficient retaining forces to fasten and hold the diaper. Id. (citing Ex. 2004 ¶ 173). Regarding the required closure configured for selective detachable fastening to the outer face of the side parts, Patent Owner responds that Benning’s “side flaps were not designed to fasten and secure the diaper” and that “Benning’s diaper is designed to have closures engage the front of the diaper,” not any other location. PO Resp. 53 (citing Pet. 54, 58-59, 69-70, 80, 82; Ex. 1002 ¶¶ 3, 30, 55; Ex. 1012 ¶ 117; Ex. 2004 ¶¶ 76, 174, 175). In Patent Owner’s view, “[t]he side flaps in Benning were designed for comfort, not for engaging fasteners or securing the diaper.” Id. (citing Ex. 1002 ¶ 30). Patent Owner argues that “Petitioner has not shown that the side flaps necessarily would have been able to engage and fasten closures/fasteners to secure the diaper.” Id. Regarding Petitioner’s modified diaper having fasteners able to engage front wings 34 or backsheet with different retaining forces, Patent Owner responds that “Petitioner never directly alleges that the modified Benning diaper could be secured on the wearer” and “has not shown that the claimed features of detachable fastening, differing retaining forces, and securing the diaper on the user are necessarily present in the modified Benning diaper or the natural result of the Benning-’626 combination, as required for inherency.” PO Resp. 53-54 (citing Pet. 54-55, 59-60). Patent Owner also argues that, even if different basis weight nonwovens provided IPR2020-01478 Patent 8,784,398 B2 44 different retaining forces, “that does not mean the forces would be sufficient to secure the diaper on the user.” Id. at 54. Patent Owner further argues that other factors affect how well a nonwoven engages a fastener, and that Petitioner does not address those other factors. PO Resp. 54 (citing Ex. 2004 ¶¶ 95-118, 176-181). Patent Owner contends that (1) Petitioner’s declarant acknowledged, (2) Karami ’626 teaches, and (3) Karami ’772 shows that other variables can affect how well a fastener engages a nonwoven. Id. at 54-55 (citing Ex. 1003, Table 1; Ex. 1004 ¶ 69; Ex. 1012 ¶ 133; Ex. 2003, 170:10-172:8). Patent Owner also contends that the challenged patent does not provide evidence that “differing retaining forces would have been inherent in the modified diaper,” and the challenged patent is being misread if it is relied on for that teaching. Id. at 55 (citing Pet. 59; Ex. 1001, 12:62-13:49, 14:47-15:52; Ex. 2004 ¶¶ 111- 118). Patent Owner, thus, argues that Petitioner fails to show “the claimed retaining forces are inherent or the requirement that the retaining forces secure the diaper on the user are the natural result of the modified Benning diaper.” Id. at 56. (5) Petitioner’s Reply Regarding Patent Owner’s argument that the Benning and Karami ’626 diapers are designed and operate differently, Petitioner replies that the argument relies on an incorrect premise that fasteners cannot engage Karami ’626’s backsheet and relies on testimony directed to Karami ’626’s specific illustration. Pet. Reply 15-16 (citing PO Resp. 42-45; Ex. 1004 ¶ 42; Ex. 2003, 147:16-148:11, 157:11-158:13, 163:18-21, 197:15-198:2). Petitioner argues that Patent Owner’s references to Karami ’626’s “belt backsheet” does not defeat Karami ’626’s other teaching that separately IPR2020-01478 Patent 8,784,398 B2 45 addresses wings 40 and backsheet 32. Id. at 16 (citing PO Resp. 45-46; Ex. 1004 ¶¶ 36, 47, 49, 74). Petitioner also argues that Karami ’626 teaches a fastener with minihook elements and a nonwoven that provides size adjustability and that teaching extends beyond Karami ’626’s T-shaped diaper. Pet. Reply 16 (citing Ex. 1004 ¶¶ 6-8, 10, 11, 55; Ex. 1012 ¶¶ 104-107, 115, 116). Petitioner further argues that “[t]he prior art recognizes Karami ’626’s fastening system is not limited to wing-only attachment” and, as explained by Petitioner’s declarant, one of ordinary skill in the art would have modified Benning in view of Karami ’626 for size adjustability. Id. at 16-17 (citing Pet. 51-55; PO Resp. 45-47; Ex. 1012 ¶¶ 113-116; Ex. 1028 ¶¶ 6, 7). Petitioner also replies that Patent Owner does not contest that an ordinarily skilled artisan would have wanted and could have achieved the proposed modification of Benning in view of Karami ’626 for size adjustability. Pet. Reply 17 (citing PO Resp. 42-47; Ex. 1054, 130:24- 131:9, 141:18-24; Ex. 2004 ¶ 96). Petitioner argues that fasteners engaging the front, but not side flaps, “underscores the desirability of adding wing- fastener engagement to achieve size adjustability as Karami ’626 indisputably teaches.” Id. (citing PO Resp. 43-47; Ex. 1012 ¶¶ 114-116). Petitioner further replies that Patent Owner’s argument that size adjustability is best achieved through same basis weight wing and backsheet nonwovens relies on conclusory declarant testimony and does not dispute that different basis weight wing and backsheet nonwovens can also achieve size adjustability. Pet. Reply 17 (citing PO Resp. 46-47). Petitioner additionally argues that its “argument is that the Benning-Karami ’626 diaper would have obviously-not inherently-included such fastener- IPR2020-01478 Patent 8,784,398 B2 46 engaging nonwovens for size adjustability,” and Patent Owner does not dispute the ordinarily skilled artisan’s ability or motivation to modify Benning in view of Karami ’626. Id. at 17-18 (citing Pet. 51-55; PO Resp. 50-55). Regarding the claimed diaper holding requirement, Petitioner replies that Patent Owner’s arguments are not credible in view of the Benning- Karami ’626 diaper’s size adjustability. Pet. Reply 18 (citing Pet. 51-55; PO Resp. 50-51). Petitioner contends that fasteners can engage Karami ’626’s backsheet. Id. (citing PO Resp. 50-51; Ex. 1004, Figs. 9, 10). Petitioner also contends that the modified underlayer would be Karami ’626’s backsheet which is a conventional nonwoven. Id. (citing Pet. 58-59; PO Resp. 50-51). Petitioner further contends that Karami ’626’s nonwovens are for engaging hook-type fasteners, and so their interstice size must be sufficient for hooks to engage fibers. Id. at 19-20 (citing PO Resp. 51; Ex. 1004, Abstract, ¶¶ 13-15, 63, 67; Ex. 1054, 43:3-44:21, 48:3-50:7, 51:14-16). Regarding Patent Owner’s argument that Karami ’626’s nonwoven would need to be treated to engage fasteners, Petitioner replies that Patent Owner makes a comparison of values with different units, and that Patent Owner’s declarant testifies that one of ordinary skill in the art would not rely on those values. Pet. Reply 19-20 (citing PO Resp. 52; Ex. 1004 ¶¶ 5, 13, 78; Ex. 2004 ¶¶ 68-72). Petitioner also argues that Karami ’626 teaches an untreated nonwoven that can securely engage fasteners when used in a diaper’s wings. Id. at 20 (citing PO Resp. 43; Ex. 1004 ¶ 65; Ex. 1054, 57:13-21). Regarding higher-basis-weight wings, Petitioner replies that Patent Owner’s declarant agreed that one of ordinary skill in the art would have IPR2020-01478 Patent 8,784,398 B2 47 used a heavier-basis-weight nonwoven for the wings of a diaper to prevent tearing. Pet. Reply 20-21 (citing Pet. 55-56; Ex. 1012 ¶¶ 92-94, 118; Ex. 1054, 97:15-24, 125:15-127:15, 141:25-143:19). Petitioner also replies that Benning teaches that nonwovens up to 150 g/m2 and specifically 25-50 g/m2 can be skin friendly and less rigid, that those teachings are consistent with Petitioner’s proposed modification of the side flaps of Benning’s diaper, and that stronger wings would have led to using heavier nonwoven in the side flaps because additional softness would be pointless. Id. at 21 (citing Pet. 55-56, 59; PO Resp. 47-49; Ex. 1002 ¶¶ 32, 33; Ex. 1012 ¶¶ 92- 94, 118; Ex. 1054, 97:15-24, 106:12-107:1, 125:15-127:15, 141:25-143:19, 171:6-172:7). Petitioner further replies that Patent Owner’s argument that Karami ’626 teaches heavier wings and lighter backsheets only for T-shaped diapers is based on conclusory declarant testimony. Pet. Reply 21-22 (citing PO Resp. 48-49; Ex. 1004 ¶ 65; Ex. 2004 ¶ 184). Petitioner argues that Patent Owner does not address analogous features in the modified Benning diaper that would have made T-shaped diaper teachings applicable. Id. (citing Ex. 1012 ¶¶ 117-118). Petitioner finally replies that, in its proposed combination, both the wings and backsheet can engage with fasteners and the wing nonwoven has no film, thus needing a heavier weight for strength. Pet. Reply 22 (citing Pet. 51, 54; PO Resp. 49; Ex. 1054, 126:13-127:2). Petitioner argues that Patent Owner’s declarant indicated that the wings would need a heavier and stronger nonwoven. Id. at 22-23 (citing Ex. 1012 ¶¶ 19-21, 58; Ex. 1054, 97:15-24). Regarding other factors that may affect basis weight and retaining forces, Petitioner replies that Patent Owner “lacks even an allegation that a IPR2020-01478 Patent 8,784,398 B2 48 [person of ordinary skill in the art] implementing Karami ’626’s teachings in Benning’s diaper would have selected any one of these parameters in a way that brought a higher-basis-weight wing-nonwoven’s fastener-retaining forces below a lower-basis-weight backsheet-nonwoven’s fastener-retaining forces.” Pet. Reply 22-23 (citing PO Resp. 53-56, 59-61; Ex. 2004 ¶¶ 99- 110). Petitioner also argues that it has provided the only evidence that the claimed retaining forces would have naturally resulted from its proposed modification of Benning’s diaper with Karami ’626. Id. at 23 (citing Pet. 59-60; Ex. 1001, 7:25-32, 13:42-49; Ex. 1012 ¶¶ 120, 121, 128; Ex. 1040, 2:35-39; Ex. 1044, 5:3-7). Petitioner points to the ’398 patent’s description of only basis weight, and not any other parameter, for ensuring the required retaining forces. Id. at 23-24 (citing Ex. 1001, 4:37-39, 6:24- 37, 7:65-8:4, 14:12-18). Petitioner also argues that the ’398 patent indicates that the claimed retaining forces are a necessarily present property, not an additional requirement. Id. (citing Ex. 1051, 44:25-45:7). Regarding hindsight, Petitioner replies that Karami ’626 teaches the materials and basis weights for Petitioner’s proposed modification of the Benning diaper. Pet. Reply 24-25 (citing Pet. 62-67; PO Resp. 61; Ex. 1001, 14:50-15:52; Ex. 1002 ¶ 32; Ex. 1003 ¶¶ 28, 31; Ex. 1004 ¶¶ 58, 60, 62-65). (6) Patent Owner’s Sur-Reply Patent Owner replies that “Petitioner abandons prior arguments and presents new ones” and its “obviousness grounds are premised on inherency.” PO Sur-reply 1. Patent Owner argues that, because Petitioner bears the burden, “Petitioner did not and cannot . . . , particularly given its express disavowal of inherency.” Id. Patent Owner also argues that “Petitioner acknowledges that the claims require that the lower retaining IPR2020-01478 Patent 8,784,398 B2 49 forces be sufficient to secure or hold the diaper on the wearer.” Id. at 2 (citing Pet. 3, 21, 32, 33, 40, 41, 51, 54, 63, 71, 73, 81, 82). According to Patent Owner, Petitioner “attempt[s] to recast it as ‘necessarily broad’” and “relies on this new claim interpretation.” Id. (citing Pet. Reply 1). Patent Owner contends that “Petitioner’s belated construction” should be rejected because it “would read a limitation out of the claim.” Id. Patent Owner also replies that the asserted references do not teach the claimed differing retaining forces sufficient to secure a diaper, and that Petitioner must rely on inherency for such differing retaining forces. PO Sur-reply 2 (citing Pet. 37-39, 51-56; Prelim. Resp. 27-41, 47-53; PO Resp. 28-34, 50-56). Patent Owner contends that size adjustability does not demonstrate the claimed differing retaining forces and would not have led one of ordinary skill in the art to the claimed differing forces. Id. at 3 (citing Pet. Reply 1, 6-8, 15-18). Patent Owner also contends that “Karami ’626’s reference to size adjustability is not a teaching of differing retaining forces, let alone differing retaining forces that are sufficient to secure the diaper.” Id. Patent Owner further contends that the relied-upon portion of Karami ’626 says nothing about differing retaining forces and nothing about such forces for size adjustability. Id. at 3-4 (citing Pet. Reply 6, 16; Ex. 1004 ¶ 40). Patent Owner further replies that the fasteners of Karami ’626’s T- shaped diaper only engage the wings, as acknowledged by Petitioner’s declarant. PO Sur-reply 4 (citing Ex. 1004 ¶¶ 37, 38, 40, 41, 50, 51; Ex. 2003, 163:18-21, 164:13-19). In Patent Owner’s view, Karami ’626’s reference to size adjustability was for the T-shaped diaper, and Petitioner does not explain how fasteners could engage the backsheet at the front of a T-shaped diaper. Id. (citing Pet. Reply 6). Patent Owner argues that size IPR2020-01478 Patent 8,784,398 B2 50 adjustability is not mentioned in connection with Karami ’626’s Figures 9 and 10 and, thus, “would not provide a reason to use differing retaining forces to achieve size adjustability.” Id. at 4-5 (citing Pet. Reply 6-7; Ex. 1004 ¶ 55). Patent Owner also argues that “seeking size adjustability would not have led one of ordinary skill to use nonwovens having different basis weights to generate different retaining forces sufficient to secure a diaper.” Id. at 5. Patent Owner additionally replies that “Petitioner has not identified any prior art that teaches using different basis weight nonwovens to achieve size adjustability” and “Patent Owner demonstrated that the prior art only teaches size adjustability by using the same basis weight nonwoven.” PO Sur-reply 5-6 (citing PO Resp. 23-24, 46-47; Pet. Reply 17). Patent Owner argues that, for using the same nonwoven for size adjustability, Patent Owner’s declarant “testified based on his experience as to what one of ordinary skill would have understood and explained that was also what the references showed.” Id. at 6 (citing Pet. Reply 6; Ex. 2004 ¶¶ 85, 86, 131, 143, 168, 169). Patent Owner also argues that “merely arguing [that size adjustability using different basis weight nonwovens for the wings and backsheet] is achievable is not sufficient for obviousness.” Id. (citing Pet. Reply 17). According to Patent Owner, the challenged patent shows how to achieve size adjustability with different basis weight nonwovens, but “Petitioner has not shown that prior art teaches such an arrangement or that it would have been obvious.” Id. Also, Patent Owner replies that the asserted references do not teach using a higher basis weight nonwoven on the sides of a traditional diaper nor do they teach that using different basis weight nonwovens would provide differing retaining forces that can secure the diaper to the wearer. PO Sur- IPR2020-01478 Patent 8,784,398 B2 51 reply 7. Patent Owner argues that, even though Petitioner relies on Karami ’626’s preference for a “slightly higher” basis weight nonwoven for the wings of a T-shaped diaper, Karami ’626 “never says why that is preferred,” and, in the T-shaped diaper, “the fasteners only engage the wings.” Id. (citing Pet. 55; PO Resp. 30-31, 48-50; Ex. 1004 ¶ 65). Regarding Figures 9 and 10 of Karami ’626, Patent Owner replies that Petitioner appears to have dropped its reliance on the T-shaped diaper, Karami ’626 “never suggests making it from nonwovens having different basis weights,” and “Petitioner’s reasons for using a higher basis weight nonwoven on the sides of a diaper are based on hindsight.” PO Sur-reply 7- 8 (citing Pet. Reply 16; Ex. 1004 ¶ 55). Patent Owner also argues that its declarant “merely explained that this side piece needed to be heavy enough not to be pulled off” and “how a heavier nonwoven could have lower retaining forces than a lighter nonwoven.” Id. at 8 (citing Ex. 1001, 14:19- 41; Ex. 1054, 125:9-126:12, 127:25-129:3). Patent Owner further argues that its declarant “did not reference the front side-parts, which are the relevant parts for having the claimed retaining forces for engaging fasteners” and “did not suggest that the main body did not need to be as strong or that one of ordinary skill would have sought higher retaining forces on the sides.” Id. Patent Owner replies that Petitioner relies on inherency for the claimed differing retaining forces because Petitioner’s arguments are not based on what the references teach. PO Sur-reply 8-9 (citing Prelim. Resp. 27-41, 47-53; PO Resp. 28-34, 50-56). Patent Owner argues that Petitioner did not acknowledge that its challenges are premised on inherency, only addresses inherency to disavow it, and fails to carry its IPR2020-01478 Patent 8,784,398 B2 52 burden if the Board agrees that inherency is required. Id. at 9 (citing Pet. Reply 5, 17-18). Regarding the proposed combination of Benning and Karami ’626 and inherency, Patent Owner replies that Petitioner disavows inherency but characterizes the factual issue as inherent obviousness. PO Sur-reply 10 (citing Pet. Reply 23). Patent Owner contends that Petitioner must provide substantial evidence, not merely allege obviousness, and, thus, fails to establish that the claimed differing retaining forces are necessarily present in its proposed combination. Id. at 10-11. Regarding Petitioner’s proposed combination of Benning and Karami ’626 in particular, Patent Owner replies that “Petitioner has not shown that the combination necessarily would have resulted in the claimed retaining forces” and relies on the challenged patent. PO Sur-reply 20 (citing PO Resp. 40-55; Pet. Reply 22-24). Patent Owner argues that Petitioner has the burden to show obviousness based on prior art, not the challenged and related patents. Id. Patent Owner also argues that the challenged and related patents “do not state that a higher basis weight nonwoven necessarily and always has higher retaining forces than a lower basis weight nonwoven” nor “suggest this was some universal principal that applied based solely on basis weight, regardless [of other factors].” Id. at 20-21 (citing Ex. 1001, 12:62- 13:49). Patent Owner contends that the challenged and related patents “teach factors that impact retention and how to engineer a nonwoven to engage fasteners.” Id. at 21 (citing Ex. 1001, 5:23-9:44; Ex. 2004 ¶ 36). Patent Owner additionally replies that Petitioner “improperly modifies Benning-Karami ’626” because “Petitioner asserted that one of ordinary skill would have used the 20 gsm backsheet from Karami ’626’s T-shaped diaper for Benning’s backsheet because it was identified as optimal.” PO Sur-reply IPR2020-01478 Patent 8,784,398 B2 53 21 (citing Pet. 51; Ex. 1004 ¶ 65). According to Patent Owner, Petitioner shifted its position when it “contends that it could instead use a 20 gsm nonwoven from the wings of the T-shaped diaper even though Karami ’626 describes that nonwoven as optimally 34 gsm,” thus, “show[ing] that it has no meaningful reason for selecting nonwovens and basis weights other than the roadmap the claims provide.” Id. (citing Pet. Reply 20; Ex. 1004 ¶ 65). Regarding Petitioner’s declarant testimony, Patent Owner replies that Petitioner’s declarant has admitted that he cannot tell if retaining forces would be sufficient based on Karami ’626 or Karami ’772, and that he did not understand how Karami ’626’s T-shaped diaper worked. PO Sur-reply 21-24 (citing Prelim. Resp. 31-32; PO Resp. 43-44; Pet. Reply 9-10; Ex. 1012 ¶¶ 68-70; Ex. 2003, 117:6-15, 119:8-9, 143:7-149:3, 151:1- 158:13, 175:11-20, 185:9-10, 195:12-17). Patent Owner argues that Petitioner’s declarant “agreed that all fasteners engage the belt and do not engage the backsheet of the main part” in Karami ’626 and his testimony is not “unequivocal.” Id. at 23 (citing Ex. 2003, 184:4-185:2, 185:11-186:1), 24 (citing Ex. 2003, 163:18-21, 164:13-19). (7) Petitioner Shows that One of Ordinary Skill in the Art Would Have Been Motivated to use a Film-Nonwoven Laminate like Karami ’626’s for Benning’s Underlayer 30 Based on the full record, we find that a relied-upon portion of Karami ’626 states that “fastener elements 41, 42 do not require landing zones and may engage directly with any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 or wings 40 of the brief.” Ex. 1004 ¶ 40. We also find that other relied-upon portions state that “nonwoven 50, which defines an exposed outer surface of at least one of the frontsheet 30, backsheet 32, and wing 40, contains a plurality of bonded fibers” and “[i]t IPR2020-01478 Patent 8,784,398 B2 54 will be appreciated that the backsheet may be formed of the above-identified nonwoven with a polypropylene or polyethylene film backing or as a laminate or like composite of a plurality of nonwovens.” Id. ¶¶ 62, 64. Karami ’626, thus, expressly teaches fastener elements that can engage directly with any portion of a nonwoven surface that may be formed with a film or laminate and that such a nonwoven can form a backsheet. We further find that Karami ’626 states that: While the nonwoven is preferably a spunbond having a basis weight of 13-50 grams per square meter (gsm), slightly higher basis weights of 20-40 gsm (optimally 34 gsm) are preferred for use on the wings of a T-shaped brief, while relatively lower basis weights of 15-30 gsm (optimally 20 gsm) are preferred for the backsheet of the front and back portions. Ex. 1004 ¶ 65. Karami ’626, thus, expressly teaches a preference for “relatively lower basis weights of 15-30 gsm (optimally 20 gsm)” for a backsheet. Taking these express teachings together, we determine that Karami ’626 provides factual support for Petitioner’s asserted motivation to use a film-nonwoven laminate like Karami ’626’s for Benning’s underlayer 30 because the film-nonwoven laminate would “improve adjustability by enabling fasteners like Karami ’626’s to ‘[e]ngage directly with any portion of [a diaper’s] nonwoven surface[s]’ to secure the diaper on a wearer.” Pet. 51 (alterations in original) (citing Ex. 1004 ¶ 40; Ex. 1012 ¶ 112). Petitioner also contends that one of ordinary skill in the art would have been motivated to use Karami ’626’s film-nonwoven laminate for Benning’s underlayer 30 because Karami ’626’s film-nonwoven laminate would “provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper.” Pet. 51 (citing Ex. 1004 ¶ 40; Ex. 1012 IPR2020-01478 Patent 8,784,398 B2 55 ¶ 112). Record evidence also supports Petitioner’s additional asserted motivation. Ex. 1012 ¶ 113; Ex. 1019, 1:55-2:32; Ex. 1023, 8:3-28; Ex. 1037 ¶ 60. Regarding whether these teachings are limited to Karami ’626’s T- shaped diaper, Karami ’626 expressly states that “absorbent article 10 is in the form of a T-shaped brief 12, although it may alternatively be in the form of a diaper 14 (as illustrated in FIGS. 9 and 10) or a pull-up 16 (as illustrated in FIG. 8)” and that “[t]he disposable article may be a diaper, a T-shaped brief, or a pull-up.” Ex. 1004 ¶¶ 35, 78. Karami ’626 also states that: Referring now to FIGS. 9 and 10, it will be appreciated by those skilled in the art that the same or analogous improvements in the fit, appearance and economy of diapers 14 according to the present invention, with tape tab or patch fastener elements 76 (adjacent opposed lateral edges of the back portion 20), may be realized. Id. ¶ 55. Karami ’626 further states that “an object of the present invention to provide a disposable absorbent article which, in one preferred embodiment, incorporates a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material.” Id. ¶ 7. Karami ’626, thus, indicates that “the same or analogous improvements” mentioned in paragraph 55 include, at least, “a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material” of paragraph 7. We, therefore, find that Karami ’626 does not limit application of its fastener assembly of minihook fastener elements and conventional nonwoven material to its T-shaped brief. Ex. 1012 ¶ 107. Moreover, Karami ’626 states that “[p]referably the nonwoven is the article backsheet IPR2020-01478 Patent 8,784,398 B2 56 or, in the case of a T-shaped brief, the article wings.” Ex. 1004 ¶ 16. Karami ’626, thus, indicates that its nonwoven, in articles other than T- shaped briefs, would be preferably the backsheet. In view of our findings above, we determine that Karami ’626 provides factual support for Petitioner’s asserted motivation “to use a film- nonwoven laminate like Karami ’626’s for Benning’s underlayer 30.” Pet. 51; Ex. 1004 ¶¶ 40, 62, 64. Furthermore, because Benning and Karami ’626 indicate that Petitioner’s proposed modification amounts to using one known material for another, Petitioner persuades us that one of ordinary skill in the art would have modified Benning’s underlayer 30 to use a film- nonwoven laminate like Karami ’626’s with a reasonable expectation of success. Ex. 1012 ¶ 122. (8) Petitioner Shows that One of Ordinary Skill in the Art Would Have Been Motivated to use Karami ’626’s Hook- Type Fasteners in Benning Based on the full record and as discussed above for the recited “closure means,” we find that Benning teaches that “right material section 34 has two closures 42 in the form of closing tapes 44” and that “tapes 44 interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20.” Ex. 1002 ¶ 55. Benning also describes that “[t]o close the incontinence article when it is worn by a user, the material sections have closures which can be designed to grip mechanically or adhesively” and “[i]t proves expedient if the material sections in the back region have closures of a type which can act in concert in a releasably gripping or adhering fashion with a landing zone on the main part of the diaper.” Id. ¶ 30 (emphasis added). A relied-upon portion of Benning further describes that “[t]he material sections attached to the IPR2020-01478 Patent 8,784,398 B2 57 main body portion are preferably of a non-woven material, specifically and preferably spunbond materials.” Id. ¶ 32. Turning to Karami ’626, we find that relied-upon portions of Karami ’626 state that “VELCRO fastener assemblies” have a “primary limitation on their widespread use” because they “need for each minihook fastener element to have a corresponding miniloop fastener element to engage with” or “a loop-type ‘landing zone’ for the minihook fastener element.” Ex. 1004 ¶ 3. Karami ’626 explains that “it has been necessary for the two articles or article portions to be designed such that, during use, the minihook and miniloop fastener elements will be appropriately positioned opposite one another for engagement with one another” and that “[t]he need to provide a miniloop fastener element-whether as a landing zone, as a strip, or as an entire surface-has stifled the development of uses for the minihook fastener element in various situation where it might prove advantageous.” Id. ¶¶ 4, 6. We also find that other relied-upon portions of Karami ’626 describe “a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material,” “minihook fastener element and a nonwoven (preferably a spunbond nonwoven and optimally an elastic composite thereof),” “the fastener assembly provides size adjustability or other features at the cost of only additional minihook fastener elements,” and “fastener elements 41, 42 do not require landing zones and may engage directly with any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 or wings 40 of the brief” to accommodate small, large, and extra-large waisted wearer. Ex. 1004 ¶¶ 7, 8, 10, 40, 41, 55; see also id. ¶ 2 (stating that Karami ’626 relates “more particularly to an absorbent article having a fastener element which does not require a special loop-providing landing zone”). Moreover, IPR2020-01478 Patent 8,784,398 B2 58 as already indicated elsewhere, Karami ’626 expressly states that its “improvements are made possible by the ability of the fastener element to make an engagement without the presence of a landing zone.” Id. ¶ 42. We further find that Karami ’626 expressly teaches that its “fastener assembly provides size adjustability or other features at the cost of only additional minihook fastener elements.” Ex. 1004 ¶ 10. Karami ’626 later similarly states that its “fastener assembly . . . provides size adjustability and/or other features at the cost of only additional minihook fastener elements.” Id. ¶ 78. Based on our findings above, we determine that Karami ’626 provides factual support for Petitioner’s assertion that one of ordinary skill in the art would have been motivated to use Karami ’626’s hook-type fasteners for Benning’s fasteners 42, 44 “at least to improve size-adjustability by directly engag[ing] with a backsheet nonwoven . . . or its nonwoven wings 34.” Pet. 54 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶¶ 114-116); Ex. 1002 ¶ 32; Ex. 1012 ¶ 115. Karami ’626 specifically teaches that its fastener assembly “consisting exclusively of a minihook fastener element, without any miniloop fastener element beyond a conventional nonwoven material” “provides size adjustability.” Ex. 1004 ¶¶ 7, 10, 78. Karami ’626 also teaches that its hook-type fasteners engage Benning’s material sections made of a “non-woven material, specifically and preferably spunbond materials.” Ex. 1002 ¶ 32 (“The material sections attached to the main body portion are preferably of a non-woven material, specifically and preferably spunbond materials.”); Ex. 1004 ¶ 8 (“In one preferred embodiment, the fastener assembly is composed exclusively of a minihook fastener element and a nonwoven (preferably a spunbond nonwoven and optimally an elastic composite thereof).”), ¶ 70 (“When the IPR2020-01478 Patent 8,784,398 B2 59 preferred fastener element is used with a conventional nonwoven, especially the preferred nonwoven spunbond described hereinafter, the fastener assembly according to the present invention has a shear strength substantially higher (and frequently several times higher) than that obtained by a conventional VELCRO-like hook-type fastener element with a comparable conventional nonwoven.”); Ex. 1012 ¶ 115. Petitioner’s proposed modification of Benning with Karami ’626’s hook-type fasteners, thus, would improve size adjustability by allowing the fasteners to engage a nonwoven (preferably spunbond) backsheet and Benning’s nonwoven (preferably spunbond) material sections 34. Ex. 1002 ¶ 32; Ex. 1004 ¶ 8. By allowing hook-type fasteners to engage the front portion of the backsheet or the material sections 34 extending from the front portion, the modified Benning diaper would be able to accommodate smaller- and larger-waisted users. Ex. 1012 ¶¶ 115, 116; see also Ex. 1004 ¶ 41 (stating that “[f]or the extra-large waisted wearer, the wings 40 . . . are secured by the wearer to opposite lateral edges of the front portion 22 by fastener elements 42 so that the wings 40 form a belt 44 including both the front and back portions 22, 20”). Also, as discussed above, we determine that Karami ’626’s “fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material” can be applied to a T-shaped brief, diaper, or pull-up. Ex. 1004 ¶¶ 7, 11, 55. Moreover, because Karami ’626 expressly teaches the use of its hook-type fastener to engage with its backsheet material to provide the described advantages and improvement, Karami ’626 additionally evidences that one of ordinary skill in the art would have considered both Karami ’626’s hook- type fastener and backsheet material when modifying Benning’s diaper. IPR2020-01478 Patent 8,784,398 B2 60 Furthermore, because Benning and Karami ’626 indicate that Petitioner’s proposed modification amounts to using one known fastener assembly for another, Petitioner persuades us that one of ordinary skill in the art would modify Benning’s fasteners 42, 44 to use Karami ’626’s hook-type fasteners with a reasonable expectation of success. Ex. 1012 ¶ 115. (9) Petitioner Shows that One of Ordinary Skill in the Art Would Have Been Motivated to use a Lower Basis Weight Nonwoven for a Backsheet As discussed above, we find that a relied-upon portion of Karami ’626 teaches “slightly higher basis weights of 20-40gsm (optimally 34 gsm) are preferred for use on the wings of a T-shaped brief, while relatively lower basis weights of 15-30 gsm (optimally 20 gsm) are preferred for the backsheet of the front and back portions.” Ex. 1004 ¶ 65. Based on the full record, we also find that the a relied-upon portion of Benning teaches that “material sections attached to the main body portion are preferably of a non- woven material” and “advantageously have a surface weight of 10 to 150 g/m2, in particular 20-100 g/m2, and specifically of 25-50 g/m2.” Ex. 1002 ¶ 32. Thus, if, as Petitioner argues, one of ordinary skill in the art modifies Benning to use Karami ’626’s film-nonwoven laminate for Benning’s underlayer 30, then the modified diaper would have material sections “of a non-woven material” with “a surface weight of 10 to 150 g/m2, in particular 20-100 g/m2, and specifically of 25-50 g/m2” and a backsheet with “relatively lower basis weights of 15-30 gsm (optimally 20 gsm).” Pet. 55; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Based on these express teachings, we determine that one of ordinary skill in the art would have modified Benning’s diaper to have material sections made of nonwoven material of IPR2020-01478 Patent 8,784,398 B2 61 “25-50 g/m2” and an underlayer or backsheet of “optimally 20 gsm.” Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. In other words, one of ordinary skill in the art following the express preferences of Benning and Karami ’626 would have modified Benning’s diaper to have a lower basis weight nonwoven for the underlayer or backsheet (“20 gsm”) with the already relatively heavier basis weight nonwoven for the material sections or wings (“25-50 g/m2”). Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Turning to whether the stated preferences in paragraph 65 of Karami ’626 relate only to Karami ’626’s T-shaped diaper, we find that Karami ’626 in other paragraphs repeatedly describes its improved and preferred minihook fastener element together with a preferred nonwoven having a “basis weight of 13-50 gsm.” Ex. 1004 ¶¶ 14, 15, 63; see also id. at claims 16, 17, 20, 54. Karami ’626, thus, teaches that its preferred minihook fastener element would engage an “optimally 20 gsm” backsheet, regardless of whether it was used in its T-shaped brief 12 or diaper 14, because it would still be a preferred nonwoven having a “basis weight of 13-50 gsm.” See Ex. 1004 ¶¶ 14, 15, 63. Karami ’626 also does not further limit its preferred nonwoven to those that have a film backing or laminate. See id. ¶ 64 (“It will be appreciated that the backsheet may be formed of the above- identified nonwoven with a polypropylene or polyethylene film backing or as a laminate or like composite of a plurality of nonwovens.”) (emphasis added); see also id. ¶¶ 15, 63 (describing a preferred nonwoven with particular fibers and interstice size but not specifying any film or laminate). Having determined above that the full record supports Petitioner’s asserted motivations of “provid[ing] a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper” and “improv[ing] adjustability by enabling fasteners like Karami ’626’s” for using Karami IPR2020-01478 Patent 8,784,398 B2 62 ’626’s film-nonwoven laminate, we determine that Petitioner shows that one of ordinary skill in the art would have been motivated to use a lower basis weight nonwoven, such as a “20 gsm” nonwoven, because (1) such a nonwoven is described as “optimal[],” (2) would be in a lower part of the “13-50 gsm” range for the preferred nonwoven to use with Karami ’626’s preferred minihook fastener element, and (3) would “provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper.” Ex. 1004 ¶ 65; Ex. 1019, 1:55-2:32; Ex. 1023, 8:3-28; Ex. 1037 ¶ 60; see also Ex. 1004 ¶¶ 14, 15, 63. In view of the full record, Patent Owner’s responsive argument that the Benning and Karami ’626 diapers are designed and operate differently (PO Resp. 42-45, 50-52) does not show a deficiency in Petitioner’s proposed combination because, for the reasons above, we find that Karami ’626 teaches applying its hook-type fastener and nonwoven to both diaper’s like Benning and a T-shaped diaper. Patent Owner’s responsive argument that one of ordinary skill in the art would not have used a higher basis weight nonwoven for the material sections or wings (PO Resp. 47-49) also does not show a deficiency in Petitioner’s challenge because, as discussed above, the proposed combination does not require modifying the relatively heavier nonwoven material that Benning already uses for its material sections or wings. Accordingly, after considering the full record in view of each party’s arguments and cited evidence, we determine that Petitioner persuades us that Karami ’626 teaches the use of different basis weight nonwovens for its wings and backsheet, and, thus, the proposed modification of Benning in view of Karami ’626 would have a nonwoven for its underlayer or backsheet that is of relatively lower basis weight than the nonwoven for its material IPR2020-01478 Patent 8,784,398 B2 63 sections or wings. Pet. 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65; Ex. 1012 ¶ 118. (10) The Proposed Combination of Benning and Karami ’626 would have Retaining Forces Sufficient to Secure the Modified Diaper Claim 1 recites “wherein retaining forces between said closure means and said outer face of said chassis secure said diaper on the user body.” Ex. 1001, 16:16-18. Karami ’626 repeatedly specifies the same peel strength of, at least, 60 grams per square inch and shear strength of, at least, 1300 grams per square inch. See Ex. 1004 ¶¶ 5, 13, 57, 61, claims 1, 36, 55. For example, Karami ’626 states that previous “[d]isposable absorbent articles . . . have different requirements as to the peel strength and shear strength of the various engagements depending, for example, on whether the engagement is about a waist or elsewhere, whether its fastening power is to be supplemented.” Ex. 1004 ¶ 5. Karami ’626 also states that “[g]enerally a peel strength of at least 60 grams per square inch and a shear strength of at least 1300 grams per square inch is preferred.” Id. Karami ’626 further states that “[t]hose skilled in the art will appreciate that not all of the fastener assemblies according to the present invention will require a peel strength of 60 grams per square inch and a shear strength of 1300 grams per square inch.” Ex. 1004 ¶ 61. “For example, in FIG. 2, the auxiliary fastener element 51 . . . may have lower peel and shear strengths” because it and other fasteners like it “are not relied upon for maintenance of the T-shaped brief 12 in its basic essential orientation on the wearer.” Id. IPR2020-01478 Patent 8,784,398 B2 64 These statements indicate that a peel strength of 60 grams per square inch and a shear strength of 1300 grams per square inch would keep “the T- shaped brief 12 in its basic essential orientation on the wearer” or keep brief 12 on the wearer. See Ex. 1004 ¶ 61. Thus, for “wherein retaining forces between said closure means and said outer face of said chassis secure said diaper on the user body,” we find that engaging Karami ’626’s minihook fastener element with its preferred nonwoven, as they would be in Petitioner’s proposed modifications of Benning, provides retaining forces sufficient to keep the modified diaper “in its basic essential orientation on the wearer,” and thus, have retaining forces sufficient to, at least, secure the modified diaper on the user. Based on the full record, we determine that Benning’s diaper modified with Karami ’626’s hook-type fastener would have “retaining forces between said closure means and said outer face of said chassis secure said diaper on the user body.” Ex. 1002 ¶ 55; Ex. 1004 ¶¶ 7, 8, 10, 40, 41, 55; Ex. 1012 ¶¶ 115, 122. (11) Petitioner Shows that the Proposed Combination of Benning and Karami ’626 has the Recited Differing Retaining Forces Karami ’626 states that “[t]he number of fibers and the extent to which they are bonded together in the nonwoven provide the nonwoven with the strength necessary to provide a high level of shear strength.” Ex. 1004 ¶ 68. Karami ’626 also states that “[t]he pore size in the nonwoven (that is, the size of the interstices formed by the fibers) typically affects the peel strength, a higher pore size providing greater peel strength for the fastener elements according to the present invention.” Id. ¶ 69. Karami ’626 further states that “[t]he size of the spacing between adjacent surfaces of the pins of IPR2020-01478 Patent 8,784,398 B2 65 the fastener element at the exposed outer surface thereof is a factor of major significance providing the high level of shear strength.” Id. ¶ 68. Karami ’626 does not describe any other parameter that would affect shear strength or peel strength. As discussed above, based on the full record, Petitioner persuades us that the proposed modification of Benning in view of Karami ’626 would have a nonwoven for its underlayer or backsheet that is of relatively lower basis weight than the nonwoven for its material sections or wings. Pet. 55- 56; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Thus, in Petitioner’s proposed combination with Karami ’626’s fastener engaging with its described nonwoven material for the backsheet but a relatively heavier basis weight nonwoven for the material sections of Benning’s diaper, the one difference between the nonwoven materials of the backsheet and material sections would be number of fibers. If the extent to which the fibers are bonded together and pore size is the same between the two nonwoven materials, then the relatively lower basis weight nonwoven of the backsheet must have a lesser number of fibers than the relatively heavier basis weight nonwoven of the wings because of the relatively lighter basis weight, and because the relatively lower basis weight nonwoven of the backsheet has a smaller number of fibers, according to Karami ’626, an engagement of its fastener element with the backsheet would have a smaller shear strength than engagement with the relatively heavier basis weight material sections of Benning. See Ex. 1004 ¶¶ 68, 69; Ex. 1012 ¶ 120 (“Because higher basis weight nonwovens have more fibers per unit area with which a mechanical fastener can interact, the retaining forces (e.g., peel and/or shear strength) between the fastener and such a nonwoven are higher than those between the fastener and a lower basis weight but otherwise similar nonwoven.”). IPR2020-01478 Patent 8,784,398 B2 66 Petitioner’s proposed combination of Benning and Karami ’626 would thereby meet the recitation “wherein retaining forces between said closure means and said outer face of said chassis secure said diaper on the user body, when in use, and are lower than retaining forces between said closure means and said outer face of said side parts in said front area.” Ex.1001, 16:16-21. Moreover, to the extent that the proposed combination of fastener and different basis weight nonwovens do not necessarily provide the recited difference in retaining forces, we determine that such a difference is, at least, suggested because Karami ’626 shows that, for its fastener assembly, there was a known relationship between shear strength and number of fibers. Ex. 1004 ¶¶ 68, 69. One of ordinary skill in the art modifying Benning in the manner asserted by Petitioner would have known from Karami ’626 alone that engaging Karami ’626’s fastener with Benning’s relatively higher basis weight spunbond nonwoven would exhibit greater shear strength for two nonwovens that otherwise have the same extent of bonding and pore size. See id.; see also PO Resp. 6 (arguing that “[f]or adult incontinence diapers, it is important that the diaper be comfortably secured on a wearer and prevent leaking” and that “[s]killed artisans designing a diaper would consider their objectives and then engineer the materials and manufacturing processes based on the design and performance requirements”); Ex. 2004 ¶¶ 32 (testifying that “it is . . . important that the diaper be secured on the wearer”), 95 (testifying that “[i]t is also important that diapers be sufficiently secured for both ambulatory and non-ambulatory wearers”), 98 (testifying that “[w]hen a person of ordinary skill in the art designs an incontinence diaper, they must consider their design objectives at the start, including the IPR2020-01478 Patent 8,784,398 B2 67 type of diaper” and that “[t]hese objectives will drive the materials selected and the manufacturing processes used”). 2. Analysis of Claims 2-4 and 16 Petitioner provides the same arguments for dependent claims 2-4 and 16. Pet. 62-67. Each of these claims ultimately depends from claim 1 and requires a specific range of retaining forces between the closure means and outer face of the chassis or between the closure means and side parts in the front area. Ex. 1001, 16:24-35, 17:4-7. Specifically, claim 2 depends from claim 1 and recites “wherein said retaining forces, determined as over-abdomen retaining forces between said closure means and said outer face of said chassis, are 57-20 N/25 mm.” Ex. 1001, 16:24-27. Claim 3 depends from claim 2 and recites “wherein said retaining forces, determined as over-abdomen retaining forces between said closure means and said outer face of said side parts in said front area, are 90-58 N/25 mm.” Id. at 16:28-31. Claim 4 depends from claim 3 and recites “wherein said retaining forces, determined as over-abdomen retaining forces between said closure means and said outer face of said chassis in said front area, are 80-60 N/25 mm.” Id. at 16:32-35. Claim 16 depends from claim 2 and recites “wherein said retaining forces, determined as over- abdomen retaining forces between said closure means and said outer face of said chassis, are 50-25 N/25 mm.” Id. at 17:4-7. Petitioner argues that, by using Karami ’626’s preferred fastener with its preferred dimensions and optimal 20 gsm spunbond nonwoven for the backsheet, the modified Benning diaper would have yielded the same retaining forces as the claimed diaper, because the challenged patent describes a test with the same fastener and nonwoven that recorded a retaining force of 48.6 N/25 mm and 65.3 N/25 mm, at least one of which is IPR2020-01478 Patent 8,784,398 B2 68 within the claimed ranges. Pet. 62-67 (citing Ex. 1001, 7:25-32, 13:42-49, 14:50-58, 14:62-15:3, 15:32-37, 15:49-52; Ex. 1002 ¶ 32; Ex. 1003 ¶¶ 28, 31, 41; Ex. 1004 ¶¶ 38, 58, 60, 62-65; Ex. 1009 ¶¶ 38, 46; Ex. 1012 ¶¶ 123- 130). Patent Owner responds that “Petitioner fails to address the actual claim language that retaining forces are determined as over-abdomen retaining forces.” PO Resp. 59; see also id. at 34-35 (arguing that “[t]he claims require that retaining forces be determined as over-abdomen retaining forces, yet Petitioner does not address that requirement when evaluating claims 2-4, 16, and 28”). Patent Owner argues that Petitioner relies only on the basis weight, not on the other “detailed information about the examples” in the challenged patent, and ignores many other identified properties that impact the retaining force discussed in Karami ’626. Id. at 59-60 (citing Pet. 63-66; Ex. 1001, 14:60-15:31; Ex. 1004 ¶ 63; Ex. 2004 ¶¶ 92, 99-110). According to Patent Owner, “[b]ecause Petitioner did not establish that the Karami ’626 nonwoven and Benning’s side flaps included all characteristics of [the nonwoven materials], it cannot establish that they necessarily would have the claimed retaining force values.” Id. at 60. Patent Owner also responds that the challenged and related patents “never state that retaining forces are determined solely by basis weight” and “provide detailed information on how to engineer nonwovens to make them receptive to fasteners.” PO Resp. 61 (citing Pet. 64; Ex. 2004 ¶¶ 111-118). Patent Owner argues that Petitioner’s analysis is hindsight driven because the arguments start with the ’398 patent’s nonwoven material and Petitioner’s declarant testimony merely states that it would have been obvious to use the disclosed fasteners and materials. Id. (citing Pet. 62-67; Ex. 1012 ¶¶ 123-131; Ex. 2004 ¶¶ 185-187). IPR2020-01478 Patent 8,784,398 B2 69 Petitioner replies that the ’398 patent claims “do not actually require measuring retaining forces.” Pet. Reply 10. Petitioner also replies that Patent Owner fails to argue that one of ordinary skill in the art in making Petitioner’s proposed modifications would have selected any of the asserted parameters so that the retaining forces of the higher basis weight nonwoven would have been lower than those in the lower basis weight nonwoven. Id. at 23 (citing PO Resp. 53-56, 59-61; Ex. 2004 ¶¶ 99-110). Petitioner contends that its evidence remains the only evidence regarding whether the claimed retaining forces would have naturally resulted from the proposed modifications. Id. at 23 (citing Pet. 59-60; Ex. 1001, 7:25-32, 13:42-49; Ex. 1012 ¶¶ 120-121, 128; Ex. 1040, 2:35-39; Ex. 1044, 5:3-7). Petitioner also points to the Specification of the ’398 patent. Id. at 23-24 (citing Ex. 1001, 4:37-39, 6:24-37, 7:65-8:4, 14:12-18). Petitioner finally replies that Patent Owner’s hindsight argument fails in view of the description in the references of “preferred,” “optimal,” or “advantageous” fasteners and materials. Id. at 24-25 (citing PO Resp. 61; Ex. 1002 ¶ 32; Ex. 1003 ¶¶ 28, 31; Ex. 1004 ¶¶ 58, 60, 62-65). Patent Owner replies that Petitioner fails to argue that the cited references teach the claimed retaining force ranges or that those forces would have been necessarily present in the proposed combinations. PO Sur- reply 24 (citing Pet. Reply 10-11, 22-25). Patent Owner argues that Petitioner does not meet its burden of showing obviousness because the argument that the claimed ranges are naturally resulting “workable” ranges is not enough for obviousness. Id. (citing Pet. Reply 10-11, 22-25). As discussed above for claim 1, we determine that one of ordinary skill in the art would have modified the Benning diaper to use Karami ’626’s film nonwoven laminate for its backsheet and minihook fastener to engage IPR2020-01478 Patent 8,784,398 B2 70 the backsheet and Benning’s spunbond nonwoven wings. Based on the full record, we additionally find that Karami ’626 teaches that its preferred fastener has a preferred size and teaches a spunbond 20 gsm nonwoven with a preferred fiber size and embossing area. Ex. 1004 ¶¶ 58, 60, 62-65; Ex. 1012 ¶¶ 124-126. We also find that Benning teaches a preferred 30 gsm basis weight nonwoven for its wings. Ex. 1002 ¶ 32; Ex. 1012 ¶ 125. We further credit Petitioner’s declarant testimony that the proposed combination would provide a retaining force within the claimed range. Ex. 1012 ¶¶ 123, 127-130. Petitioner persuades us that, in the proposed modifications of the Benning, one of ordinary skill in the art would have combined a known fastener with known nonwovens in a known way that would have been the same as what the ’398 patent describes. See Pet. 50-54. As discussed above for claim 1, Karami ’626 indicates that, if other parameters are unchanged, a higher basis weight nonwoven would provide a higher shear strength. Ex. 1004 ¶¶ 68, 69. Petitioner, thus, persuades us that the “commercially- available fastener known for use in diaper closures, engaging commercially- available nonwovens known for use in diaper backsheets and wings” would have had retaining forces within the claimed range. See Pet. 50-54. Patent Owner does not dispute that the fastener and nonwovens were known, that Karami ’626’s fastener can engage the nonwovens, that the fasteners and nonwovens used in the references match those described in the Specification, or that the challenged claims somehow exclude from their scope these fasteners and nonwovens. See PO Resp. 59-61; PO Sur-reply 24. Patent Owner, instead, contends that the undisputed same fastener and nonwovens may not have the same range of retaining forces, and that Petitioner fails to show that they must necessarily be present. See PO IPR2020-01478 Patent 8,784,398 B2 71 Resp. 59-61; PO Sur-reply 24. Petitioner, however, adequately shows that its proposed combination would have a retaining force within the claimed range. Ex. 1004 ¶¶ 68, 69; Ex. 1012 ¶¶ 123, 127-130. For the reasons above, based on the full record, Petitioner persuades us that Benning modified in view of Karami ’626 has a retaining force within the ranges recited by claims 2-4 and 16. 3. Analysis of Claim 5 Claim 5 depends from claim 2 and recites “wherein said mechanical closure aids comprise hooks of a hook-and-loop fastener.” Ex. 1001, 16:36- 38. Petitioner argues that the proposed combination of Benning and Karami ’626 would have Karami ’626’s hook-and-loop fasteners as Benning’s closures 42. Pet. 67 (citing Ex. 1004 ¶¶ 7, 8, 37, 57, 78). We find that the relied-upon portions of Karami ’626 teach “a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material” or “a minihook fastener element and a nonwoven” (Ex. 1004 ¶¶ 7, 8, 78), “hook- type fastener element 4” (id. ¶ 37), and “preferred fastener elements” with “hooks hav[ing] a mushroom-like appearance” (id. ¶ 57). Other than the response described above for certain limitations of claims 1 and 2 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 5. See PO Resp. 40-62. Thus, based on the full record, Petitioner persuades us that Karami ’626 teaches the limitations of claim 5. For the reasons above, Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626. IPR2020-01478 Patent 8,784,398 B2 72 4. Analysis of Claim 7 Claim 7 depends from claim 2 and recites “wherein said backsheet is constituted by a nonwoven-foil laminate comprising said first nonwoven material on an outside of said laminate and a foil facing said absorbent body.” Ex. 1001, 16:42-45. Petitioner argues that its modified Benning diaper has Karami ’626’s film-nonwoven laminate that forms chassis 20’s outer, visible side with the film facing absorbent core 28. Pet. 68 (citing Ex. 1002, Figs. 5, 6). Petitioner also refers to previous arguments about the proposed modifications. Id. For the reasons discussed for claim 1, Petitioner persuades us that its proposed modifications of Benning in view of Karami ’626 would have Karami ’626’s film nonwoven laminate. Petitioner also persuades us that it would form an outer visible side with the film facing core 28. Ex. 1002 ¶ 53, Figs. 5, 6; Ex. 1004 ¶¶ 62-64; Ex. 1012 ¶¶ 112-113. Other than the response described above for certain limitations of claims 1 and 2 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 7. See PO Resp. 40-62. Thus, based on the full record, Petitioner persuades us that Benning and Karami ’626 teach the limitations of claim 7. For the reasons above, Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626. 5. Analysis of Claim 11 Claim 11 depends from claim 2 and recites “wherein said side parts in at least one of said front and said rear area are constituted by a nonwoven material that is permeable to air and water vapor.” Ex. 1001, 16:55-58. IPR2020-01478 Patent 8,784,398 B2 73 Petitioner argues that Benning’s nonwoven wings 34 “are configured to breathe . . . , which allows an exchange of air as well [as] . . . vapor.” Pet. 68 (quoting Ex. 1002 ¶ 32) (also citing Ex. 1012 ¶ 127) (alteration in original). We find that the relied-upon portion of Benning teaches that “[p]referably the material sections attached laterally to the main body portion are configured to breathe at least in sections, with microporosity, which allows an exchange of air as well permeability for moisture in the form of vapor, being regarded as advantageous.” Ex. 1002 ¶ 32. We also credit Petitioner’s declarant testimony regarding claim 11 because the record supports it. Ex. 1012 ¶ 127. Other than the response described above for certain limitations of claims 1 and 2 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 11. See PO Resp. 40-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 11. 6. Analysis of Claims 12-15 Petitioner provides the same arguments for claims 12-15. Pet. 68. Each of these claims depends from claim 11 and requires a specific range of mass per unit area for the side parts. Ex. 1001, 16:59-17:3. Specifically, claim 12 recites “wherein a mass per unit area of said side parts in at least one of said front and said rear area is 25-45 g/m2;” claim 13 recites “wherein a mass per unit area of said side parts in at least one of said front and said rear area is 27-40 g/m2;” claim 14 recites “wherein a mass per unit area of said side parts in at least one of said front and said rear area is 28-35 g/m2;” and claim 15 recites “wherein a mass per IPR2020-01478 Patent 8,784,398 B2 74 unit area of said side parts in at least one of said front and said rear area is 18-60 g/m2.” Ex. 1001, 16:59-17:3. Petitioner argues that, in the modified Benning diaper, the basis weight of Benning’s material sections 34 would have been or would have obviously been modified to be “25-50 g/m2” or “20-40 gsm (optimally 34 gsm), in accordance with Benning’s and Karami ’626’s teachings, and, thus, within each of the recited ranges of claims 12-15. Pet. 68 (citing Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. We find that a relied-upon portion of Benning teaches that “[t]he material sections advantageously have a surface weight of 10 to 150 g/m2, in particular 20-100 g/m2, and specifically of 25-50 g/m2.” Ex. 1002 ¶ 32. Other than the response described above for certain limitations of claims 1, 2, and 11 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claims 12-15. See PO Resp. 50 (responding that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in limitations 1[c][3] and 1[c][4] and the limitations of dependent claim 15); see also id. at 40-58 (providing the same arguments for the disputed limitations). Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claims 12-15. 7. Analysis of Claim 19 Claim 19 depends from claim 1 and recites “wherein said outer faces of said side parts in at least one of said front and said rear area are constituted by a second nonwoven material.” Ex. 1001, 17:14-17. Petitioner argues that Benning’s wings attached to its chassis are preferably a non-woven material that defines their outer faces. Pet. 62 (citing Ex. 1002 ¶ 32). We find that the relied-upon portion of Benning IPR2020-01478 Patent 8,784,398 B2 75 teaches that “[t]he material sections attached to the main body portion are preferably of a non-woven material, specifically and preferably spunbond materials.” Ex. 1002 ¶ 32. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 19. See PO Resp. 50 (responding that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in limitations 1[c][3] and 1[c][4] and the limitations of dependent claim 19); see also id. at 40-58 (providing the same arguments for the disputed limitations). Thus, based on the full record, because Benning teaches its material sections are preferably made of a spunbond nonwoven, Petitioner persuades us that Benning teaches the limitations of claim 19. 8. Analysis of Claim 20 Claim 20 depends from claim 1 and recites “wherein a breathability of said side parts in at least one of said front and said rear area is greater than a breathability of said backsheet.” Ex. 1001, 17:18-21. Petitioner argues that its proposed modifications to Benning’s backsheet includes a film but the wings do not so as to be breathable. Pet. 60 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶ 127). We find that the relied-upon portion of Benning teaches that “[p]referably the material sections . . . are configured to breathe at least in sections, with microporosity, which allows an exchange of air as well permeability for moisture in the form of vapor.” Ex. 1002 ¶ 32. We also credit Petitioner’s declarant testimony regarding claim 20 because the record supports it. Ex. 1012 ¶ 127. IPR2020-01478 Patent 8,784,398 B2 76 Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 20. See PO Resp. 40-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 20. For the reasons above, Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626 to use a film nonwoven laminate for the backsheet. 9. Analysis of Claim 21 Claim 21 depends from claim 1 and recites “wherein said side parts in at least one of said front and said rear area are folded upon themselves at least about one folding line extending in a longitudinal direction.” Ex. 1001, 17:22-25. Petitioner argues that Benning teaches wings folded in the manner recited by claim 21. Pet. 61 (citing Ex. 1002, Abstract, ¶¶ 6-8, 22, 24, 25, 29, 56-61, Figs. 4-8; Ex. 1012 ¶ 65). We find that relied-upon portions of Benning teach and show material sections 4 at back region 24 and front region 22 “are folded over themselves at least along one fold line” that extends in a longitudinal direction. Ex. 1002 ¶¶ 6, 56-60, Figs. 4-8. We also credit Petitioner’s declarant testimony regarding claim 21 because the record supports it. Ex. 1012 ¶ 65. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 21. See PO Resp. 40-62. IPR2020-01478 Patent 8,784,398 B2 77 Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 21. 10. Analysis of Claim 22 Claim 22 depends from claim 1 and recites “wherein partial sections of said side parts are folded upon each other and lie against one another over an area, said partial sections being detachably fixed to each other in folded configuration at joining regions.” Ex. 1001, 17:26-30. Petitioner argues that Benning teaches wings folded in the manner recited by claim 22. Pet. 61 (citing Ex. 1002, ¶¶ 6, 56-60, Figs. 4-8; Ex. 1012 ¶¶ 65, 88). We find that the relied-upon portions of Benning teach and show material sections that “are folded over themselves at least along one fold line,” “releasably attached to each other in the folded configuration by punctiform affixation points 62,” and lie against one another over an area. Ex. 1002 ¶¶ 6, 56-60, Figs. 4-8. We also credit Petitioner’s declarant testimony regarding claim 22 because the record supports it. Ex. 1012 ¶¶ 65, 88. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 22. See PO Resp. 40-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 22. 11. Analysis of Claim 24 Claim 24 depends from claim 1 and recites “wherein a mass per unit area of a nonwoven component of said side parts joined to said front side IPR2020-01478 Patent 8,784,398 B2 78 edges is greater than a mass per unit area of said first nonwoven material of said outerface of said chassis.” Ex. 1001, 17:40-44. Petitioner refers to its arguments for claim 1’s recitation “wherein retaining forces between said closure means and said outer face of said chassis secure said diaper on the user body, when in use, and are lower than retaining forces between said closure means and said outer face of said side parts in said front area.” Pet. 61 (referencing limitation “1[c][4]”); see also id. at 59-60 (arguments for limitation “1[c][4]”). As discussed above for claim 1, the parties dispute, inter alia, whether Petitioner sufficiently shows that its proposed combination of Benning and Karami ’626 has the claimed difference in retaining forces due to different basis weight nonwovens. Pet. 55-56; PO Resp. 40-56. For the reasons given above for claim 1, Petitioner persuades us that Karami ’626 teaches the use of different basis weight nonwovens for its wings and backsheet, and, thus, the proposed modification of Benning in view of Karami ’626 would have a nonwoven for its underlayer or backsheet that is of relatively lower basis weight than the nonwoven for its material sections or wings. Pet. 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65; Ex. 1012 ¶ 118. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 24. See PO Resp. 50 (responding that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in limitations 1[c][3] and 1[c][4] and the limitations of dependent claim 24). For the same reasons, Petitioner persuades us that Benning and Karami ’626 teaches the limitations of claim 24 and that one of ordinary IPR2020-01478 Patent 8,784,398 B2 79 skill in the art would have combined these references with a reasonable expectation of success. 12. Analysis of Claim 25 Claim 25 depends from claim 1 and recites “wherein a thickness of a nonwoven component of said side parts joined to said front side edges is greater than a thickness of said first nonwoven material of said outerface of said chassis under a pressure of 0.5 kPa.” Ex. 1001, 17:45-49. Petitioner argues that it would have been obvious to include, for example, spunbond fiber material for both Benning’s wings and backsheet, and that the wing nonwoven would have had a relatively higher basis weight. Pet. 61 (citing Ex. 1012 ¶ 172). Petitioner relies on Karami ’626’s preferred configuration for the wing having a relatively higher basis weight. Id. at 61-62 (citing Ex. 1002 ¶ 172; Ex. 1004 ¶¶ 62-65). Petitioner contends that “[t]he higher-basis-weight would have had more material per unit area and therefore a larger thickness than the lower-basis-weight.” Id. at 62. Petitioner also refers to its earlier arguments. Pet. 62 (referencing arguments for claim 25 in the challenge based on Karami ’772 and Benning). According to Petitioner, “[b]etween such same-material nonwovens, the higher-basis-weight wing nonwovens would have had more material per unit area and therefore a larger thickness than the lower-basis- weight backsheet nonwoven,” including under the recited pressure. Pet. 40 (citing Ex. 1012 ¶ 173). Petitioner also cites supporting record evidence for its statement that “[a]dding basis weight, or more material to the nonwoven substrate, increases the [] thickness of the nonwoven substrate.” Id. (citing Ex. 1048 ¶¶ 5, 6). Petitioner further asserts that “increasing a nonwoven’s thickness was a known way to increase its basis weight and was obvious to IPR2020-01478 Patent 8,784,398 B2 80 achieve the benefits of higher-basis-weight wings.” Id. (citing Ex. 1012 ¶¶ 174-175). As discussed above for claim 1, the parties dispute, inter alia, whether Petitioner sufficiently shows that its proposed combination of Benning and Karami ’626 has the claimed difference in retaining forces due to different basis weight nonwovens. Pet. 55-56; PO Resp. 40-56. For the reasons given above for claim 1, Petitioner persuades us that Karami ’626 teaches the use of different basis weight nonwovens for its wings and backsheet, and, thus, the proposed modification of Benning in view of Karami ’626 would have a nonwoven for its underlayer or backsheet that is of relatively lower basis weight than the nonwoven for its material sections or wings. Pet. 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65; Ex. 1012 ¶ 118. We also credit Petitioner’s declarant testimony regarding claim 25 because record evidence supports it. Ex. 1012 ¶¶ 173-175; Ex. 1048 ¶¶ 5, 6. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 25. See PO Resp. 50 (responding that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in limitations 1[c][3] and 1[c][4] and the limitations of dependent claim 25); see also id. at 40-58 (providing the same arguments for the disputed limitations). Thus, Petitioner persuades us that Benning and Karami ’626 teaches the limitations of claim 25 and that one of ordinary skill in the art would have combined these references with a reasonable expectation of success. 13. Analysis of Claim 28 Petitioner refers to its arguments for claim 1 for most of the recitations of independent claim 28. Pet. 68-70. Patent Owner responds that Petitioner IPR2020-01478 Patent 8,784,398 B2 81 fails to show that the proposed combination of Benning and Karami ’626 teaches or results in limitations 28[c][3], 28[c][4], 28[d][1], and 28[d][2]. PO Resp. 40 (citing Ex. 2004 ¶¶ 79, 88, 156), 50; see also id. at 40-62 (providing the same arguments for the disputed limitations of claims 1, 15, 19, 24, 25, 26, 28, and 30). Based on the full record and for the reasons discussed above for claim 1, we make the following determinations for claim 28. a) Undisputed Recitations We determine that, because Benning describes an incontinence article with absorbent core 28, Petitioner persuades us that Benning teaches “[a]n absorbent incontinence diaper for adults,” the preamble of claim 28. Pet. xi (labeling the preamble “28[p]”), 68 (referring to arguments for “1[p]”); Ex. 1002 ¶ 53; Ex. 1012 ¶¶ 62-63. We also determine that, because Benning’s incontinence article has chassis 20 with crotch portion 26 applied to a wearer when in use and fluid-impermeable underlayer 30 forming an outer visible side, which is directed away from the user when in use, Petitioner persuades us that Benning teaches “a chassis having an inner face which, when in use, is directed toward a user body and an outer face which, when in use, is directed away from the user body.” Pet. xi (labeling the limitation “28[a][1]”), 68 (referring to arguments for “1[a][1]”); Ex. 1002 ¶ 53, Figs. 5, 6. We further determine that, because Benning’s incontinence article includes chassis 20 with fluid-impermeable underlayer 30 forming an outer visible side and Karami ’626 teaches a nonwoven material, Petitioner persuades us that Benning and Karami ’626 teach “wherein an entire area of said outer face of said chassis is constituted by a first nonwoven material.” Pet. xi (labeling the limitation “28[a][2]”), 69 (referring to arguments for IPR2020-01478 Patent 8,784,398 B2 82 “1[a][2]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 121. Petitioner also persuades us that “underlayer 30’s outer nonwoven has a basis weight-e.g. 20 gsm . . . -and a thickness.” Pet. 69. We additionally determine that, because Benning’s incontinence article includes chassis 20 having absorbent core 28 with fluid-impermeable underlayer 30 forming an outer visible side, Petitioner persuades us that Benning teaches “said chassis having an absorption body and a backsheet on a side of said absorption body which, when in use, is directed away from the user body.” Pet. xi (labeling the limitation “28[a][3]”), 69 (referring to arguments for “1[a][3]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 63. Further, because Benning’s incontinence article has absorbent core 28 with a smaller width than underlayer 30, Petitioner persuades us that Benning teaches “said absorption body having a smaller width than said backsheet.” Pet. xii (labeling the limitation “28[a][4]”), 69 (referring to arguments for “1[a][4]”); Ex. 1002, Figs. 4-6; Ex. 1012 ¶ 63. Because Benning’s incontinence article includes chassis 20 having back region 24, front region 22, and crotch region 26 in between, Petitioner persuades us that Benning teaches “said chassis also having a rear area, a front area, and a crotch area lying between said rear area, and said front area.” Pet. xii (labeling the limitation “28[a][5]”), 69 (referring to arguments for “1[a][5]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 62. Also, because Benning’s chassis 20 has lengthwise edges 40, Petitioner persuades us that Benning teaches “aid chassis further defining first and second side edges.” Pet. xii (labeling the limitation “28[a][6]”), 69 (referring to arguments for “1[a][6]”); Ex. 1002 ¶ 55, Fig. 4; Ex. 1012 ¶ 62. Because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that IPR2020-01478 Patent 8,784,398 B2 83 Benning teaches “four discrete, not directly connected side parts, each of said side parts having an inner face and an outer face.” Pet. xii (labeling the limitation “28[b][1]”), 69 (referring to arguments for “1[b][1]”); Ex. 1002 ¶¶ 3, 29, 54-56, Figs. 4-6; Ex. 1012 ¶ 62. Petitioner argues that “[t]he outer surfaces of wings 34 each comprise a nonwoven . . . that has a basis weight and a thickness” and that “it would have at least been obvious to use any value throughout the full range of 18- 60 gsm (e.g., 30 gsm) that was greater than the basis weight of modified underlayer 30’s outer nonwoven (e.g., 20 gsm).” Pet. xii (labeling the limitation “28[b][2]”), 69 (referring to arguments for dependent claim 19 and that the modified diaper would have a lower basis weight nonwoven for its backsheet). Because Benning teaches its material sections are preferably made of a spunbond nonwoven with a preferred 30 gsm basis weight and the material sections have some thickness, Petitioner persuades us that Benning teaches “said outer face comprising a second nonwoven material having a second mass per unit area of between 18-60 g/m2 and a second thickness.” Ex. 1002 ¶ 32; Ex. 1012 ¶ 125. Because Benning teaches and shows four material sections 34 each joined to sides edges with two attached at back region 24 and another two attached at front region 22, Petitioner persuades us that Benning teaches “each of said side parts being joined to one of said first and said second side edges, with a side part being attached to a side edge on each side of said front area and a side part being attached to a side edge on each side of said rear area.” Pet. xi (labeling the limitation “28[b][3]”), 69 (referring to arguments for “1[b][3]”); Ex. 1002 ¶ 54, Figs. 4-6; Ex. 1012 ¶ 62. For “closure means having mechanical closure aids, said closure means connected to said side parts at said rear area,” Petitioner refers to its IPR2020-01478 Patent 8,784,398 B2 84 arguments for claim 1. Pet. xii (labeling the limitation “28[c][1]”), 69 (referring to arguments for “1[c][1]”). As determined for claim 1, because Benning’s incontinence article includes closures 42 that can “interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20” and Benning’s closures “can be designed to grip mechanically” (Ex. 1002 ¶¶ 30, 55), we find that Benning’s closures 42, in accordance with our interpretation of “closure means” determined above, perform the function of “‘detachabl[y] fasten[ing]’ to outer faces of a diaper’s main and side parts” and are each “a ‘strip [of] material’ . . . with one or more adhesive regions.” Ex. 1001, 4:37-5:3, 12:41-53, 15:32-37, 16:12-16; Ex. 1012 ¶¶ 50-52. Also, because Karami ’626’s “disposable absorbent . . . article incorporates a fastener assembly consisting exclusively of a minihook fastener element” (Ex. 1004 ¶¶ 7, 10), we find that Karami ’626’s fastener assembly performs the function of “‘detachabl[y] fasten[ing]’ to outer faces of a diaper’s main and side parts” and are each “a ‘strip [of] material’ including ‘hooks of a hook-and-loop fastener.” For the reasons discussed for claim 1, Petitioner persuades us that one of ordinary skill in the art would have been motivated to use Karami ’626’s hook-type fasteners in Benning. Ex. 1012 ¶ 115. Petitioner, thus, persuades us that Benning and Karami ’626 teach “closure means having mechanical closure aids, said closure means connected to said side parts at said rear area.” Because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that Benning teaches “said closure means connected to said side parts at said rear area.” Pet. xi (labeling the limitation “28[c][2]”), 69 (referring to arguments for “1[c][2]”); Ex. 1002 ¶¶ 30, 54, 55, Fig. 4; Ex. 1012 ¶ 62. IPR2020-01478 Patent 8,784,398 B2 85 Because Benning’s chassis 20 with fluid-impermeable underlayer 30 forms an outer visible side and Karami ’626 teaches a fastener assembly and nonwoven material that do not require landing zones, Petitioner persuades us that Benning and Karami ’626 teach “said entire area of said outer face excludes mechanical closures other than said first nonwoven material when not fastened to said mechanical closure means.” Pet. xii (labeling the limitation “28[c][5]”), 70 (referring to arguments for “1[c][5]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 121. Patent Owner does not provide a responsive argument for the above recitations of claim 28. See PO Resp. 40-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). b) “said closure means configured for selective detachable fastening to said first nonwoven material and to said second nonwoven material” Petitioner refers to its arguments for a similar limitation in claim 1. Pet. xii (labeling the limitation “28[c][3]”), 69 (referring to arguments for “1[c][3]”). As summarized above for claim 1, Patent Owner responds that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in a selective detachable fastening of closures to front and side parts. See PO Resp. 40, 50-53 (providing arguments for limitation 28[c][3] together with similar recitations in claims 1, 15, 19, 24, 25, 26, and 30), 53-56 (responding that Petitioner has not established that the proposed modifications would have the claimed differing retaining forces and would have secured the diaper); see also id. at 40-49 (responding that one of ordinary skill in the art would not have made the proposed modifications), 59-62 (responding that the claimed retaining force ranges IPR2020-01478 Patent 8,784,398 B2 86 would not have been obvious and the other challenges do not cure the asserted deficiencies). For the reasons above, Petitioner persuades us that one of ordinary skill in the art would have modified Benning to use the film-nonwoven laminate and fasteners of Karami ’626 with a reasonable expectation of success. Pet. 50-51; Ex. 1004 ¶¶ 7, 16, 35, 40, 55, 62, 64, 65, 78; Ex. 1012 ¶¶ 107, 112, 113, 122. Also, for the reasons above, Petitioner persuades us that the fasteners would be configured for selective detachable fastening to the modified backsheet and Benning’s material sections 34. Pet. 52-55; Ex. 1002 ¶¶ 30, 32, 55; Ex. 1004 ¶¶ 3, 4, 6-8, 10, 40-42, 55, 78; Ex. 1012 ¶¶ 115, 116. Further, for the reasons above, Petitioner persuades us the proposed combination of Benning and Karami ’626 would have had retaining forces sufficient to secure the modified diaper. Ex. 1002 ¶ 55; Ex. 1004 ¶¶ 5, 7, 8, 10, 13, 40, 41, 55, 57, 61; Ex. 1012 ¶¶ 115, 122. Thus, based on the full record, Petitioner persuades us that the combination of Benning and Karami ’626 teaches or would have resulted in “said closure means configured for selective detachable fastening to said first nonwoven material and to said second nonwoven material.” c) “wherein retaining forces between said closure means and said first nonwoven material are determined as over-abdomen retaining forces and are between 57-20 N/25mm and are lower than retaining forces between said closure means and said second nonwoven material” Petitioner argues that “[o]bvious selections for closures 42 and modified underlayer 30’s nonwoven would have necessarily yielded the claimed retaining forces” and “[t]hat underlayer nonwoven would have obviously had a lower basis weight (e.g., 20 gsm, . . . Limitation 28[a][2]) than wing 34 nonwovens (e.g., 30 gsm, . . . Limitation 28[b][2]) and thus IPR2020-01478 Patent 8,784,398 B2 87 lower retaining forces with the closures.” Pet. xii (labeling the limitation “28[c][4]”), 69-70 (also referring to arguments for dependent claims 2 and 16). As summarized above for claim 1, Patent Owner responds that Petitioner fails to show that Petitioner has not established that the proposed modifications would have the claimed differing retaining forces and would have secured the diaper and that the claimed retaining force ranges would not have been obvious. See PO Resp. 40, 50 (providing arguments for limitation 28[c][4] together with similar recitations in claims 1, 15, 19, 24, 25, 26, and 30), 53-56, 59-62; see also id. at 40-49 (responding that one of ordinary skill in the art would not have made the proposed modifications), 50-53 (responding that the proposed combination does not have selective detachable fastening of closures to front and side parts), 62 (responding that the other challenges do not cure the asserted deficiencies). For the reasons given for claim 1, Petitioner persuades us that one of ordinary skill in the art would have modified Benning to use the film- nonwoven laminate of Karami ’626 with a reasonable expectation of success so that the backsheet would have a relatively lower basis weight nonwoven. Pet. 50-51, 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 7, 14-16, 35, 40, 55, 62- 65, 78; Ex. 1012 ¶¶ 107, 112, 113, 118, 122. Also, for the reasons above, Petitioner persuades us that the proposed combination of Benning and Karami ’626 would have had the recited differing retaining forces. Pet. 55- 56; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 65, 68, 69; Ex. 1012 ¶¶ 120. For the reasons given for claims 2-4 and 16, Petitioner persuades us that Benning modified in view of Karami ’626 has a retaining force within the ranges recited by these claims, such as “57-20 N/25 mm.” Pet. 50-54, 62-67; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 58, 60, 62-65, 68, 69; Ex. 1012 ¶¶ 123-127, 130. IPR2020-01478 Patent 8,784,398 B2 88 Thus, based on the full record, Petitioner persuades us that the combination of Benning and Karami ’626 teaches or would have had the limitation “wherein retaining forces between said closure means and said first nonwoven material are determined as over-abdomen retaining forces and are between 57-20 N/25mm and are lower than retaining forces between said closure means and said second nonwoven material.” d) “said second mass per unit area is greater than said first mass per unit area and said second thickness is greater than said first thickness under a pressure of 0.5 kPa.” For “said second mass per unit area is greater than said first mass per unit area,” Petitioner refers to its argument for limitation “1[c][4].” Pet. xii (labeling the limitation “28[d][1]”), 70. For “said second thickness is greater than said first thickness under a pressure of 0.5 kPa,” Petitioner argues that “[i]t was obvious to use the same material, including type (e.g., spunbond), fibermaterial, and fiber-thickness for the modified Benning diaper’s wing and backsheet nonwovens, with the wing nonwoven having a higher basis weight” and that “[t]he higher-basis-weight wing nonwoven would have had more material per unit area and therefore a larger thickness than the lower- basis-weight backsheet nonwoven.” Id. at xii (labeling the limitation “28[d][2]”), 70 (also referring to arguments for dependent claim 25). Petitioner also argues that “increasing a nonwoven’s thickness was a known way to increase its basis weight and was obvious to achieve the benefits of higher-basis-weight wings” with reference to arguments that the modified diaper would have had a relatively lower basis weight nonwoven for the backsheet. Id. As summarized above for claim 1, Patent Owner responds that one of ordinary skill in the art would not have made the proposed modifications and IPR2020-01478 Patent 8,784,398 B2 89 that the proposed combination would not have had the claimed differing retaining forces based on the basis weight of the nonwovens used in the modified diaper. See PO Resp. 40-49 (responding that one of ordinary skill in the art would not have made the proposed modifications), 50 (providing arguments for limitations 28[d][1] and 28[d][2] together with similar recitations in claims 1, 15, 19, 24, 25, 26, and 30), 53-56 (responding that Petitioner has not established that the proposed modifications would have the claimed differing retaining forces and would have secured the diaper); see also id. at 59-62 (responding that the claimed retaining force ranges would not have been obvious and the other challenges do not cure the asserted deficiencies), 50-53 (responding that the proposed combination does not have selective detachable fastening of closures to front and side parts). As discussed above for claim 1, Petitioner persuades us that one of ordinary skill in the art would have modified Benning to use the film- nonwoven laminate of Karami ’626 with a reasonable expectation of success so that the backsheet would have a relatively lower basis weight nonwoven. Pet. 50-51, 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 7, 14-16, 35, 40, 55, 62- 65, 78; Ex. 1012 ¶¶ 107, 112, 113, 118, 122. As discussed above for claim 25, we credit Petitioner’s declarant testimony regarding a similar limitation because record evidence supports it. Ex. 1012 ¶¶ 173-175; Ex. 1048 ¶¶ 5, 6. Thus, based on the full record, Petitioner persuades us that the combination of Benning and Karami ’626 teaches or would have had “said second mass per unit area is greater than said first mass per unit area and said second thickness is greater than said first thickness under a pressure of 0.5 kPa.” IPR2020-01478 Patent 8,784,398 B2 90 F. Obviousness Based on Benning, Karami ’626, and Miyamoto ’499 1. Analysis of Claim 6 Claim 6 depends from claim 5 and recites “wherein at least one said closure means also comprises at least one adhesive closure aid.” Ex. 1001, 16:39-41. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 5 would have been rendered obvious. Pet. 80. Petitioner argues that Miyamoto ’499 teaches fastening material 100 attached to ear panel 49 and that fastening material 100 includes first and second materials 106, 108. Id. at 78 (citing Ex. 1005 ¶¶ 31, 33, 34, Figs. 1, 4, 5; Ex. 1012 ¶ 142). Petitioner also argues that first fastening material 106 comprises hooks 102 and second fastening material 108 comprises an adhesive. Id. (citing Ex. 1005 ¶¶ 23, 33, 34, Figs. 1, 3; Ex. 1012 ¶ 142). Petitioner contends that it would have been obvious to include adhesive material on closures 42 of the modified Benning diaper in addition to hooks as in Miyamoto ’499 because one of ordinary skill in the art “would have been motivated to do so to maintain the fasteners folded onto the wings before use as Miyamoto ’499 teaches.” Pet. 79 (citing Ex. 1005 ¶¶ 33, 34, Fig. 4; Ex. 1012 ¶¶ 143, 144). Petitioner also contends that Benning’s closures 42 are already folded “‘to facilitate folding of the wings’ and ‘mitigate the risk of the fasteners sustaining damage and/or unintentionally engaging with objects.’” Id. at 79-80 (citing Ex. 1002 ¶ 55, Fig. 4; Ex. 1012 ¶ 144). Petitioner further contends that the proposed modification “would have been straightforward and routine” for the ordinarily skilled artisan. Id. at 71 (citing Ex. 1012 ¶ 147). IPR2020-01478 Patent 8,784,398 B2 91 We find that the relied-upon portions of Miyamoto ’499 teach “ear panel 49” with “fastening material 100” that comprises “first fastening material 106” with “a plurality of hooks 102” and “second fastening material 108” with “adhesive means 63” to provide “supplemental fastening means.” Ex. 1005 ¶¶ 31, 33, 34, Figs. 1, 4, 5. We also credit Petitioner’s declarant testimony regarding claim 6 because the record supports it. Ex. 1012 ¶ 142. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Miyamoto ’499 for the asserted reasons with a reasonable expectation of success. Pet. 79-80; Ex. 1012 ¶¶ 143, 144, 147. Other than the response described above for certain limitations of claims 1 and 2 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 6. See PO Resp. 40-62. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Miyamoto ’499 teach the limitations of claim 6, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. 2. Analysis of Claim 26 Petitioner argues that, “[w]ith the exception of Limitations 26[p] and 26[c][1], Claim 26 is met by Benning-Karami ’626-Miyamoto ’499 in the same way as in Benning- Karami ’626.” Pet. 80. Patent Owner responds that Petitioner fails to show that the proposed combination of Benning, Karami ’626, and Miyamoto ’499 teaches or results in limitations 26[c][3] IPR2020-01478 Patent 8,784,398 B2 92 and 26[c][4]. PO Resp. 40 (citing Ex. 2004 ¶¶ 79, 88, 156), 50; see also id. at 40-62 (providing the same arguments for the disputed limitations of claims 1, 15, 19, 24, 25, 26, 28, and 30). Based on the full record and for the reasons discussed above for claim 1, we make the following determinations for claim 26. For “[a]n absorbent incontinence diaper for adults,” Petitioner argues, and Patent Owner does not dispute, that “Benning’s is an absorbent incontinence diaper for adults.” Pet. x (labeling the preamble “26[p]”), 81 (citing Ex. 1002 ¶ 2, Fig. 4; Ex. 1012 ¶¶ 62-63). Petitioner persuades us that Benning teaches the preamble of claim 26. Ex. 1002 ¶ 53; Ex. 1012 ¶¶ 62-63. For “a chassis having an inner face which, when in use, is directed toward a user body and an outer face which, when in use, is directed away from the user body,” because Benning’s incontinence article has chassis 20 with crotch portion 26 applied to a wearer when in use and fluid- impermeable underlayer 30 forming an outer visible side, which is directed away from the user when in use, Petitioner persuades us that Benning teaches the recited chassis. Pet. x (labeling the limitation “26[a][1]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶ 53, Figs. 5, 6. For “wherein an entire area of said outer face of said chassis is constituted by a first nonwoven material,” because Benning’s incontinence article includes chassis 20 with fluid-impermeable underlayer 30 forming an outer visible side and Karami ’626 teaches a nonwoven material, Petitioner persuades us that Benning and Karami ’626 teach the limitation. Pet. x (labeling the limitation “26[a][2]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 121. For “said chassis having an absorption body and a backsheet on a side of said absorption body which, when in use, is directed away from the user IPR2020-01478 Patent 8,784,398 B2 93 body,” because Benning’s incontinence article includes chassis 20 having absorbent core 28 with fluid-impermeable underlayer 30 forming an outer visible side, Petitioner persuades us that Benning teaches the limitation. Pet. x (labeling the limitation “26[a][3]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 63. For “said absorption body having a smaller width than said backsheet,” because Benning’s incontinence article has absorbent core 28 with a smaller width than underlayer 30, Petitioner persuades us that Benning teaches the limitation. Pet. x (labeling the limitation “26[a][4]”), 80 (referring to arguments for claim 1); Ex. 1002, Figs. 4-6; Ex. 1012 ¶ 63. For “said chassis also having a rear area, a front area, and a crotch area lying between said rear area and said front area,” because Benning’s incontinence article includes chassis 20 having back region 24, front region 22, and crotch region 26 in between, Petitioner persuades us that Benning teaches the limitation. Pet. x (labeling the limitation “26[a][5]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 62. For “said chassis further defining first and second side edges,” because Benning’s chassis 20 has lengthwise edges 40, Petitioner persuades us that Benning teaches the limitation. Pet. xi (labeling the limitation “26[a][6]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶ 55, Fig. 4; Ex. 1012 ¶ 62. For “four discrete, not directly connected side parts, each of said side parts having an inner face and an outer face,” because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that Benning teaches the limitation. Pet. xi (labeling the limitation “26[b][1]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶¶ 3, 29, 54-56, Figs. 4-6; Ex. 1012 ¶ 62. IPR2020-01478 Patent 8,784,398 B2 94 For “each of said side parts joined to one of said first and said second side edges, with a side part being attached to a side edge on each side of said front area and a side part being attached to a side edge on each side of said rear area,” because Benning teaches and shows four material sections 34 each joined to sides edges with two attached at back region 24 and another two attached at front region 22, Petitioner persuades us that Benning teaches the limitation. Pet. xi (labeling the limitation “26[b][2]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶ 54, Figs. 4-6; Ex. 1012 ¶ 62. For “closure means having hooks of a hook-and-loop fastener and an adhesive closure aid,” because Benning’s incontinence article includes closures 42 that can “interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20” and Benning’s closures “can be designed to grip mechanically,” we find that Benning’s closure 42 teaches the limitation in accordance with our interpretation. Pet. xi (labeling the limitation “26[c][1]”), 80 (referring to arguments for claim 1), 81 (also referring to arguments for claim 6); Ex. 1001, 4:37-5:3, 12:41-53, 15:32-37, 16:12-16; Ex. 1002 ¶¶ 30, 55; Ex. 1012 ¶¶ 50-52. Also, because Karami ’626’s “disposable absorbent . . . article incorporates a fastener assembly consisting exclusively of a minihook fastener element,” we find that Karami ’626’s fastener assembly teaches the limitation in accordance with our interpretation. Ex. 1004 ¶¶ 7, 10; Ex. 1012 ¶ 115. Also, because Miyamoto ’499 teaches “ear panel 49” with “fastening material 100” that comprises “first fastening material 106” with “a plurality of hooks 102” and “second fastening material 108” with “adhesive means 63” to provide “supplemental fastening means,” Petitioner persuades us that Miyamoto ’499 teaches the recited “an adhesive closure aid” and that one of IPR2020-01478 Patent 8,784,398 B2 95 ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Miyamoto ’499 for the asserted reasons with a reasonable expectation of success. Pet. 79-80; Ex. 1005 ¶¶ 31, 33, 34, Figs. 1, 4, 5; Ex. 1012 ¶¶ 143, 144, 147. For “said closure means connected to said side parts at said rear area,” because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that Benning teaches the limitation. Pet. xi (labeling the limitation “26[c][2]”), 80 (referring to arguments for claim 1); Ex. 1002 ¶¶ 30, 54, 55, Fig. 4; Ex. 1012 ¶ 62. For “said closure means configured for selective detachable fastening to said first nonwoven material of said outer face of said chassis and to said outer face of said side parts in said front area,” after considering the parties’ arguments and evidence, Petitioner persuades us that Benning and Karami ’626 teach the limitation and that one of ordinary skill in the art would have been motivated to combine these references with a reasonable expectation of success, as discussed above for claim 1. Pet. xi (labeling the limitation “26[c][3]”), 50-55 (arguing motivation to modify Benning), 80 (referring to arguments for claim 1); PO Resp. 40-62; Ex. 1002 ¶¶ 30, 32, 55; Ex. 1004 ¶¶ 3-8, 10, 13, 16, 35, 40-42, 55, 57, 61, 62, 64, 65, 78; Ex. 1012 ¶¶ 107, 112, 113, 115, 116, 122. For “wherein retaining forces between said closure means and said first nonwoven material of said outer face of said chassis secure said diaper on the user body, when in use, and are lower than retaining forces between said closure means and said outer face of said side parts in said front area,” after considering the parties’ arguments and evidence, Petitioner persuades us that Benning and Karami ’626 teach the limitation and that one of IPR2020-01478 Patent 8,784,398 B2 96 ordinary skill in the art would have been motivated to combine these references with a reasonable expectation of success, as discussed above for claim 1. Pet. xi (labeling the limitation “26[c][4]”), 50-51, 55-56, 59, 80 (referring to arguments for claim 1); PO Resp. 40-62; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 7, 14-16, 35, 40, 55, 62-65, 68, 69, 78; Ex. 1012 ¶¶ 107, 112, 113, 118, 120, 122. 3. Analysis of Claim 27 Claim 27 depends from independent claim 26 and recites “wherein said retaining forces, determined as over-abdomen retaining forces, between said mechanical closure means and said first nonwoven material of said outer face of said chassis are 57-20 N/25mm.” Ex. 1001, 18:15-19. Petitioner refers to its arguments for claim 2. Pet. 81. Petitioner also argues that one of ordinary skill in the art “would have understood that adding adhesive closure aids would not have materially increased the retaining forces on the backsheet or wings, at least because adhesive has little impact on shear forces” because “each adhesive aid (a) need only hold the fastener against a wing surface during manufacturing/folding and (b) its adherence would be reduced after peeling away from that surface to secure the diaper on a wearer.” Id. at 81-82 (citing Ex. 1012 ¶ 102; Ex. 1024, 1:21-34). For the reasons discussed above for claims 2-4 and 16, Petitioner persuades us that the proposed combination of Benning and Karami ’626 represents a known fastener combined with known nonwovens in a known way that would have been the same as what the ’398 patent describes and would have a retaining force in the recited range. Pet. 50-54; Ex. 1004 ¶¶ 68, 69; Ex. 1012 ¶¶ 123, 127-130. IPR2020-01478 Patent 8,784,398 B2 97 Other than the response described above for certain limitations of independent claim 26 and the proposed modifications of Benning, Patent Owner does not provide a separate argument for claim 26. See PO Resp. 50 (responding that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in limitations 26[c][3] and 26[c][4]); see also id. at 40-58 (providing the same arguments for the disputed limitations and the reasons to modify), 59-62 (asserting the same arguments for claims 2-4, 16, 27, 28, and 30). Thus, based on the full record, Petitioner shows that Benning modified in view of Karami ’626 has a retaining force within the range recited by claim 27. 4. Analysis of Claim 29 Claim 29 depends from independent claim 28 and recites “wherein at least one said closure means also comprises at least one adhesive closure aid.” Ex. 1001, 18:61-63. Petitioner refers to its arguments for independent claim 28 and dependent claim 6. Pet. 82. Other than the response described above for certain limitations of claims 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 29. See PO Resp. 40-62. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Miyamoto ’499 teach the limitations of claim 29, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. IPR2020-01478 Patent 8,784,398 B2 98 5. Analysis of Claim 30 Petitioner refers to its arguments for independent claim 28 and dependent claim 29 for the recitations of independent claim 30. Pet. 82-83. Patent Owner responds that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teaches or results in limitations 30[c][3], 30[c][4], 30[d][1], and 30[d][2]. PO Resp. 40 (citing Ex. 2004 ¶¶ 79, 88, 156), 50; see also id. at 40-62 (providing the same arguments for the disputed limitations of claims 1, 15, 19, 24, 25, 26, 28, and 30). Based on the full record and for the reasons discussed above for claims 1 and 28, we make the following determinations for claim 30. For “[a]n absorbent incontinence diaper for adults,” because Benning describes an incontinence article with absorbent core 28, Petitioner persuades us that Benning teaches the preamble of claim 30. Pet. xiii (labeling the preamble “30[p]”), 82 (referring to arguments for “28[p]”); Ex. 1002 ¶ 53; Ex. 1012 ¶¶ 62-63. For “a chassis having an inner face which, when in use, is directed toward a user body and an outer face which, when in use, is directed away from the user body,” because Benning’s incontinence article has chassis 20 with crotch portion 26 applied to a wearer when in use and fluid- impermeable underlayer 30 forming an outer visible side, which is directed away from the user when in use, Petitioner persuades us that Benning teaches the recited chassis. Pet. xiii (labeling the limitation “30[a][1]”), 82 (referring to arguments for “28[a][1]”); Ex. 1002 ¶ 53, Figs. 5, 6. For “wherein an entire area of said outer face of said chassis is constituted by a first nonwoven material having a first mass per unit area and a first thickness,” because Benning’s incontinence article includes chassis 20 with fluid-impermeable underlayer 30 forming an outer visible side and IPR2020-01478 Patent 8,784,398 B2 99 Karami ’626 teaches a nonwoven material, Petitioner persuades us that Benning and Karami ’626 teach the limitation. Pet. xiii (labeling the limitation “30[a][2]”), 82 (referring to arguments for “28[a][2]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 121. Petitioner also persuades us that “underlayer 30’s outer nonwoven has a basis weight-e.g. 20 gsm . . . -and a thickness.” Pet. 69. For “said chassis having an absorption body and a backsheet on a side of said absorption body which, when in use, is directed away from the user body,” because Benning’s incontinence article includes chassis 20 having absorbent core 28 with fluid-impermeable underlayer 30 forming an outer visible side, Petitioner persuades us that Benning teaches the limitation. Pet. xiii (labeling the limitation “30[a][3]”), 82 (referring to arguments for “28[a][3]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 63. For “said absorption body having a smaller width than said backsheet,” because Benning’s incontinence article has absorbent core 28 with a smaller width than underlayer 30, Petitioner persuades us that Benning teaches the limitation. Pet. xiii (labeling the limitation “30[a][4]”), 82 (referring to arguments for “28[a][4]”); Ex. 1002, Figs. 4-6; Ex. 1012 ¶ 63. For “said chassis also having a rear area, a front area and a crotch area lying between said rear area and said front area,” because Benning’s incontinence article includes chassis 20 having back region 24, front region 22, and crotch region 26 in between, Petitioner persuades us that Benning teaches the limitation. Pet. xiii (labeling the limitation “30[a][5]”), 82 (referring to arguments for “28[a][5]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 62. For “said chassis further defining first and second side edges,” because Benning’s chassis 20 has lengthwise edges 40, Petitioner persuades IPR2020-01478 Patent 8,784,398 B2 100 us that Benning teaches the limitation. Pet. xiii (labeling the limitation “30[a][6]”), 82 (referring to arguments for “28[a][6]”); Ex. 1002 ¶ 55, Fig. 4; Ex. 1012 ¶ 62. For “four discrete, not directly connected side parts, each of said side parts having an inner face and an outer face,” because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that Benning teaches the limitation. Pet. xiii (labeling the limitation “30[b][1]”), 82 (referring to arguments for “28[b][1]”); Ex. 1002 ¶¶ 3, 29, 54-56, Figs. 4-6; Ex. 1012 ¶ 62. For “said outer face comprising a second nonwoven material having a second mass per unit area of between 18-60 g/m2 and a second thickness,” because Benning teaches its material sections are preferably made of a spunbond nonwoven with a preferred 30 gsm basis weight and the material sections have some thickness, Petitioner persuades us that Benning teaches the limitation. Pet. xiii (labeling the limitation “30[b][2]”), 69 (referring to arguments for dependent claim 19 and that the modified diaper would have a lower basis weight nonwoven for its backsheet), 82 (referring to arguments for “28[b][2]”); Ex. 1002 ¶ 32; Ex. 1012 ¶ 125. For “each of said side parts being joined to one of said first and said second side edges, with a side part being attached to a side edge on each side of said front area and a side part being attached to a side edge on each side of said rear area,” because Benning teaches and shows four material sections 34 each joined to sides edges with two attached at back region 24 and another two attached at front region 22, Petitioner persuades us that Benning teaches the limitation. Pet. xiii (labeling the limitations “30[b][3]” and “30[b][5]”), 69 (referring to arguments for “1[b][3]” for “28[b][3]”), 82 IPR2020-01478 Patent 8,784,398 B2 101 (referring to arguments for “28[b][3]”); Ex. 1002 ¶ 54, Figs. 4-6; Ex. 1012 ¶ 62. For “closure means having mechanical closure aids and an adhesive closure aid,” because Benning’s incontinence article includes closures 42 that can “interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20” and Benning’s closures “can be designed to grip mechanically,” we find that Benning’s closure 42 teaches the limitation in accordance with our interpretation. Pet. xiii (labeling the limitation “30[c][1]”), 82 (referring to arguments for “28[c][1]” and claim 29); Ex. 1001, 4:37-5:3, 12:41-53, 15:32-37, 16:12-16; Ex. 1002 ¶¶ 30, 55; Ex. 1012 ¶¶ 50-52. Also, because Karami ’626’s “disposable absorbent . . . article incorporates a fastener assembly consisting exclusively of a minihook fastener element,” we find that Karami ’626’s fastener assembly teaches the limitation in accordance with our interpretation. Ex. 1004 ¶¶ 7, 10; Ex. 1012 ¶ 115. For “said closure means connected to said side parts at said rear area,” because Benning teaches four material sections 34 not directly connected and each with inner and outer faces, Petitioner persuades us that Benning teaches the limitation. Pet. xiii (labeling the limitation “30[c][2]”), 69 (referring to arguments for claim 1 for limitation “28[c][2]”), 82 (referring to arguments for “28[c][2]”); Ex. 1002 ¶¶ 30, 54, 55, Fig. 4; Ex. 1012 ¶ 62. For “said closure means configured for selective detachable fastening to said first nonwoven material and to said second nonwoven material,” after considering the parties’ arguments and evidence, Petitioner persuades us that Benning and Karami ’626 teach the limitation and that one of ordinary skill in the art would have been motivated to combine these references with a reasonable expectation of success, as discussed above for claim 1. Pet. xiii IPR2020-01478 Patent 8,784,398 B2 102 (labeling the limitation “30[c][3]”), 50-55 (arguing motivation to modify Benning), 80 (referring to arguments for claim 1 for limitation “28[c][3]”), 82 (referring to arguments for limitation “28[c][3]”); PO Resp. 40-62; Ex. 1002 ¶¶ 30, 32, 55; Ex. 1004 ¶¶ 3-8, 10, 13, 16, 35, 40-42, 55, 57, 61, 62, 64, 65, 78; Ex. 1012 ¶¶ 107, 112, 113, 115, 116, 122. For wherein retaining forces between said closure means and said first nonwoven material are between 57-20 N/25mm when determined using a pull-off angle tangential to a curved surface and kept constant, said curved surface having a radius of curvature of 400 mm and said retaining forces are lower than retaining forces between said closure means and said second nonwoven material when determined using a pull-off angle tangential to a curved surface and kept constant, said curved surface having a radius of curvature of 400 mm, Petitioner refers to arguments for “28[c][4].” Pet. xiii (labeling the limitation “30[c][4]”), 82. Patent Owner responds that Petitioner fails to show that the proposed combination of Benning and Karami ’626 teach or result in limitation 30[c][4]. PO Resp. 40 (citing Ex. 2004 ¶¶ 79, 88, 156), 50; see also id. at 40-58 (providing the same arguments for the disputed limitations), 59-62 (asserting the same arguments for claims 2-4, 16, 27, 28, and 30). As discussed above for claims 1 and 28, Petitioner persuades us that one of ordinary skill in the art would have modified Benning to use the film- nonwoven laminate of Karami ’626 with a reasonable expectation of success so that the backsheet would have a relatively lower basis weight nonwoven. Pet. 50-51, 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 7, 14-16, 35, 40, 55, 62- 65, 78; Ex. 1012 ¶¶ 107, 112, 113, 118, 122. Also, for the reasons above, Petitioner persuades us that the proposed combination of Benning and IPR2020-01478 Patent 8,784,398 B2 103 Karami ’626 would have had the recited differing retaining forces. Pet. 55- 56; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 65, 68, 69; Ex. 1012 ¶¶ 120. For the reasons given for claims 2-4 and 16, Petitioner persuades us that Benning modified in view of Karami ’626 has a retaining force within the ranges recited by these claims, such as “57-20 N/25 mm.” Pet. 50-54, 62-67; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 58, 60, 62-65, 68, 69; Ex. 1012 ¶¶ 123-127, 130. Petitioner, thus, persuades us that the combination of Benning and Karami ’626 teaches or would have had the limitation quoted above. For “said entire area of said outer face excludes mechanical closures other than said first nonwoven material when not fastened to said mechanical closure means,” because Benning’s chassis 20 with fluid- impermeable underlayer 30 forms an outer visible side and Karami ’626 teaches a fastener assembly and nonwoven material that do not require landing zones, Petitioner persuades us that Benning and Karami ’626 teach the limitation. Pet. xiii (labeling the limitation “30[c][5]”), 70 (referring to arguments for “1[c][5]” for “28[c][5]”), 82 (referring to arguments for “28[c][5]”); Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 121. For “said second mass per unit area is greater than said first mass per unit area and said second thickness is greater than said first thickness under a pressure of 0.5 kPa,” Petitioner refers to its arguments for “28[d][1]-[2].” Pet. xiv (labeling these limitations “30[d][1]” and “30[d][2]”), 82. As discussed for claims 1 and 28, Petitioner persuades us that one of ordinary skill in the art would have modified Benning to use the film-nonwoven laminate of Karami ’626 with a reasonable expectation of success so that the backsheet would have a relatively lower basis weight nonwoven. Pet. 50- 51, 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶¶ 7, 14-16, 35, 40, 55, 62-65, 78; Ex. 1012 ¶¶ 107, 112, 113, 118, 122. As discussed above for claim 25, we IPR2020-01478 Patent 8,784,398 B2 104 credit Petitioner’s declarant testimony regarding a similar limitation because record evidence supports it. Ex. 1012 ¶¶ 173-175; Ex. 1048 ¶¶ 5, 6. Petitioner, thus, persuades us that the combination of Benning and Karami ’626 teaches or would have had “said second mass per unit area is greater than said first mass per unit area and said second thickness is greater than said first thickness under a pressure of 0.5 kPa.” G. Obviousness Based on Benning, Karami ’626, and Jacobs 1. Analysis of Claim 9 Claim 9 depends from claim 7 and recites “wherein said nonwoven- foil laminate is subjected to temperature treatment above 60° C. to improve said retaining forces.” Ex. 1001, 16:49-51. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 7 would have been rendered obvious. Pet. 86. Petitioner argues that Jacobs teaches a process for producing a film-nonwoven laminate for a backsheet to have cloth-like tactile properties and thermal stability, and that the process includes heating the film to at least 60 ° C to improve strength and breathability and later annealing the film. Id. at 83-85 (citing Ex. 1003 ¶ 52; Ex. 1004 ¶ 64; Ex. 1007, Abstract, 1:10-46, 1:54-66, 2:66-3:20, 3:46-56, 4:9-39, 4:46-53, 5:24-43, 5:48-63, 6:6-11, 6:23-26, 6:30-38, 9:32-43, Figs. 1, 2; Ex. 1012 ¶¶ 153-156, 158). Petitioner also argues that “[t]he phrase ‘to improve said over-abdomen retaining forces’ ‘simply expresses the intended result’ of the temperature treatment and therefore should ‘not [be] given weight,’” and that “[n]evertheless, the nonwoven gathering caused by Jacobs’s annealing improves retaining forces.” Id. at 86 (citing Ex. 1007, 6:6-11; Ex. 1012 ¶ 161). IPR2020-01478 Patent 8,784,398 B2 105 Petitioner contends that it would have been obvious “to make backsheet 130’s or underlayer 30’s film-nonwoven laminate using Jacobs’s process, including subjecting the laminate to an annealing/temperature treatment in which it was heated to at least 60º C in view of its polyethylene or polypropylene film.” Pet. 85 (citing Ex. 1003 ¶ 52; Ex. 1004 ¶ 64; Ex. 1007, 4:18-22, 5:25-38; Ex. 1012 ¶ 157); see also id. at 86 (citing Ex. 1007, 4:18-22, 5:25-38; Ex. 1012 ¶¶ 160-163). According to Petitioner, one of ordinary skill in the art would have done so “to achieve the benefits Jacobs teaches, including an ‘improved cloth-like texture’ and ‘thermal stability.’” Id. (citing Ex. 1007, 2:66-3:15, 5:38-40, 6:23-26, 9:32-40; Ex. 1012 ¶ 157). Petitioner further contends that the proposed modification would have been “straightforward and routine” for the ordinarily skilled artisan. Id. (citing Ex. 1012 ¶ 159). We find that the relied-upon portions of Jacobs teach a film nonwoven laminate that is heated to “between about 60° C. and about 120° C” for stretching and then “between about 5° C. and about 30° C. higher than the stretching temperature” for annealing. Ex. 1007, 1:54-64, 4:9-21, 5:24-43. We also find that Jacobs teaches that “thin thermoplastic material (e.g., film or microfiber web) is drawn or oriented to improve strength properties of the material in the oriented direction.” Id. at 3:46-56. We also credit Petitioner’s declarant testimony regarding claim 9 because the record supports it. Ex. 1012 ¶¶ 153-156, 158, 161. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Jacobs for the asserted reasons with a reasonable expectation of success. Pet. 85; Ex. 1012 ¶¶ 157, 159, 160-163. IPR2020-01478 Patent 8,784,398 B2 106 Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 9. See PO Resp. 40- 61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Anderson teach the limitations of claim 9, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. 2. Analysis of Claim 17 Claim 17 depends from claim 1 and recites “wherein said first nonwoven material is subjected to temperature treatment above 60° C. to improve said retaining forces.” Ex. 1001, 17:8-9. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 1 would have been rendered obvious. Pet. 86. Petitioner relies on the same teachings of Jacobs and same asserted reasons for modification summarized above for claim 9. See Pet. 83-86. Our findings from Jacobs and determinations regarding the asserted reason to combine provided above for claim 9 also apply to claim 17. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 17. See PO Resp. 40-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” IPR2020-01478 Patent 8,784,398 B2 107 do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Jacobs teach the limitations of claim 17, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. H. Obviousness Based on Benning, Karami ’626, and Anderson 1. Analysis of Claim 8 Claim 8 depends from claim 7 and recites “wherein said foil is constituted by a breathable one- or multi-layer foil that is impermeable to liquids.” Ex. 1001, 16:46-48. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 7 would have been rendered obvious. Pet. 89. Petitioner argues that Anderson teaches a process to modify a film-nonwoven laminate to be “breathable” and have “a soft, clothlike surface and extensibility for improved fit and comfort.” Pet. 87 (citing Ex. 1008, Abstract, 2:51-3:23, 17:49-53; Ex. 1012 ¶¶ 160-161). Petitioner also argues that the process bonds a nonwoven and a film to result in a composite web that undergoes ring-rolling to improve the composite’s characteristics. Id. at 87-89 (citing Ex. 1008, 2:1-31, 5:49-6:17, 6:65-7:25, 10:64-11:11, 11:23-48, 12:12-22, 15:56-16:5, 17:46-58, 17:65-18:2, 18:14-65, Figs. 2, 3, 5, 9; Ex. 1012 ¶¶ 160-163, 165, 167). Petitioner contends that it would have been obvious “to subject the modified film-nonwoven laminate backsheet of . . . the Benning-Karami ’626 diaper . . . to ring-rolling” because one of ordinary skill in the art “would have been motivated to achieve the benefits Anderson describes, including the comfort-promoting increase in ‘cross-web extensibility’ and IPR2020-01478 Patent 8,784,398 B2 108 breathability.” Pet. 89 (citing Ex. 1008, 1:28-34, 2:41-44, 11:23-48, 12:12-22, 15:56-16:5, 17:46-58, 18:56-65; Ex. 1012 ¶¶ 164-166). Petitioner also contends that ring-rolling would have rendered the “film breathable yet liquid-impermeable.” Id. at 89-90 (citing Ex. 1008, Abstract). Petitioner further contends that “[r]ing-rolling was straightforward and routine for [a person of ordinary skill in the art], rendering the modification obvious.” Id. at 89 (citing Ex. 1012 ¶ 166). We find that the relied-upon portions of Anderson teach a process for modifying a web that “may be films, nonwovens, or composites of films and nonwoven webs, such as laminates” by being drawn or extruded and fed to opposed forming rolls 8, 9 and thereafter, used in a “disposable absorbent article.” Ex. 1008, 1:8-12, 2:41-44, 3:8-9, 5:49-6:17, 17:49-58, Figs. 1, 3, 4. We also find that Anderson teaches that its “resultant microporous web is breathable to air or vapor, but acts as a liquid barrier under the impact pressure commonly imposed by the wearer of an absorbent article” and would have “liquid impermeability.” Ex. 1008, Abstract, 2:65-3:1. We further credit Petitioner’s declarant testimony regarding claim 8 because the record supports it. Ex. 1012 ¶¶ 160-163, 165, 167. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Anderson for the asserted reasons with a reasonable expectation of success. Pet. 89; Ex. 1012 ¶¶ 164-166. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 8. See PO Resp. 40- 61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the IPR2020-01478 Patent 8,784,398 B2 109 deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Anderson teach the limitations of claim 8, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. 2. Analysis of Claim 10 Claim 10 depends from claim 7 and recites “wherein said nonwoven- foil laminate is subjected to ring-rolling to improve said retaining forces.” Ex. 1001, 16:52-54. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 7 would have been rendered obvious. Pet. 90. Petitioner relies on the same teachings of Anderson and same asserted reasons for modification summarized above for claim 8. See Pet. 87-90. Petitioner further argues that “[t]he phrase ‘to improve said over-abdomen retaining forces’ should not be given patentable weight because it expresses the intended result of the ring-rolling” and “the ’398 Patent does not identify any particular characteristics of ring-rolling that would be required to ‘improve’ retaining forces, suggesting that any ring- rolling would do so.” Id. at 90. Our findings from Anderson and determinations regarding the asserted reason to combine provided above for claim 8 also apply to claim 10. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 10. See PO Resp. 40-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the IPR2020-01478 Patent 8,784,398 B2 110 deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Anderson teach the limitations of claim 10, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. 3. Analysis of Claim 18 Claim 18 depends from claim 1 and recites “wherein said first nonwoven material is subjected to ring-rolling to improve said retaining forces.” Ex. 1001, 17:11-13. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 1 would have been rendered obvious. Pet. 90. Petitioner relies on the same teachings of Anderson and same asserted reasons for modification summarized above for claim 8. See Pet. 87-90. Our findings from Anderson and determinations regarding the asserted reason to combine provided above for claims 8 and 10 also apply to claim 18. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 18. See PO Resp. 40-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Anderson teach the limitations of claim 18, and that one of IPR2020-01478 Patent 8,784,398 B2 111 ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. I. Obviousness Based on Benning, Karami ’626, and Fernfors Analysis of Claim 23 Claim 23 depends from claim 1 and recites wherein said side parts in at least one of said front and said rear area have a reinforcing material which, when viewed in a transverse direction, is narrower than each side part, said reinforcing material being provided in at least a region overlapping said side edge of said chassis, thereby overlapping both a lateral side edge region of said chassis and part of said side part in said transverse direction. Ex. 1001, 17:32-39. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 1 would have been rendered obvious. Pet. 94. Petitioner argues that Fernfors teaches a diaper with belt halves attached by reinforcement material to a back portion of a chassis. Pet. 90-92 (citing Ex. 1012 ¶¶ 167, 168; Ex. 1045 ¶¶ 25, 27, 30, 32, 33, 45, 46, Figs. 1, 6). According to Petitioner, one of ordinary skill in the art would have understood that the reinforcement material provides a stronger connection between the belt halves and back portion, as evidenced by Exhibit 1046. Id. at 92-93 (citing Ex. 1012 ¶¶ 168, 169; Ex. 1046 ¶¶ 65, 116-119, Fig. 15). Petitioner also contends that it would have been obvious “to add reinforcement material like Fernfors’s at the chassis-wing interfaces” and “such pieces of reinforcement material would have been transversely- narrower than the wings.” Pet. 93-94 (citing Ex. 1012 ¶¶ 170-171; Ex. 1045, Fig. 6). We find that the relied-upon portions of Fernfors teach “belt halves 9, 9 can be attached to the topsheet 2 within the bonding areas 13, 13'” and IPR2020-01478 Patent 8,784,398 B2 112 “pieces of reinforcement material . . . are permanently attached to opposite edge portions of the topsheet, wherein the insides of one end of the belt halves within bonding areas are attached to the topsheet via the pieces of reinforcement material.” Ex. 1045 ¶¶ 30, 32. We also find that Fernfors shows that the pieces of reinforcement material would have been transversely-narrower than the belt-halves.” Id. at Figs. 1, 6. We also credit Petitioner’s declarant testimony regarding claim 21 because the record supports it. Ex. 1012 ¶¶ 167-169. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Fernfors for the asserted reasons with a reasonable expectation of success. Pet. 85-86; Ex. 1012 ¶¶ 170-171. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 23. See PO Resp. 40-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Fernfors teach the limitations of claim 21, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. J. Objective Indicia of Nonobviousness The parties do not rely on any objective indicia of nonobviousness for any of claims 1-30. See generally Pet.; PO Resp.; PO Sur-reply. IPR2020-01478 Patent 8,784,398 B2 113 K. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. Above, based on full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art, and (4) objective evidence of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the prior art of record, (2) Benning and Karami ’626, by themselves or further modified by one of Miyamoto ’499, Jacobs, Anderson, or Fernfors, teach or suggest all the limitations of claims 1-30, (3) one of ordinary skill in the art would have combined these references in the manner asserted by Petitioner with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to claims 1-30. Weighing these underlying factual determinations, a preponderance of the evidence persuades us that claims 1- 30 of the ’398 patent are unpatentable over Benning and Karami ’626, by themselves or further modified by one of Miyamoto ’499, Jacobs, Anderson, or Fernfors. Arctic Cat, 876 F.3d at 1361. L. Remaining Challenges Petitioner also challenges claims 1-5, 7, 8, 11, 16, 19-22, 24, and 25 as unpatentable over Benning, Karami ’626, and Stupperich. Pet. 71-77. Petitioner further challenges claims 1-5, 7, 8, 11-16, 19-22, 24, 25, and 28 as unpatentable over Karami ’772 and Benning, and claims 6, 8-10, 17, 18, 23, 26, 27, 29, and 30 as unpatentable over Karami ’772, Benning, and at IPR2020-01478 Patent 8,784,398 B2 114 least one of Miyamoto ’499, Jacobs, Anderson, and Fernfors. Id. at 20-48, 78-94. Because we determine that the same claims are unpatentable over proposed combinations including Benning and Karami ’626, we do not reach these additional challenges to these claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a final written decision addressing all of the claims it has challenged”). III. CONCLUSION3 In summary: 3 Should Patent Owner wish to pursue amendment of the challenged claim in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). 4 As explained above in Section II.L., we do not reach the challenges based on (1) Karami ’772 and Benning or (2) Benning, Karami ’626, and Stupperich because we determine that the same claims are unpatentable over combinations based on Benning and Karami ’626. Claim(s) 35 U.S.C. §4 References/Basis Claim(s) Shown Unpatentable Claim(s) Not Shown Unpatentable 1-5, 7, 8, 11-16, 19-22, 24, 25, 28 103(a) Karami ’772, Benning 1-5, 7, 8, 11-16, 19-22, 103(a) Benning, Karami ’626 1-5, 7, 8, 11- 16, 19-22, 24, 25, 28 IPR2020-01478 Patent 8,784,398 B2 115 24, 25, 28 1-5, 7, 8, 11, 16, 19-22, 24, 25 103(a) Benning, Karami ’626, Stupperich 6, 26, 27, 29, 30 103(a) Karami ’772, Benning, Miyamoto ’499 6, 26, 27, 29, 30 103(a) Benning, Karami ’626, Miyamoto ’499 6, 26, 27, 29, 30 6, 26, 27 103(a) Benning, Karami ’626, Stupperich, Miyamoto ’499 9, 17 103(a) Karami ’772, Benning, Jacobs 9, 17 103(a) Benning, Karami ’626, Jacobs 9, 17 8, 10, 18 103(a) Karami ’772, Benning, Anderson 8, 10, 18 103(a) Benning, Karami ’626, Anderson 8, 10, 18 23 103(a) Karami ’772, Benning, Fernfors 23 103(a) Benning, Karami ’626, Fernfors 23 23 103(a) Benning, Karami ’626, Stupperich, Fernfors Overall Outcome 1-30 IPR2020-01478 Patent 8,784,398 B2 116 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that claims 1-30 of U.S. Patent No. 8,784,398 B2 have been shown, by a preponderance of the evidence, to be unpatentable; and FURTHER ORDERED that, because this is a Final Written Decision, the parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. FOR PETITIONER: Eagle H. Robinson Michael J. Pohl Jeremy B. Albright NORTON ROSE FULBRIGHT US LLP eagle.robinson@nortonrosefulbright.com michael.pohl@nortonrosefulbright.com jeremy.albright@nortonrosefulbright.com FOR PATENT OWNER: Joshua L. Goldberg Kathleen A. Daley Justin E. Loffredo FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP joshua.goldberg@finnegan.com kathleen.daley@finnegan.com justin.loffredo@finnegan.com