Jodi Schwendimann

Patent Trials and Appeals Board

Sep 10, 2021

IPR2020-00634 (P.T.A.B. Sep. 10, 2021)

Trials@uspto.gov Paper 39
571-272-7822 September 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NEENAH, INC.,
Petitioner,
v.
JODI A. SCHWENDIMANN,
Patent Owner.

IPR2020-00634
Patent 7,749,581 B2

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

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

Denying in Part, Dismissing in Part
Patent Owner’s Motion to Strike

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I. INTRODUCTION
Neenah, Inc. (“Petitioner”)1 filed a Petition (Paper 2, “Pet.”)
requesting inter partes review of claims 1–6, 8–21, and 24–31 of U.S. Patent
No. 7,749,581 B2 (Ex. 1003, “the ’581 patent”). Pet. 1. Jodi A.
Schwendimann (“Patent Owner”) filed a Preliminary Response (Paper 11,
“Prelim. Resp.”).
Upon consideration of the Petition, Preliminary Response, and the
parties’ evidence, we determined that Petitioner had demonstrated a
reasonable likelihood that it would prevail with respect to at least one claim
of the ’581 patent. Paper 13 (“Decision on Institution” or “DI”). Thus,
pursuant to the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138
S. Ct. 1348, 1355 (2018), and the USPTO Guidance,2 we instituted review
of all challenged claims on all challenged grounds. Id.
Following institution of trial, Patent Owner filed a Patent Owner
Response (Paper 17, “PO Resp.”), Petitioner filed a Reply (Paper 22,
“Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 27, “Sur-reply”).
In support of their respective positions, Petitioner relies on the testimony of
Dr. Robert A. Wanat (Ex. 1020, “Wanat Decl.”; Ex. 1062, “Wanat Reply
Decl.”), and Patent Owner relies on the testimony of Dr. Scott Williams
(Ex. 2001, “Williams Decl.”) and the Declaration of Dr. Christopher Ellison
(Ex. 2011, “Ellison Decl.”).

1 Petitioner identifies Neenah, Inc., Avery Products Corporation, and Stahls’
Inc. as real parties-in-interest. Pet. 1.
2 In accordance with USPTO Guidance, “if the PTAB institutes a trial, the
PTAB will institute on all challenges raised in the petition.” See USPTO,
Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018)
(available at https://www.uspto.gov/patents-application-process/patent-trial-
and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).
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We held an oral hearing on July 12, 2021, and a transcript of the
hearing is included in the record (Paper 38, “Tr.”).
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 discussed below, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–6, 8–21, and 24–31 of the
’581 patent are unpatentable. We also deny in part and dismiss in part
Patent Owner’s Motion to Strike (Paper 29, “Motion”).
A. Related Proceedings
Petitioner identifies the pending lawsuit between the parties, styled
Jodi A. Schwendimann v. Neenah, Inc., Case No. 1:19-cv-00361-LPS (D.
Del.) (the “Delaware Lawsuit”), as a related proceeding in which Patent
Owner asserts the ’581 patent. Pet. 1; see also Paper 12, 2 (Patent Owner’s
Mandatory Notices). The ’581 patent is the subject of separate IPRs:
Stahls’ Inc. v. Jodi A. Schwendimann, IPR2020-00644 and Stahls’ Inc. v.
Jodi A. Schwendimann, IPR2020-00645. Paper 12, 2; see Paper 12, 2.
Petitioner also filed petitions against U.S. Patent No. RE41,623, U.S.
Patent No. 7,754,042, U.S. Patent No. 7,771,554, and U.S. Patent No.
7,766,475. Pet. 1–2; Paper 12, 2. We instituted inter partes review in
IPR2020-00644 but declined to institute IPR2020-00645. See IPR2020-
00644, Paper 10; IPR2020-00645, Paper 10. We also instituted inter partes
review of RE41,623, U.S. Patent No. 7,754,042, and U.S. Patent No.
7,766,475 but declined to institute inter partes review of U.S. Patent No.
7,771,554. See IPR2020-00628, Paper 10; IPR2020-00641, Paper 11;
IPR2020-00629, Paper 10; IPR2020-00635, Paper 10; IPR2020-00915,
Paper 9; IPR2020-00636, Paper 10; IPR2020-01121, Paper 8.
The ’581 patent is also asserted in the following pending litigations:
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Jodi A. Schwendimann v. Stahls’, Inc., Case No. 2:19-cv-10525-
LVP-MKM (E.D. Mich.); and
Jodi A. Schwendimann v. Siser North America, Inc., Case No.
1:19-cv-00362-LPS (D. Del.)
Pet. 2; Paper 12, 2. The ’581 patent was asserted in Jodi A. Schwendimann
v. Arkwright Advanced Coating, Inc.et al., Case No. 0:11-cv-00820-JRT-HB
(D. Minn.) (the “Arkwright Lawsuit”). Pet. 2, 10.
B. The ’581 Patent (Ex. 1003)
The ’581 patent, titled “Image Transfer on a Colored Base,” issued on
July 6, 2010. Ex. 1003, codes (45), (54). The ’581 patent is directed to
“transferring an image onto a colored base and to an article comprising a
dark base and an image with a light background on the base.” Id. at 1:17–
19.
The ’581 patent explains that conventional image transfer processes
use two-steps: applying a white or light background polymeric material to a
colored base with heat and then using another sheet to impart an image to
the substantially white polymeric material. Id. at 3:37–50. According to the
’581 patent, the conventional two-step process required careful alignment of
an image with the white background, was “exceedingly time-consuming,”
and produced significant waste of base and image transfer materials. Id.
at 3:51–57.
An exemplary image transfer process of the ’581 patent is depicted
below in Figure 1.
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Figure 1 “illustrates a schematic view of one process of image transfer onto
a colored product.” Id. at 2:31–32. Figure 1 depicts colored base material
102 (e.g., a colored textile), image 104 including substantially white
background 106, and indicia 108 disposed on the substantially white
background 106. Id. at 3:10–21. The ’581 patent states that image 104 is
applied to colored base material 102 with heat to make completed article 110
in a single step. Id.
An embodiment of an image transfer device is depicted below in
Figure 5.
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Figure 5 illustrates “a cross-sectional view of one other embodiment of the
image transfer device of the present invention.” Id. at 2:41–42. The ’581
patent describes “an image transfer sheet 500 that is comprised of a substrate
layer 502 [and] a release layer 504 comprising a silicone coating 505 and a
white layer 506.” Id. at 8:44–47. Figure 5 also depicts white layer 506 and
receiving layer 508 as part of peel layer 520. See id. at 8:54–57, 9:1–3.
The ’581 patent describes the white layer as imparting “a white
background on a dark substrate.” Id. at 3:35–36. According to one
embodiment, “the white layer 506 of the image transfer sheet 500 is
impregnated with titanium oxide or other white or luminescent pigment.”3
Id. at 8:51–54. In another embodiment, “the white layer 506 and a receiving
layer 508, contacting the white layer 506 are impregnated with titanium
oxide or other white or luminescent pigment.” Id. at 8:54–57. According to
the ’581 patent:
[f]or some embodiments, a white layer 506, 606, such as is
shown in FIGS. 5-6, includes ethylene/methacrylic acid
(E/MAA), with an acid content of 0-30%, and a melt index from
10 to 3500 with a melt index range of 20 to 2300 for some
embodiments. A low density polyethylene with a melt index
higher than 200 is also suitable for use. Other embodiments of

3 “Titanium oxide,” “titanium dioxide,” and “TiO2” are synonymous, and
used interchangeably in the prior art, the parties’ papers, and in this
Decision.
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the white layer include ethylene vinyl acetate copolymer resin,
EVA, with vinyl acetate percentages up to 50%/EVA are
modifiable with an additive such as DuPont Elvax, manufactured
by DuPont de Nemours of Wilmington, Del. These resins have
a Vicat softening point of about 40 degrees to 220 degrees C.,
with a range of 40 degrees to 149 degrees C. usable for some
embodiments.
Id. at 6:6–18.
Referring once again to the embodiment of Figure 5, the ’581 patent
describes an image transfer process. Specifically, the ’581 patent discloses
that “an image is imparted to the polymer component of the peel layer 520
utilizing a top coat image-imparting material such as ink or toner.” Id.
at 9:1–3. The ’581 patent explains that “[t]he image transfer sheet 500 is
applied to the colored base material so that the polymeric component of the
peel layer 520 contacts the colored base” and a source of heat is applied to
the image transfer sheet 500. Id. at 9:11–19. Thus, “[t]he peel layer 520
transfers the image” and “[t]he application of heat to the transfer sheet 500
results in ink or other image-imparting media within the polymeric
component of the peel layer being changed in form to particles encapsulated
by the polymeric substrate.” Id. at 9:19–25. As a result, “[t]he encapsulated
ink particles or encapsulated toner particles and encapsulated titanium oxide
particles are then transferred to the colored base in a mirror image to the ink
image or toner image on the polymeric component of the peel layer 520.”
Id. at 9:28–32. The ’581 patent further explains:
Because the polymeric component of the peel layer 520 generally
has a high melting point, the application of heat, such as from an
iron, does not result in melting of this layer or in a significant
change in viscosity of the overall peel layer 520. The change in
viscosity is confined to the polymeric component that actually
contacts the ink or toner or is immediately adjacent to the ink or
toner. As a consequence, a mixture of the polymeric component,
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titanium oxide or other white or luminescent pigment, and ink or
toner is transferred to the colored base as an encapsulate whereby
the polymeric component encapsulates the ink or toner or
titanium oxide or other white pigment. It is believed that the
image transfer sheet, with the white titanium oxide or other white
or luminescent pigment background is uniquely capable of both
cold peel and hot peel with a very good performance for both
types of peels.
Id. at 9:33–48.
C. Illustrative Claims
Petitioner challenges claims 1–6, 8–21, and 24–31 of the ’581 patent.
Of the challenged claims, claims 1, 17, 24, 27, 30, and 31 are independent.
Claims 1 and 17 are illustrative and are reproduced below.
1. An image transfer article, comprising:
an image-imparting member, including at least one surface
configured to receive and carry indicia to be transferred and
including at least one portion comprising a concentration or
configuration of pigment providing an opaque background for
received indicia, the opaque background having a substantially
non-transparent effect allowing the received indicia to be visible
when transferred to a dark-colored base; and
a removable substrate disposed adjacent, and underlaying,
the image-imparting member, the removable substrate including
a coating comprising at least one of silicone, clay, resin,
fluorocarbon, urethane, or an acrylic base polymer.
Ex. 1003, 11:35–48.
17. An image transfer article, comprising:
an indicia-receptive layer including at least one surface
configured to receive and carry transferable indicia;
a removable substrate including a release coating; and
a white layer disposed between the indicia-receptive layer and
the release coating, the white layer including a white or
luminescent pigment providing a substantially opaque, non-
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transparent background for received indicia and concurrently
transferable with received indicia upon, and following,
application of heat.
Id. at 12:41–51.
D. Prior Art and Asserted Grounds of Unpatentability
We instituted trial to determine whether claims 1–6, 8–21, and 24–31
of the ’581 patent would have been obvious in view of the following
asserted grounds of unpatentability:
Claims Challenged 35 U.S.C. §4 References/Basis
1–6, 8–21, 24–26 103 Oez-US,5 Meyer6
18, 27–31 103 Oez-US, Meyer, Kronzer7
1–6, 8–21, 24–31 103 Oez-PCT,8 Oez-US
1–6, 8–21, 24–31 103 Kronzer, Oez-US
DI 8, 39 (instituting review on all asserted grounds).

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’581 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
5 Oez, US 5,665,476, issued September 9, 1997 (Ex. 1013, “Oez-US”).
6 Meyer et al., US 3,359,127, issued December 19, 1967 (Ex. 1019,
“Meyer”).
7 Kronzer, US 5,798,179, issued August 25, 1998 (Ex. 1018, “Kronzer”). In
its Grounds of Unpatentability, Petitioner identifies DeVries, as opposed to
Kronzer, as applicable for its challenge to claims 18 and 27–31. See Pet. 4.
However, in setting forth its arguments regarding claims 18 and 27–31,
Petitioner relies on Kronzer. See id. at 44–51. Therefore, we understand
Petitioner to advance the combination of Oez-US, Meyer, and Kronzer.
8 Oez, WO 97/41489, published November 6, 1997 (Ex. 1016, “Oez-PCT”).
References to Oez-PCT will be to Exhibit 1016, which is an English-
language translation of Oez-PCT with line numbers. Pet. 4.
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II. ANALYSIS
A. Legal Standards
To prevail in its challenge, a Petitioner must demonstrate by a
preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d) (2019). A claim is unpatentable under
35 U.S.C. § 103(a) if “the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art” to which said subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) objective evidence of nonobviousness.9 Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
In the Decision on Institution, we determined that a person of ordinary
skill in the art at the time of the invention of the ’581 patent
would have at least a Bachelor’s degree in Chemistry, Chemical
Engineering, Imaging Technology or Material Science with at
least one year of experience in coating technologies and imaging
technologies, or at least five years of work experience in the field
of coating technologies and imaging technologies.
DI 11–12 (adopting Patent Owner’s proposed definition); see Prelim.
Resp. 12.

9 The parties have not asserted or otherwise directed our attention to any
objective evidence of nonobviousness.
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For purposes of this Final Written Decision, we maintain our
determination from the Decision on Institution because neither party
disputes that determination and because that level of skill is consistent with
the record. See PO Resp. 17; see generally Pet. Reply.
C. Claim Construction
In an inter partes review filed on or after November 13, 2018, we
construe claims “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) (2019); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc). Furthermore, we expressly construe the claims only to the
extent necessary to resolve the parties’ dispute. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
2017) (“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
In the Decision on Institution, we construed the term “white layer” to
mean “a layer comprising a concentration or configuration of pigment
providing a white background for received indicia and which further
comprises a polymer that melts and mixes with another layer or layers
during application.” DI 13–14. Our construction was based on the parties’
agreement that the claims of the ’581 patent require a white layer that melts
and mixes with another layer and the the claim construction the district court
in the Arkwright Lawsuit adopted. Ex. 1022, 17 (Arkwright Markman
Order”). The district court in the Delaware Lawsuit also adopted a similar
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construction of “white layer.” See Ex. 1066, 6 (Delaware Markman Order).
In the Decision on Institution, we rejected Patent Owner’s attempt to
broaden the interpretation adopted in the Arkwright Lawsuit to include “a
polymer that softens or melts and mixes to some degree with another layer.”
Id. (Patent Owner’s modifications indicated with underlining); Prelim. Resp.
13.
Patent Owner now requests that we adopt a construction of “white
layer” that includes “a layer comprising a concentration or configuration of
pigment providing a white background for received indicia and which
further comprises a polymer that softens or melts, such that it mixes with
another layer or layers during application, without the resulting composition
needing to be substantially uniform.” PO Resp. 18 (Patent Owner’s
modifications indicated with underlining).
Petitioner contends we should again reject Patent Owner’s attempt to
rewrite the construction of “white layer,” because it is “completely at odds”
with the constructions adopted by the district court in both the Arkwright
and the Delaware Lawsuits, which requires actual melting, not just
softening, and construes “mix” to have its plain and ordinary meaning.
Reply 2 (citing Ex. 1066, 6).
We agree with Petitioner and decline to adopt Patent Owner’s newly
offered construction for the same reasons expressed in our Decision on
Institution and because that construction departs from the construction in the
Arkwright Lawsuit and the Delaware Lawsuit. DI 13–14; Ex. 1022, 17;
Ex. 1066, 6. We further note that Patent Owner states that “the parties’
disputes with respect to the construction of the ‘white layer’ make no
difference to the Board’s resolution of this matter.” PO Resp. 19; Tr. 13:24–
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14:3, 53:9–54:13. Accordingly, we maintain our construction of the term
“white layer.”10
D. Obviousness over Kronzer and Oez-US (claims 1–6, 8–21, 24–31)
Petitioner contends claims 1–6, 8–21, and 24–31 are unpatentable as
obvious over Kronzer and Oez-US. Pet. 66. Petitioner directs us to portions
of Kronzer and Oez-US that purportedly disclose all the limitations in the
challenged claims. Id. at 66–81. Petitioner also relies on the declaration
testimony of Dr. Wanat to support its arguments. See id.; Pet. Reply 2–14.
1. Overview of Asserted Prior Art
a) Oez-US (Ex. 1013)
Oez-US “relates to a transfer paper and to a process for transferring
photocopies to textiles, such as, in particular, T-shirts.” Ex. 1013, 1:6–8.
Oez-US describes “a transfer paper which has, as the coating of plastic, at
least: a polyurethane which can be cross-linked under the action of heat by a
melamine-formaldehyde resin esterified with methanol, mixed with an
acrylic acid ester/acrylic acid copolymer, the latter being a thickener.” Id.
at 1:37–42. Oez-US states that it is of “essential importance that a white
pigment (TiO2) can be incorporated into the mixture so that the prior white
coating of dark (black) textiles hitherto necessary can now be dispensed with
and the print can be transferred immediately with a single film.” Id. at 1:51–
55.

10 Although the term “white layer” is not expressly recited in each claim of
the ’581 patent, both parties agree that all claims of the ’581 patent require a
white layer that melts and mixes. See, e.g., Pet. 21–24; Prelim. Resp. 13–14,
20–24, 28–29, 32–36, 37–38 (treating “white layer” and “opaque
background” as synonymous).
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Oez-US discloses that the coating “can be peeled off from the paper as
a film and can be laid as a positive on the textile substrate to be ironed on
and to bond with the textile fibers.” Id. at 1:47–49. Oez-US describes
ironing the film onto a textile “at elevated temperatures.” Id. at 3:56–58.
b) Kronzer (Ex. 1018)
Kronzer relates to a printable heat transfer paper having cold release
properties to permit the removal of the carrier or base sheet after the transfer
sheet has cooled. Ex. 1018, Abstract, 2:25–30. According to Kronzer, the
heat transfer paper includes a flexible first layer, or base sheet, that has
“sufficient strength for handling, coating, sheeting, and other operations
associated with its manufacture, and for removal after transferring an
image.” Id. at 4:15–26. The heat transfer paper includes a second layer, or
“release layer,” disposed on the base sheet and composed of a thermoplastic
polymer having essentially no tack at transfer temperatures. Id. at 5:23–45.
A third layer, which overlays the second layer, includes a thermoplastic
polymer with a melting point from about 65° C to about 180° C. Id. at 5:46–
48. According to Kronzer, “[t]he third layer functions as a transfer coating
to improve the adhesion of subsequent layers in order to prevent premature
delamination of the heat transfer material.” Id. at 5:48–51. A fourth layer
overlays the third layer to provide a layer on which an image is placed by an
ink jet printer. Id. at 7:3–6. The printable heat transfer material of Kronzer
may further include a fifth layer, including a film-forming binder and
located between the second and third layers, to improve adhesion and
prevent delamination. Id. at 8:31–46. Additionally, Kronzer states that “any
of the foregoing film layers may contain other materials, such as processing
aids, release agents, pigments, deglossing agents, antifoam agents, and the
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like,” because “use of these and similar materials is well known to those
having ordinary skill in the art.” Id. at 8:47–51.
2. Analysis of Claim 1
Petitioner contends that the combination of Kronzer and Oez-US
suggests the image transfer article of claim 1. Pet. 67–72. Petitioner argues
that Kronzer describes “‘a heat transfer paper’ (i.e., image transfer article)
‘for transferring designs, messages, and illustrations’ (i.e., images) ‘on
articles of clothing, such as T-shirts.’” Id. at 67–68 (citing Ex. 1018, 1:5–11,
9:1–18:6; Ex. 1020 ¶ 222). Petitioner asserts that “Kronzer teaches an
image-imparting member/indicia-receptive layer . . . configured to receive
and carry indicia to be transferred.” Id. at 68 (Ex. 1020 ¶ 223). Specifically,
Petitioner alleges that Kronzer describes “a fourth layer may overlay the
third layer in order to provide an ink jet printable heat transfer material [that]
typically includes a film forming binder and a powdered thermoplastic
polymer.” Id. (quoting Ex. 1018, 2:65–67, 7:3–9, 4:15–16).
Petitioner further argues that “[a]lthough Kronzer does not expressly
disclose a pigment to provide an opaque background to allow indicia to be
viewed when transferred to a dark fabric, this feature was extremely well-
known as shown by Oez-US.” Id. In particular, Petitioner explains that
“Oez-US expressly discloses a white layer to provide an opaque/non-
transparent background for better image quality on dark/black fabrics.” Id.
(citing Ex. 1013, 1:26–31). Petitioner contends that a person of ordinary
skill in the art would have had reason to combine the teachings of Kronzer
and Oez-US “to include the white pigment/layer of Oez-US into at least the
third layer of Kronzer for the reasons explicitly stated in Oez-US, i.e., to
provide a contrasting opaque background for image transfers to dark/black
fabrics.” Id. at 69 (citing Ex. 1013, 1:26–55; Ex. 1020 ¶ 224).
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Petitioner additionally asserts that both “Kronzer and Oez-US further
teach the ‘melt and mix’ requirement.” Id. at 71. Petitioner contends that
Kronzer includes layers of thermoplastic polymers that melt between 65 °C
and 180 °C. Id. (citing Ex. 1018, 2:35–67; Ex. 1020 ¶ 257). According to
Petitioner, a person skilled in the art would have understood that the
Kronzer/Oez-US transfer sheet would have been heated above 180 °C during
application and, therefore, that the white layer and image-imparting layers
“would necessarily melt and mix.” Id. at 71–72 (Ex. 1018, 2:35–67;
Ex. 1020 ¶¶ 256–258).
Lastly, Petitioner asserts that Kronzer describes the removable
substrate adjacent to and underlaying the image-imparting member that
includes a coating as claimed by the ’581 patent. In particular, Petitioner
explains that “Kronzer teaches ‘[t]he printable heat transfer material includes
a flexible first layer [that] serves as a base sheet or backing [and] typically
will be a film or a cellulosic nonwoven web.’” Id. at 69 (citing Ex. 1018,
4:15–20, 4:27–31). According to Petitioner, Kronzer also explains that the
backing sheet, which can be easily removed after the image has been
transferred to the fabric, may include an acrylic base polymer or clay. Id.
at 69–70 (citing Ex. 1018, 4:6–14, 5:23–45, 9:49–50, 12:12–43, Tables VI–
XIV).
Patent Owner does not challenge many of Petitioner’s allegations
regarding the teachings of Kronzer and Oez-US. See generally PO Resp.
Patent Owner contends that including the Oez-US white layer for Kronzer’s
third layer would not result in “mixing and melting” as the claims require.
PO Resp. 31. Patent Owner further contends that Petitioner has not
demonstrated a reason to combine the Oez-US pigment with Kronzer’s
structure or that such a combination would yield a reasonable expectation of
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success. Id. at 36. Additionally, Patent Owner affirmatively asserts that
because of the differences between Kronzer and Oez-US, a person of
ordinary skill in the art would not have had a reason to combine their
teachings to achieve the invention claimed by the ’581 patent. Id. at 39. We
have reviewed the information submitted by Petitioner and determine
Petitioner’s arguments and evidence are sufficient to show, by a
preponderance of the evidence, that each limitation of claim 1 is suggested
by the combination of Kronzer and Oez-US, except those disputed by Patent
Owner. We address Patent Owner’s arguments below.
a) Whether the combination of Kronzer and Oez-US discloses a
“white layer that melts and mixes”
Patent Owner first contends that it is unclear whether Petitioner
alleges that a person of ordinary skill in the art “would borrow (1) the entire,
cross-linking, white layer from Oez; or (2) just the white pigment from
Oez.” PO Resp. 31. Patent Owner asserts that “[b]orrowing the entire white
layer from Oez would not render obvious any asserted claim because all of
the Challenged Claims require a ‘white layer’ that contains at least one
polymer that ‘melts and mixes with another layer or layer[s]’ during
application.” Id. at 32. According to Patent Owner, “[t]his is because Oez
uses a particular chemical reaction, which involves cross-linking
polyurethanes through the use of a melamine formaldehyde . . . which results
in a non-melting layer.” Id. Patent Owner reasons that “Oez-US thus
teaches away from a transfer sheet in which the ‘white layer’ mixes and
melts with another layer [as] the purpose of Oez-US is to provide a coating
that does not melt and mix.” Id. at 35. Patent Owner further alleges
“[e]very expert that has addressed the issue has testified that, because the
polyurethane in Oez is cross-linked under heat and pressure . . . the coating
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with white pigment . . . does not melt and cannot mix with any other
components or layers.” Id. at 33 (citing Ex. 2007, 112 (Dr. Macosko’s
testimony from the Arkwright Lawsuit); Ex. 1020 ¶¶ 53, 118 (Dr. Wanat’s
testimony that cross-linking is an “important factor that can prevent mixing”
and that certain conditions such as cross-linking can prevent mixing). Patent
Owner further contends that Dr. Wanat’s testimony that the Oez-US white
layer would melt and mix is unsupported and conclusory. Id. at 33–35.
Petitioner replies that its allegations are based upon including the
white pigment in Kronzer’s transfer sheet and not Oez-US’s entire white
layer. Therefore, Petitioner urges that “[Patent Owner’s] assertions about
substituting Oez’[s] entire layer into Kronzer’s sheet are inapposite.”
Pet. Reply 4.
As we explained in our Decision on Institution, Petitioner alleges that
Kronzer describes a white layer that melts and mixes with other layers, when
its polymeric third layer is modified to include the white pigment of Oez-
US—not the entire cross-linked white layer of Oez-US. DI 33. Petitioner
reaffirms our understanding in its Reply, stating that “the Petition
demonstrates a [person of ordinary skill in the art] would have found it
obvious, based on Oez-US’s teachings, to include a white pigment in
Kronzer’s transfer sheet.” Pet. Reply 3–4 (emphasis in original) (describing
Patent Owner’s argument as a red herring). Therefore, Patent Owner’s
arguments are directed to a position that Petitioner does not advance and are
unavailing.
Petitioner, instead, argues that although Kronzer does not expressly
teach using a white pigment in its image transfer sheet, Kronzer expressly
discloses that pigments may be used in any of its film layers. Pet. Reply 3;
Ex. 1018, 8:46–50. Thus, the only teaching Oez-US provides is the specific
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color of the pigment, that is, a white pigment or TiO2 to provide a white
background for image transfers to dark fabrics and textiles. Pet. 68–69;
Pet. Reply 3; Ex. 1013, 1:46–54. Petitioner explains that because contacting
layers of Kronzer’s polymers will necessarily mix together when heated to a
temperature of 180° C, “the application of heat [to] the third/white layer and
fourth/image imparting layer of Kronzer/Oez-US’s transfer sheet would
necessarily melt and mix,” the layers. Pet. 71–72 (citing Ex. 1018, 2:35–67;
Ex. 1020 ¶¶ 256–258). Dr. Wanat testifies that because of the similarities
between the third and fourth layers, the polymers have “some degree of
compatibility and will mix together when they are melted.” Ex. 1020 ¶ 258
(citing Ex. 1018, 6:52–55, 7:30–32). We credit Dr. Wanat’s unrebutted
testimony. Accordingly, the preponderance of the evidence supports
Petitioner’s assertion that the ordinarily skilled artisan would have
understood that the combination of Kronzer and Oez-US would have
resulted in a white layer that mixes and melts with another layer.
b) Whether Petitioner has established a reason to combine
Kronzer and Oez-US
Patent Owner argues that Petitioner has failed to meet its burden of
establishing that a person skilled in the art would have been motivated to
combine Kronzer and Oez-US and that each of Petitioner’s three reasons to
combine must fail. PO Resp. 36–38. Patent Owner contends that
Petitioner’s first reason, i.e., that each reference teaches “printable multi-
layered transfer structures having a removable substrate, release coating, and
image-imparting layer,” is incorrect. Id. at 36. Patent Owner explains that
“every example and every claim is Oez teaches a single coating of plastic,
not a multi-layered transfer with a distinct ‘image-imparting layer.’” Id.
at 36–37 (citing Ex. 1013 generally). Patent Owner additionally argues that
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mere identity of subject matter between two references is insufficient to
establish that the ordinarily skilled artisan would have had a reason to
combine the teachings of those references. Id. at 37.
Petitioner asserts that Patent Owner’s allegation regarding Oez-US
being limited to a single layer of plastic is “demonstrably false.”
Pet. Reply 4. Petitioner explains that “Oez-US discloses and claims a multi-
layered transfer sheet” and that “[Patent Owner’s] expert admitted as much
during his deposition.” Id. at 5 (citing Ex. 1013, 2:36–44; Ex. 1063, 295:8–
296:18).
We agree with Petitioner that Oez-US is not limited to a single layer
coating and instead encompasses multi-layered designs. Here, Petitioner
shows that that Oez-US, like Kronzer, describes multi-layered transfer
structures. See Ex. 1013, 2:36–44 (describing a polymer layer between the
paper and the polyurethane layer), claim 12 (same); see also Ex. 1063,
295:8–296:18 (Dr. Ellison’s testimony describing Oez-US as having a
second, optional layer).
Furthermore, although we agree with Patent Owner that identity of
subject matter is, alone, is insufficient to demonstrate that the ordinarily
skilled artisan would have had reason to combine the teachings of Kronzer
and Oez-US, Petitioner does not rely on identity of subject matter alone, as
discussed in more detail below. Nevertheless, we consider Petitioner’s
discussion relevant for purposes of demonstrating the references are
analogous art, which is part of the obviousness analysis. Wyers v. Master
Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441
F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a
person of ordinary skill in the art would have sought to combine the
references “picks up where the analogous art test leaves off”).
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Patent Owner next challenges Petitioner’s argument that Kronzer and
Oez-US “share the common goal of improving image transfer
characteristics” because “Kronzer and Oez-US actually solve fundamentally
different problems using fundamentally different technologies.” PO Resp.
37. Patent Owner explains that Kronzer “solves the problem of creating an
image transfer that has ‘cold release properties’” where, in contrast, Oez-US
“solves the problem of printing in ‘positive,’ incorporating white pigment
into ‘a coating of plastic,’ and the use of ‘black textiles.’” Id. at 37–38.
Therefore, Patent Owner reasons that “the respective goals of the two
inventions actually demonstrates why a [person of ordinary skill in the art]
would not be motivated to combine the references.” Id. at 38. Similarly,
Patent Owner contends that the fact that “Oez-US teaches that its transfer
sheets ‘can be used particularly advantageously on dark (black) fabrics’” is
not a reason to combine Oez-US with Kronzer. Id. (quoting Pet. 67 and
citing Pet. 68–69). According to Patent Owner, “Petitioner does not argue
that there is something lacking in Oez-US that would be improved by
combining it with Kronzer or even that the combination of the two
references would result in some new desirable feature.” Id. As a result,
Patent Owner argues that Petitioner’s combination of Kronzer and Oez-US
is improper hindsight. Id.
Petitioner maintains that “Kronzer and Oez-US are both directed to
improving the image transfer quality of multi-layer transfer sheets.”
Pet. Reply 5 (citing Pet. 66–67; Ex. 1020 ¶¶ 220–221; Ex. 1062 ¶¶ 11–12).
Citing our Decision on Institution, Petitioner explains that “Kronzer does not
limit its invention to light or dark textiles . . . and . . . [that] a [person of
ordinary skill in the art] would have understood from Oez-US’s teachings
that a ‘positive’ image would be printed on top of Kronzer’s layer in
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conjunction with adding white pigment to provide an opaque background for
the transferred image.” Id. (citing DI 34–35; Ex. 1020 ¶¶ 224–225;
Ex. 1062 ¶¶ 7–14). Petitioner further explains that “[t]hese grounds do not
propose to modify or improve anything in Oez-US. Rather, Petitioner
demonstrated that it would be obvious to improve Kronzer by adding a
white pigment, as taught by Oez-US.” Pet. Reply 6.
In weighing the evidence and arguments before us, we find Petitioner
advances sufficient reasoning with rational underpinnings to explain why
one of ordinary skill in the art would have had reason to combine Kronzer
and Oez-US. Pet. 66–67. Petitioner relies on Oez-US’s express teaching
that including a white pigment “ensures a greater brilliance of the image
. . . especially for printing black textiles.” Ex. 1013, 1:29–31. Accordingly,
Petitioner reasons that a person of ordinary skill in the art would have
included the white pigment of Oez-US in the polymer layer of Kronzer “to
provide a contrasting opaque background for image transfers to dark/black
fabrics.” Pet. 69 (citing Ex. 1013, 1:26–31; Ex. 1020 ¶ 224).
Patent Owner’s arguments do not address Petitioner’s primary
argument, as Patent Owner focuses on alleged differences in how Kronzer
and Oez-US solve allegedly different problems, whereas Petitioner focuses
on improving the quality of image transfer in general, which is the common
result in both Kronzer and Oez-US. Thus, we disagree that Kronzer and
Oez-US have “divergent goals” such that a person of ordinary skill in the art
would not have had reason to take advantage of the benefits described in
Oez-US. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”).
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Patent Owner’s additional argument—that Petitioner does not allege
that something is missing from Oez-US or that the combination with
Kronzer improves Oez-US—once again misses the main point of
Petitioner’s arguments. Petitioner’s arguments are based on Oez-US
supplying something beneficial that is missing from Kronzer, and therefore
improving the system of Kronzer, not the reverse. We thus disagree that
Petitioner has not indicated why a person of ordinary skill in the art would
have had reason to combine Oez-US and Kronzer, and Petitioner’s reliance
on express teachings from Oez-US and Kronzer undermines Patent Owner’s
argument that Petitioner improperly relied on hindsight.
c) Whether a person of ordinary skill in the art would have had
reason to combine Kronzer and Oez-US to yield the invention
described in the ’581 patent claims
In addition to arguing Petitioner fails to establish that a person skilled
in the art would have been motivated to combine Kronzer and Oez-US,
Patent Owner affirmatively argues the evidence of record shows a person of
ordinary skill in the art would not have been motivated to combine Kronzer
and Oez-US. PO Resp. 39. Specifically, Patent Owner contends that
[t]his evidence includes: (1) Kronzer does not even address dark
t-shirt transfer; (2) Kronzer and Oez rely upon different chemical
reactions (heat alone v. heat plus a chemical reaction);
(3) Kronzer and Oez employ different structures (multi-layered
v. single layered); (4) Kronzer and Oez solve different problems
(cold peel v. dark fabric transfer); Kronzer and Oez use different
technologies to solve those problems (specific formulations v. a
cross-linking white layer and a peel-first method); and
(5) Kronzer and Oez use opposite methods of printing (mirror v.
positive) and opposite methods of applications (image down/peel
later v. image up/peel first).
Id. Patent Owner additionally alleges that because Petitioner incorporates
only the white pigment from Oez-US, “while wholly ignoring the impact of
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other functions of the white pigment,” the person of ordinary skill in the art
would not have had a reasonable expectation of success. Id. at 39–40. We
address each of Patent Owner’s arguments below.
(1) whether a person of ordinary skill in the art would not have
had reason to combine where Kronzer does not solve or
address problems associated with dark fabrics
Patent Owner argues that “a [person of ordinary skill in the art] would
not be motivated to combine Kronzer with Oez-US to create the inventions
of the ‘581 Patent is because Kronzer does not solve – or even acknowledge
– the problem of transferring an image onto dark fabric.” PO Resp. 40. For
example, Patent Owner contends that Kronzer does not acknowledge that
conventional, transparent transfers result in an image that has insufficient
brilliance on dark fabric, and that none of Kronzer’s examples utilize a
pigment at all, let alone one used to form an opaque background for dark
fabrics. Id. at 41 (citing Ex. 1018 generally; Ex. 2011 ¶ 137).
Petitioner “asserts that Oez-US—not Kronzer—discloses the problem
of transferring images onto dark fabrics and discloses the solution to that
problem; i.e., including a white/opaque pigment to provide a white/opaque
background onto which a positive image can be printed,” the same issue the
’581 patent purports to solve. Pet. Reply 6–7. Petitioner further explains
that Kronzer is not limited to any fabric color and a person skilled in the art
“would have been motivated to improve Kronzer by including a white
pigment as taught by Oez-US.” Id. at 7.
Contrary to Patent Owner’s assertions, Kronzer need not solve, much
less acknowledge, the problem of dark image transfer. The test for
obviousness is not whether any one or all of the references expressly
suggests the claimed invention, but whether the claimed subject matter
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would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). One of ordinary skill can use his or her ordinary skill,
creativity, and common sense to make the necessary adjustments and further
modifications to result in a properly functioning article. See KSR, 550 U.S.
at 418 (“a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ”). And, where “a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” See id. at 417.
Here, Kronzer teaches each element of claim 1 of the ’581 patent—
including a pigment in any one of its polymer layers. Pet. 66–72; Ex. 1018,
8:46–51. Kronzer, however, is silent as to the color of the pigment and the
color of the substrate used. Oez-US teaches use of a white, opaque pigment
and explains that a white pigment “ensures a greater brilliance of the image
. . . especially for printing on black textiles.” Ex. 1013, 1:28–29. The record
evidence discussed above supports a finding that a person of ordinary skill in
the art would have recognized that the Oez-US white pigment would
improve the transfer sheet disclosed in Kronzer, and would have had a
reason to combine the teachings of Kronzer and Oez-US. KSR, 550 U.S.
at 417.
(2) whether a person of ordinary skill in the art would not have
had reason to combine Oez-US’s white pigment alone and
whether a reasonable expectation of success exists
Patent Owner argues that a person of ordinary skill in the art would
not have had reason to use only the white pigment from Oez-US because
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Oez-US teaches away from a white layer that does not cross-link.
PO Resp. 42. According to Patent Owner, “[t]he cross-linking reaction in
Oez is required for the white layer of Oez to function, but Petitioner simply
ignores it.” Id. Patent Owner explains that “transferring a pigment from a
reactive system to a non-reactive system raises significant technical
challenges from a chemistry and materials science perspective.” Id. at 43
(citing Ex. 2011 ¶ 141). As a result, Patent Owner explains that “a ‘drop in’
replacement for an existing ingredient that will result in the identical
finished part color,” is “extremely rare.” Id. (citing Ex. 2012, 3). Patent
Owner states “that, in the reactive system of Oez, the titanium dioxide
performs multiple functions beyond providing whiteness.” Id. at 44 (citing
Ex. 2011 ¶ 144). Patent Owner further argues that titanium dioxide is a
particulate that “would change the viscosity and flow properties of the third
layer at transfer temperatures.” Id. at 44–45 (citing Ex. 2011 ¶ 145). In
addition, “solid state characteristics of the third layer, such as modulus,
elasticity, and flexibility” would also be changed. Id. As a result, a person
of ordinary skill in the art would not have had a reasonable expectation of
success. Id. at 45. And Patent Owner contends that the numerous failures of
Kronzer’s system support its argument. Id.
Petitioner asserts that nothing in Oez-US teaches away from using
only the white pigment and “Oez-US does not suggest that using TiO2 with
thermopolymers, such as those disclosed in Kronzer, would not achieve the
same improvement to an image transfer sheet.” Pet. Reply 7–8 (citing Ex.
1062 ¶¶ 13–20). Instead, Petitioner explains that Oez-US describes using
TiO2 to improve image quality on dark substrates and “Kronzer encourages
the use of pigments in any of its polymer layers.” Id. at 8 (citing Ex. 1013,
1:46–55; Ex. 1062 ¶¶ 16–20; Ex. 2011 ¶¶ 87–91; Ex. 1018, 8:46–51).
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Petitioner asserts that a person of skill in the art would have understood “that
TiO2 would function as a white pigment—and provide a white/opaque
background—regardless of whether it was present in a cross-linked
polymer or a non-cross-linked polymer,” as Dr. Ellison admits. Id. (citing
Ex. 1063 ¶¶ 17–20; Ex. 1063, 304:8–22). Petitioner further states that
neither Patent Owner nor Dr. Ellison cite to record evidence “to support their
assertion that TiO2 somehow participates in the cross-linking reaction in
Oez-US.” Id. (citing PO Resp. 42–43; Ex. 2011 ¶¶ 141–148; Ex. 1063,
302:4–303:21).
We do not agree with Patent Owner’s arguments that Oez-US teaches
away from using white pigment alone or that Oez-US requires a cross-
linking polymer for the white pigment to function. See PO Resp. 42–43. To
teach away, a reference must discourage one of ordinary skill in the art from
following the path set out in the reference, or lead that person in a direction
divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994) (“[A] reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.”). “A reference does not
teach away . . . if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Patent Owner does not
identify any teaching in Oez-US that either requires use of a cross-linking
polymer with its white pigment or discourages use of a white pigment
without a cross-linking polymer. And, our independent review of Oez-US
does not reveal any such teaching. The fact that Oez-US uses a white
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pigment in conjunction with a cross-linked polymer does not mean that
cross-linking is required for TiO2 to function as a pigment nor does it teach
away from pursuing the path taken in the ’581 patent.
Patent Owner’s arguments that transferring a white pigment from a
reactive to non-reactive system would have been unpredictable because the
titanium dioxide performs functions beyond whiteness and because the
properties and characteristics of the layer would be altered is similarly
unavailing. See PO Resp. 42–46. Neither Patent Owner nor its expert,
Dr. Ellison, identify anything in Oez-US that suggests the titanium dioxide
functions other than to provide a contrasting background. See generally id.;
see generally Ex. 2011. Rather, Oez-US consistently refers to the white
pigment or titanium dioxide as responsible for providing contrast for images
transferred to dark colored textiles. Ex. 1013, 1:28–29, 1:50–52, 2:50–51.
In fact, Oez-US states that “[i]f white textiles are to be printed on, the
titanium oxide pigment can be omitted.” Id. at 2:31–32. Further, Dr.
Ellison’s testimony that “white pigments like titanium dioxide often have a
surface chemistry [that] . . . can interact with components of reactive
systems [and] . . . can itself chemically react with the components of the
single polymer layer of Oez[-US] and become part of the crosslinked
network,” is inconclusive and, at best, describes possible interactions in a
reactive system—not in a non-reactive system as proposed by Petitioner.
Ex. 2011 ¶ 144 (emphasis added).
In addition, record evidence supports Petitioner’s position that a
person of ordinary skill in the art would have understood incorporating
titanium dioxide within a polymer layer to provide a white background
whether the polymer is cross-linked or not. Ex. 1062 ¶¶ 17–18 (citing
Ex. 1055 ¶¶ 120–121); Ex. 1063, 304:8–22 (Dr. Ellison’s testimony that the
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reactions described in Oez-US would not be required for titanium dioxide to
provide whiteness). Regarding the purported changes titanium dioxide
would have on certain properties or characteristics of the polymer layers,
Patent Owner’s argument is based solely on the conclusory declaration
testimony of Dr. Ellison. See Ex. 2011 ¶¶ 145–148.
Similarly, Patent Owner’s argument that “it is ‘extremely rare’ to find
a ‘drop in’ replacement” for titanium dioxide (PO Resp. 44) is based on an
incomplete understanding of the referenced articles and is conclusory.
Patent Owner relies on the testimony of Dr. Ellison and Exhibits 2012 and
2013, and identifies the problem as a possible color shift or variance in
lightness of up to 10% (Ex. 2012)—not unpredictability. Dr. Ellison also
testified that he had not studied the details of Exhibit 2012 and conceded that
Exhibit 2013 is not relevant to inorganic pigments, like titanium dioxide.
Ex. 1063 343:11–347:7, 350:5–355:2.
On the other hand, Petitioner identifies evidence that suggests
titanium dioxide is the most widely-used and well-known white pigment.
Pet. Reply 8–10 (citing Ex. 1062 ¶¶ 19–39; Ex. 1054; Ex. 1056); see also,
Ex. 2012, 2 (“Titanium dioxide is the most widely used white pigment
because of its unique ability to provide exceptional opacity and lend
whiteness and brightness.”); Ex. 1063, 243:6–22; Ex. 1055 (“Half of all
TiO2 pigment produced is consumed by the coatings industry and a quarter
by the paper industry.”); Ex. 1057; Ex. 1058.
We also disagree with Patent Owner’s assertion that the alleged
“numerous failures” in Kronzer demonstrate why adding a new component
to the third layer would be unpredictable. PO Resp. 43; Sur-reply 5. Even if
we were to accept Patent Owner’s characterization of Kronzer as including
some failures as true, none of Kronzer’s trials include a pigment. Ex. 1018,
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Tables VI–XIV; Ex. 2011 ¶ 149. Thus, we fail to see the particular
significance of those specific trials to the question of unpredictability based
on the addition of a pigment to Kronzer. Moreover, a reference should be
considered in its entirety for what it fairly teaches one skilled in the art,
which would include the multiple successful trials in Kronzer and an express
statement that each of the film layers may include a pigment. Ex. 1018,
Tables VI–XIV (showing transfer sheet trials with characteristics, including
image transfer, that are “good” and/or “excellent”), 8:46–48; see In re
Wesslau, 353 F.2d 238, 241 (CCPA 1965).
(3) whether a person of ordinary skill in the art would not have
had reason to combine where Kronzer and Oez-US involve
the different structures and manufacturing processes
Patent Owner contends there are “fundamental differences in [the]
structures and manufacturing” of Kronzer versus Oez-US such that the
ordinarily skilled artisan would not have combined their teachings.
PO Resp. 46. Patent Owner explains that “Kronzer is a multi-layered
structure, in which each layer is laid down separately during manufacturing
and in which each layer serves a different function,” whereas “every
example and every claim in Oez teaches a single homogenized coating,
which is pre-mixed during manufacture.” Id. at 47.
Petitioner argues that Oez-US is not a “single homogenized coating”
as Patent Owner suggests. Pet. Reply 11. Petitioner asserts that both Oez-
US itself and Patent Owner’s own expert describe Oez-US as having a
multi-layered structure. Id.
For the same reasons discussed above in Section II.D.2.b, we do not
agree with Patent Owner’s arguments, in this regard. As we explained
above, Oez-US and Kronzer each describe a multi-layered image transfer
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structures. See Ex. 1013, 2:36–44 (describing a polymer layer between the
paper and the polyurethane layer), claim 12 (same); see also Ex. 1063,
295:8–296:18 (Dr. Ellison’s testimony describing Oez-US as having a
second, optional layer); Ex. 1018, 2:33–3:6 (describing a heat transfer sheet
having up to five layers).
(4) whether a person of ordinary skill in the art would not have
had reason to combine where the technology and problems
solved are different
Patent Owner also argues that “a [person of ordinary skill in the art]
would not be motivated to combine Kronzer and Oez is because of the
fundamental differences in the problems each reference seeks to address and
the fundamental differences in the technology each reference uses to solve
those problems.” PO Resp. 47–48.
Petitioner replies that “Oez-US and Kronzer are both generally
directed to, inter alia, compositions and methods, including multi-layered
polymer sheets for transferring images to fabric . . . and share the common
goal of improving the quality of the transferred image when applied to
fabric.” Pet. Reply 11–12. Petitioner further argues that “both Oez-US and
Kronzer teach the use of overlapping classes of polymers, e.g., polyurethane
and acrylic acid and acrylic acid ester polymers” and therefore, “the
technologies employed by Kronzer and Oez-US are fundamentally the same;
i.e., multi-layer sheets comprising similar polymer layers for heat transfer to
fabrics.” Id. at 12 (citing Ex. 1020 ¶¶ 88, 220–221; 1063 ¶¶ 8–10).
For the same reasons discussed above, in Section II.D.2.b, Patent
Owner’s arguments, in this regard are unavailing. As we explained above,
we consider Kronzer and Oez-US to be aligned with a common goal of
improving the quality of transferred images. Moreover, Petitioner’s
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evidence and arguments regarding the use of the same polymers in both
references undermines Patent Owner’s arguments that the technology in the
two references is so different that a person of ordinary skill in the art would
not have had any reason to combine the teachings of the references.
(5) whether a person of ordinary skill in the art would not have
had reason to combine where the printing and applying
method of Kronzer and Oez-US are opposite to one another
Lastly, Patent Owner contends that a person of ordinary skill in the art
would not have had a reason to combine Kronzer and Oez-US because the
“two references use opposite methods of application” and a person or
ordinary skill in the art would not have had a reasonable expectation of
success. PO Resp. 48. According to Patent Owner, a person of ordinary
skill in the art would have been dissuaded from adding a white pigment to
Kronzer’s third layer because the pigment would “obscure the decorative
graphic.” Id. at 48–49.
Petitioner asserts that “far from being ‘counterintuitive’ (PO [Resp.],
48-49), a [person of ordinary skill in the art] (or anyone else possessing a
modicum of common sense) would have understood that the inclusion of a
white/opaque pigment in Kronzer’s layer would necessitate the image to be
positioned positively on top of (not underneath) the opaque/white layer, as
expressly taught by Oez-US.” Pet. Reply 12.
On this issue, Petitioner has the better position. The ordinarily skilled
artisan would have understood that there were two known methods for
applying image transfer sheets—i.e., either “peel first” or “peel last”—and
would have considered the benefits and disadvantages of each in developing
an image transfer sheet. See generally Ex. 1016 (describing “peel first”);
Ex 1018 (describing “peel last”); Tr. 36:8–37:8. Further, as Patent Owner
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acknowledges, using the “peel last” method would have resulted in the white
layer covering the image, and therefore the image would be obscured. PO
Resp. 48 (citing Ex. 2011 ¶ 150) (“a [person having ordinary skill in the art]
would expect that white pigment in the third layer would obscure the
decorative graphic.”); Pet. Reply 12; Ex. 1062 ¶¶ 42–43. The “person of
ordinary skill is also a person of ordinary creativity, not an automaton,” and
does not abandon common sense when considering the combination of
references. KSR, 550 U.S. at 421; Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (explaining that a person of ordinary
skill in the art would have considered both the advantages and disadvantages
of the prior art). Accordingly, the person of ordinary skill in the art would
not have been deterred by two different application types, but rather, would
have had reason to consider the teachings as a whole and opt for the “peel
first” method well within their technical grasp. KSR, 550 U.S. at 421
(“When there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp.”).
For all of the foregoing reasons, we are persuaded by Petitioner’s
arguments and evidence demonstrating that a person of ordinary skill in the
art would have had reason to combine the teachings of Kronzer and Oez-US,
and would have had a reasonable expectation of successfully doing so to
arrive at the subject matter recited in claim 1. As noted above, we also agree
with Petitioner’s arguments and evidence that Kronzer and Oez-US teach or
suggest all of the limitations recited in claim 1. As a result, we find
Petitioner has established by a preponderance of the evidence that claim 1 is
unpatentable as obvious in view of Kronzer and Oez-US.
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3. Claims 2 and 3
Claim 2 requires the article of claim 1 “wherein the indicia and the
opaque background are arranged to concurrently transfer to the dark-colored
base in contact with the image-imparting member upon application of heat.”
Ex. 1003, 11:49–52. Claim 3 requires the article of claim 2, “wherein the
portion of the image-imparting member comprising the pigment and
providing the opaque background is configured to be contactable to the dark-
colored base, during a transfer process, such that received indicia face
upwards.” Id. at 11:53–57.
Petitioner explains that “Kronzer teaches first placing its image
transfer sheet on a fabric, applying heat to effect a[n] image transfer, and
(after cooling) peeling off the first/base layer.” Pet. 76. Petitioner asserts
that a person of ordinary skill in the art “would have naturally [] applied the
image transfer steps and image orientation taught by Oez-US” because “the
purpose of adding the white pigment to Kronzer’s third layer is to provide a
white background for the image being transferred.” Id. at 77 (citing Ex.
1020 ¶¶ 261 (explaining that if applied otherwise, the white layer would be
on top of the image); Ex. 1013, 1:26–55, 2:50–51, 3:30–59; Ex. 1018, 4:15–
16).
Patent Owner argues that Petitioner “cite[s] no support or evidence for
the proposition” that it would have been “natural” to apply the “image
transfer steps and image orientation taught by Oez-US.” PO Resp. 49 (citing
Pet. 77). Patent Owner explains that this “is a complete re-engineering of
Kronzer” and Petitioner does not explain why a person of ordinary skill in
the art would expect such re-engineering to be successful. Id. at 49–50.
Patent Owner reasons that “[t]his re-engineering is based on hindsight.” Id.
at 50.
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Patent 7,749,581 B2
35
Petitioner replies that modifying Kronzer to include a “peel first”
image orientation would not require a “complete reengineering” as Patent
Owner alleges. Pet. Reply 13. Petitioner asserts that “[Patent Owner] and
its expert make conclusory assertions that reversing the layers would not be
successful, would be unpredictable and would impact the transfer, with no
support for these assertions.” Id. Petitioner contends its challenge is based
on reversing the order of the third and fourth layers which “are largely the
same, and can include the same thermoplastic polymers/binders having the
same characteristics.” Id. (citing Ex. 1018, 5:46–48, 5:62–65, 6:1–8, 6:54–
56, 7:12–41; Ex. 1020 ¶¶ 42–48). Petitioner argues that a person of ordinary
skill in the art “would have understood that flipping the orientation of these
two layers would result in the same (or materially similar) functionality as
the original orientation.” Id. (citing Ex. 1036 ¶ 46; Ex. 1018, 6:17–19).
In weighing the evidence before us, we disagree with Patent Owner’s
argument that Petitioner improperly relies on hindsight. Impermissible
hindsight is inferred when the specific understanding or principle within the
knowledge of one of ordinary skill in the art that would have motivated one
(with no knowledge of the claimed invention) to make the proposed
combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358
(Fed. Cir. 1998). Here, however, Petitioner reasonably asserts that a person
of skill in the art “would have naturally also applied the image transfer steps
and image orientation taught by Oez-US” and would have reordered
Kronzer’s third and fourth layers because to do otherwise would result in the
white layer being on top of the image. Pet. 77 (citing Ex. 1020 ¶ 261).
Petitioner explains that its proposed “peel first” embodiment would have
been successful “because Kronzer expressly teaches that its substrate layer
has ‘cold release’ properties.” Id. (citing Ex. 1018, 4:15–16; Ex. 1020
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Patent 7,749,581 B2
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¶ 261). Petitioner also explains that each of Kronzer’s third and fourth
layers are similar and include thermoplastic polymers that melt in the same
range, i.e., about 65 °C to about 180°C. Id. at 71 (quoting Ex. 1018, 2:35–
67). Dr. Wanat testifies that a “complete re-engineering” is not required
because “Kronzer discloses that the desired characteristics and examples of
the major components of the third and fourth layer[s] are largely the same”
and a person skilled in the art would expect the layers to function similarly
regardless of orientation. Ex. 1062 ¶¶ 44–45. Therefore, Petitioner has
provided sufficient reasoning with rational underpinnings to explain why
one of ordinary skill in the art would have had reason modified the teachings
of Kronzer and Oez-US. See KSR, 550 U.S. at 418.
Furthermore, critically lacking from Patent Owner’s argument is any
explanation why “a complete reversal of the order of the layers would not
yield predictable results” (PO Resp. 50), what “complete re-engineering”
other than a reordering the layers would have been required, or any
suggestion that reversing the order of layers is beyond technical knowledge
of the person of ordinary skill in the art. Accordingly, on this record, we
find no evidence of hindsight reconstruction.
For the foregoing reasons, Petitioner has established by a
preponderance of the evidence that claims 2 and 3 are unpatentable as
obvious in view of Kronzer and Oez-US.
4. Remaining Claims (claims 4–6, 8–21, and 24–31)
Petitioner also alleges that the combined teachings of Kronzer and
Oez-US would have rendered obvious the subject matter of independent
claims 17, 24, 27, 30, and 31 and dependent claims 4–6, 8–16, 18–21, 25–
26, and 28–29. Pet. 66–81. Independent claims 17, 24, 27, 30, and 31 are
similar to claim 1 except that claims 27, 30, and 31 additionally require
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37
(1) the polymer layer underlying the white layer (claims 27 and 31) or
underlying the ink-receptive layer (claim 30) to include ethylene acrylic acid
and (2) a silicone-coated removable substrate underlaying the polymer layer
(claims 27 and 31) or underlaying the white layer (claim 29). See generally
Ex. 1003, claims. Petitioner argues that Kronzer describes a fifth layer
comprising ethylene acrylic acid that may be located be between the second
layer and third layers (i.e., the white layer as modified), thereby meeting
claims 27 and 31. Pet. 73 (citing Ex. 1018, 11:55–65; Ex. 1020 ¶ 238).
Alternatively and relevant to claim 30, Petitioner argues that Kronzer
discloses that any of the third, fourth, or fifth layers may include ethylene
acrylic acid, and that in “Kronzer’s five layer variant, a POSITA would have
been motivated to place Oez-US’s white pigment in the fifth layer to provide
the most spatial separation of the indicia and white pigment.” Id. at 74
(citing Ex. 1020 ¶¶ 243–244). Additionally, Petitioner argues that although
Kronzer does not disclose that the release layer may include silicone, but
rather clay, Oez-US “expressly teaches a silicone release layer” for easy
removal. Id. (citing Ex. 1013, 3:14–16). Petitioner contends that a person of
ordinary skill in the art would have reason to replace the clay (in Kronzer), a
known release coating, for another known alternative, i.e., silicone (in Oez-
US), as it involves a matter of simple substitution to achieve the invention of
claims 27, 30, and 31. Id. at 74–75 (citing Ex. 1020 ¶¶ 241, 246–247, 255).
Patent Owner does not address independent claims 17, 24, 27, 30, and
31 or dependent claims 4–6, 8–16, 18–21, 25–26, and 28–29 beyond what
Patent Owner argues for claims 1–3, and therefore has forfeited any
arguments based on these uncontested claims. Cf. In re NuVasive, 842 F.3d
1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an
argument presented in the preliminary response if it fails to renew that
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argument in the patent owner response during the instituted trial). For the
reasons we discuss above, we are persuaded by Petitioner’s arguments and
evidence. We have reviewed the information Petitioner provides, including
the relevant portions of both Wanat Declarations and Petitioner’s arguments
that a person of ordinary skill in the art would have had reason to combine
the various disclosures set forth in Kronzer and Oez-US and that a person of
ordinary skill in the art would have had a reasonable expectation of success
in achieving the claimed invention. Because a preponderance of the
evidence supports Petitioner’s arguments as to claims 4–6, 8–21, and 24–31,
we adopt Petitioner’s analysis as our own. Accordingly, Petitioner
establishes that the subject matter of claims 4–6, 8–21, and 24–31 would
have been obvious over Kronzer in view of Oez-US.
E. Remaining Grounds
Having determined that Petitioner establishes by a preponderance of
the evidence that the combination of Kronzer and Oez-US renders the
subject matter of claims 1–6, 8–21, and 24–31 obvious, we need not address
Petitioner’s additional grounds challenging claims 1–6, 8–21, and 24–
31. 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”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x
984, 990 (Fed. Cir. 2020) (nonprecedential) (“We agree that the Board need
not address [alternative grounds] that are not necessary to the resolution of
the proceeding.”).
III. PATENT OWNER’S MOTION TO STRIKE
On June 1, 2021, with authorization, Patent Owner filed a Motion to
Strike. Paper 29 (“Motion”). The Motion seeks to strike “evidence
submitted by Petitioner for the first time on Reply,” including the Reply
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Patent 7,749,581 B2
39
Declaration of Dr. Robert Wanat (Ex. 1062, “Reply Declaration”), as well as
evidence relied on in that Declaration (Exhibits 1054–1060 and 1064–1065).
Id. at 1, 4. Petitioner filed its Opposition to the Motion to Strike on June 15,
2021. Paper 30 (“Response”).
Patent Owner argues that the Reply Declaration includes “new
argument and cite[s] new evidence that could have – and should have – been
submitted with the Petition.” Id. at 1. Patent Owner also argues that we
should strike newly-submitted evidence (Exhibits 1054–1060 and 1064–
1065) used to support the Reply Declaration. Id.
Under the Board’s rules, a petitioner’s reply “may only respond to
arguments raised in the corresponding . . . patent owner response” or address
the institution decision. 37 C.F.R. § 42.23(b) (2019); see also Ariosa
Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)
(discussing how, in an inter partes review proceeding, a petitioner’s reply is
“limited to a true rebuttal role” (citing 37 C.F.R. §§ 42.104(b)(5), 42.23(b))).
“Petitioner may not submit new evidence or argument in reply that it could
have presented earlier, e.g. to make out a prima facie case of unpatentability.
A party also may submit rebuttal evidence in support of its reply.” See
Consolidated Trial Practice Guide, 73 (2019)11 (citing Belden Inc. v. Berk-
Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). We address each of
Patent Owner’s concerns below.
A. Alleged New Motivation to Combine
Patent Owner argues that the Reply Declaration, for the first time,
“set[s] forth a new motivation to combine” Motion 1 (citing Ex. 1062 ¶¶ 9–
12). Petitioner argues that “[t]ellingly, [Patent Owner] does not even

11 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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Patent 7,749,581 B2
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identify any motivation that is supposedly ‘new.’” Response 2. Petitioner
asserts that the Reply Declaration is in response to Patent Owner’s
arguments and specifically those asserting “that there would be no
motivation to combine Kronzer and Oez-US because they solve
‘fundamentally different problems using fundamentally different
technologies.’” Id. at 3 (quoting Ex. 1062 ¶ 7).
Patent Owner does not identify what purported new motivation to
combine Petitioner introduces. See generally Motion. Indeed, Patent Owner
does not specifically identify which new theories Dr. Wanat proffers and
cites only generally to paragraphs 9–12 of the Reply Declaration. Motion 1.
Accordingly, we find Patent Owner has failed to establish that it is entitled
to the requested relief. 37 C.F.R. § 42.20(c) (“The moving party has the
burden of proof to establish that it is entitled to the requested relief.”). In
any event, we do not rely upon Dr. Wanat’s additional testimony in
determining whether Petitioner has shown an adequate reason to combine
Kronzer and Oez-US. Accordingly, we dismiss this aspect of Patent
Owner’s Motion as moot.
B. Alleged New Arguments Regarding Use of TiO2
Patent Owner argues that the Petition fails to cite any evidence for its
allegation that using TiO2 in Kronzer would have been predictable to the
person of ordinary skill in the art and that we should now preclude Petitioner
from providing new evidentiary support. Motion 2 (citing Ex. 1062 ¶¶ 17–
40). Patent Owner contends that we should also strike Petitioner’s argument
(and evidence) “that ready to use formulations exist that include titanium
dioxide, which Petitioner asserts somehow supports the predictability of
titanium dioxide.” Id. at 3 (citing Ex. 1062 ¶ 38). Patent Owner further
contends that Petitioner’s arguments that a person of ordinary skill in the art
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Patent 7,749,581 B2
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“would also know to include other (unidentified) additives to Kronzer in
order to make the composition work” are untimely. Id. at 2 (citing Ex. 1062
¶¶ 17–40).
Petitioner asserts that “Dr. Wanat’s position that using TiO2 in
transfer sheets would have led to predictable results is entirely consistent
with the arguments and evidence presented in the Petition.” Response 4
(citing Pet. 66–69; Ex. 1020 ¶¶ 85, 220–224). Petitioner explains that
Dr. Wanat’s further positions regarding the use of additives and ready-to-use
formulations were in direct response to Patent Owner’s arguments that TiO2
could not be used predictably. Id. at 7–8.
We are not persuaded that Petitioner’s arguments are improper
rebuttal arguments. In the Petition, Petitioner explains that because the
combination “merely involved combining well-known elements (i.e.,
polymers and pigments) using well-known polymer science/manufacturing
techniques” the results would have been predictable to the person of
ordinary skill in the art. Pet. 69 (citing Ex. 1020 ¶ 224). In its Response,
Patent Owner argued that including a pigment would, in fact, have been
unpredictable to one of ordinary skill in the art because the inclusion of
pigments “can pose significant technical challenges” including changing
“the viscosity and flow properties of the third layer at transfer temperatures”
and changing “solid state characteristics of the third layer, such as modulus,
elasticity, and flexibility.” PO Resp. 44–45. Patent Owner further argues
that finding a “‘drop in’ replacement” replacement for a pigment is
“extremely rare.” Id. at 44. Therefore, Dr. Wanat’s testimony that the
skilled artisan would have understood how to account for the “technical
challenges” Patent Owner identified through use of additives and testimony
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42
that “drop-in replacements” were in fact available, properly responds to
arguments raised by Patent Owner.
C. Alleged New Arguments Regarding the Similarity of Layers
Patent Owner asserts that Petitioner improperly advances an argument
where the third and fourth layers of Kronzer are flipped and, because of their
similarity, there would be no “impact on the composition at all.” Motion 3.
Petitioner argues that “the Petition expressly addresses the similarity of
characteristics for Kronzer’s third and fourth layers . . . [t]hus paragraphs
44–48 of Dr. Wanat’s Reply declaration are entirely consistent within the
originally filed Petition.” Response 8–9. Further, Petitioner asserts that
“Dr. Wanat’s reply declaration [is] clearly directed to [Patent Owner’s] own
baseless argument that ‘flipping’ Kronzer’s layer would be a ‘complete re-
engineering’ of Kronzer.” Id. at 9.
We are persuaded that the Reply Declaration is proper rebuttal
evidence. In the Petition, Petitioner argues that the combination of Kronzer
and Oez-US would result in an image transfer sheet having the following
structure.

Pet. 66–67 (citing Ex. 1020 ¶ 221). Petitioner further explains that “Kronzer
teaches that its third and fourth layers’ include[] a thermoplastic polymer
which melts in a range of from about 65°C. to about 180°C.’” Id. at 71
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(quoting Ex. 1018, 2:35–67); see also Ex. 1020 ¶¶ 256–258 (same).
Petitioner also explains that a person of ordinary skill in the art “would have
naturally applied the image transfer steps and image orientation taught by
Oez-US,” i.e., image on top of the white layer. Id. at 77 (discussing claims 2
and 3) (citing Ex. 1020 ¶ 261).
In its Response, Patent Owner argues that Petitioner, other than for
claims 2 and 3, has not addressed which application method or combination
thereof is used or how they would be applied. PO Resp. 48. Patent Owner
contends that a person of ordinary skill in the art would not have applied
Kronzer’s “peel later” method as there would be no reasonable expectation
of success because the decorative graphic would be obscured by the white
pigment. Id. With respect to claims 2 and 3, Patent Owner asserts that a
person of ordinary skill in the art would not have followed the transfer steps
and image orientation of Oez-US because “it is a complete re-engineering of
Kronzer.” Id. at 49.
Petitioner did not need to initially address whether the ordinarily
skilled artisan would have peeled first or last because the challenged claims
of the ’581 patent recite an article of manufacture, not a method. It was not
until the Patent Owner Response raised the issue of a lack of a reasonable
expectation of success that the need for Petitioner’s argument arose.
Accordingly, Dr. Wanat’s reply testimony responds to Patent Owner’s
arguments and is proper rebuttal evidence. We therefore deny Patent
Owner’s Motion relating to this testimony.
D. Alleged New Arguments Relating to Cross-linking
Patent Owner argues that the Reply Declaration, for the first time in,
makes “new arguments about cross-linking, including new arguments
regarding melting that pointed to new citations to Oez.” Motion 4 (citing
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Ex. 1062 ¶¶ 49–54). According to Petitioner, the Petition and original
Wanat declaration explained that
crosslinking will require a period of time at the high temperature
to complete the crosslinking process and, as a result, upon initial
heating of such melamine formaldehyde polymers, . . . the
polymers will be in a state with very little to no crosslinking, and
so there will be mobility . . . which can allow for mixing of
polymers between layers to occur.
Response 10–11 (citing Pet. 24–36; Ex. 1020 ¶¶ 49–54. Furthermore,
Petitioner contends that the Reply Declaration is in direct response to Patent
Owner’s arguments. Id. at 11.
Dr. Wanat’s “new arguments” regarding melting (Ex. 1062 ¶¶ 49–54)
relate to a ground we do not rely on in determining claims 1–6, 8–21, and
24–31 unpatentable. Accordingly, Patent Owner’s Motion to strike
Dr. Wanat’s testimony in this regard, is dismissed as moot.
IV. CONCLUSION12
For the foregoing reasons, we conclude that Petitioner has satisfied its
burden of demonstrating, by a preponderance of the evidence, that the
subject matter of claims 1–6, 8–21, and 24–31 of the ’581 patent is
unpatentable. We also deny in part and dismiss in part Patent Owner’s
Motion to Strike.

12 Should Patent Owner wish to pursue amendment of the challenged claims
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).
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, Petitioner establishes by a preponderance of the
evidence that claims 1–6, 8–21, and 24–31 are unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Strike is
denied in part and dismissed in part; and
FURTHER ORDERED that, because this is a Final Written Decision,
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.
In summary:
Claims 35 U.S.C. § References/ Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–6, 8–21,
24–26
§ 103 Oez-US, 13
Meyer

18, 27–31 § 103 Oez-US,
Meyer,
Kronzer

1–6, 8–21,
24–31
§ 103 Oez-PCT,
Oez-US

1–6, 8–21,
24–31
§ 103 Kronzer,
Oez-US
1–6, 8–21, 24–
31

Overall
Outcome
1–6, 8–21, 24–
31

13 As explained above, we do not reach Petitioner’s alternative grounds
based on Oez-US and Oez-PCT. See supra Section II.E.
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FOR PETITIONER:
Joseph J. Richetti (Reg. No. 47,024)
Ethan R. Fitzpatrick (Reg. No. 71,404)
Abigail M. Cotton (Reg. No. 52,772)
BRYAN CAVE LEIGHTON PAISNER LLP
joe.richetti@bclplaw.com
ethan.fitzpatrick@bclplaw.com
abiail.cotton@bcllaw.com

FOR PATENT OWNER:
Devan V. Padmanabhan (Reg. No. 38,262)
Michelle E. Dawson (Reg. No. 62,319)
PADMANABHAN & DAWSON, PLLC
devan@paddalawgroup.com
michelle@paddalawgroup.com