Softbelly's, Inc.

Patent Trials and Appeals Board

Sep 10, 2021

IPR2020-00689 (P.T.A.B. Sep. 10, 2021)

Trials@uspto.gov Paper 43
571-272-7822 Date: September 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

TY INC.,
Petitioner,
v.
SOFTBELLY’S, INC.,
Patent Owner.

IPR2020-00689
Patent 6,195,831 C1

Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Denying in Part, Dismissing in Part Petitioner’s Motion to Exclude
Denying in Part, Dismissing in Part Patent Owner’s Motion to Exclude
37 C.F.R. § 42.64

IPR2020-00689
Patent 6,195,831 C1
2
I. INTRODUCTION
A. Background and Summary
TY Inc. (“Petitioner”) filed a Petition requesting inter partes review
of claims 15 and 161 of U.S. Patent 6,195,831 C1 (Ex. 1001, “’831 patent”).
Paper 1 (“Pet.”). Softbelly’s, Inc. (“Patent Owner”) filed a Preliminary
Response. Paper 8 (“Prelim. Resp.”). On September 15, 2020 we issued our
Decision Granting Institution. Paper 10 (“Dec.” or “Decision on
Institution”).
Patent Owner then filed a Response on December 9, 2020. Paper 14
(“PO Resp.”). Petitioner filed a Reply on March 3, 2021. Paper 19
(“Reply”). Patent Owner filed a Sur-Reply on April 14, 2021. Paper 26
(“Sur-Reply”). On June 18, 2021, an oral hearing was held. Paper 42 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
claims on which we instituted trial. Based on the complete record before us,
we determine that Petitioner has shown, by a preponderance of the evidence,
that claims 15 and 16 are unpatentable. In addition, for the reasons explained
below, we deny in part and dismiss in part both Petitioner’s and Patent
Owner’s Motions to Exclude evidence.
B. Real Parties-in-Interest
Petitioner identifies the real party-in-interest as TY Inc. Pet. 2.
Patent Owner identifies Softbelly’s, Inc. as the real party-in-interest.
Paper 4, 2.

1 Claims 15 and 16 were added to the ’831 patent during reexamination.
Ex. 1002, col. 2, ll. 7–14.
IPR2020-00689
Patent 6,195,831 C1
3
C. Related Matters
The parties state that the following matters may affect or be affected
by a decision in this proceeding:
Softbelly’s, Inc. v. Boone Consumer Group, Inc., Case No. 2:01-cv-
3149 (C.D. Cal., filed Apr. 5, 2001);
Softbelly’s, Inc. v. Ty Inc., Case No. 1:19-cv-06265 (N.D. Ill., filed
Sept. 19, 2019); and
Softbelly’s, Inc. v. Ty Inc., Case No. 1:20-cv-00234 (N.D. Ill., filed
Jan. 13, 2020). Pet. 2–3; Paper 4, 2.
The parties also state that the ’831 patent was the subject of Ex Parte
Reexamination 90/006,224 (“the Reexam”), filed February 15, 2002. Pet. 3;
Paper 4, 2.
D. The ’831 Patent
The ’831 patent, titled “Display Screen Cleaning Tool,” issued on
March 6, 2001, from U.S. Application No. 09/185,994 filed November 4,
1998. Ex. 1001, codes (21), (22), (45), and (54).
The ’831 patent relates to a display screen cleaning tool that
minimizes any degradation of the display screen surface that may result from
wiping the screen. Id. at col. 1, ll. 60–62. In one embodiment, the tool
comprises a three-dimensional doll-like figure in the shape of an animal or
the like, where the figure has a soft belly comprising an optical grade fabric
like optical grade chamois. Id. at col. 1, l. 66–col. 2, l. 12. In another
embodiment, the doll-like figure is ‘“under-stuffed’ in the manner in the art
of ‘under-stuffed’ doll-like figures, e.g. ‘Beanie Babies.’” Id. at col. 3, ll.
18–21.
IPR2020-00689
Patent 6,195,831 C1
4
E. Illustrative Claims
Claims 15 and 16 are the claims challenged in the Petition. Claim 15
depends from cancelled claim 6 and claim 16 depends from cancelled claim
11. Ex. 1002, col. 2, ll. 4–14.
Claims 6 and 15 read as follows:
6. A three-dimensional doll-like figure for cleaning or wiping the
surface of a display screen comprising:
a plurality of strips of fabric material sewed together so as to
form a doll-like figure body having outer surface portions and at
least one inner chamber, and wherein at least one of said plurality
of strips of fabric material forms, in part, said inner chamber, and
is composed of an optical grade fabric having substantially
nonabrasive characteristics with regard to display screen
surfaces; and a selected quantity of stuffing material within said
at least one inner chamber so as to provide said doll-like figure
with a three dimensional shape which is squeezable for providing
a pliant cleaning tool for wiping a display screen.
Ex. 1001, col. 6, ll. 37–51.
15. The doll-like figure of claim 6 wherein another of said strips
of fabric material is a nonoptical grade fabric material.

Ex. 1002, col. 2, ll. 9–11.
Claims 11 and 16 read:
11. A soft-bellied under-stuffed doll-like figure for cleaning or
wiping the surface of a display screen comprising:
strips of fabric material sewed together so as to form a dolllike
figure body having an outer surface portions and at least one
inner chamber, and wherein at least one of said strips of fabric
material forms, in part, said inner chamber, and forming the
underside belly of said softbellied under-stuffed doll-like figure,
and which is composed of an optical grade fabric having
substantially non-abrasive characteristics; and a selected
quantity of stuffing material within said at least one inner
chamber so as to provide said doll-like figure with a three
IPR2020-00689
Patent 6,195,831 C1
5
dimensional shape which is squeezable for providing a pliant
cleaning tool for wiping a display screen.
Ex. 1001, col. 7, ll. 1–15.
16. The doll-like figure of claim 11 wherein another of said strips
of fabric material is a nonoptical grade fabric material.

Ex. 1002, col. 2, ll. 12–14.
F. Evidence
Petitioner relies on the following references:
Ogawa, JP H5-51237, published July 9, 1993 (Ex. 1006, “Ogawa”).
Masahiro, JP H8-103406, published April 23, 1996 (Ex. 1013,
“Masahiro”).
Cherk et al., US 3,748,779, issued July 31, 1973 (Ex. 1008, “Cherk”).
Petitioner also relies on the Declarations of Mrs. Deborah Ryan (Exs.
1005 and 1022) and the Declaration of Dr. Donald B. Thompson (Ex. 1028).
Patent Owner relies on the Declaration of Dr. Sabit Adanur (Ex.
2005).
G. Asserted Grounds
Petitioner asserts that claims 15 and 16 would have been unpatentable
on the following grounds:
Claim Challenged 35 U.S.C. § Reference(s)/Basis
15 102 Ogawa
15 103(a) Ogawa, Masahiro
16 103(a) Ogawa, Cherk
16 103(a) Ogawa, Masahiro, Cherk

IPR2020-00689
Patent 6,195,831 C1
6
II. ANALYSIS
A. Legal Standards
1. Burden
In an inter partes review, the burden of proof is on the petitioner to
show that the challenged claims are unpatentable, and that burden never
shifts to the patentee. 35 U.S.C. § 316(e) (2018); In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016).
2. Anticipation
Section 102(a) provides that “[a] person shall be entitled to a patent
unless . . . the claimed invention was patented [or] described in a printed
publication . . . before the effective filing date of the claimed invention.”
35 U.S.C. § 102(a)(1) (2018).2 Accordingly, unpatentability by anticipation
requires that the four corners of a single, prior art document describe every
element of the claimed invention, either expressly or inherently, arranged as
in the claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008); Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed.
Cir. 1999); In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).
3. Obviousness
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 skill in the art, and (4) where in evidence, so-called

2 The provisions of the Leahy-Smith America Invents Act (“AIA”) regarding
novelty and obviousness apply to patents containing at least one claim
having an effective filing date on or after March 16, 2013. Pub L. 112–29,
125 Stat. 284 (2011). On its face, the ’831 patent has an effective filing date
of November 4, 1998. Therefore, the pre-AIA provisions of 35 U.S.C.
§§ 102 and 103 apply to this decision.
IPR2020-00689
Patent 6,195,831 C1
7
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). If the differences between the claimed subject matter 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, the claim is unpatentable under
35 U.S.C. § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
A proper § 103 analysis requires “a searching comparison of the
claimed invention—including all its limitations—with the teachings of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
“Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing
that a person of ordinary skill at the time of the invention would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Id.
“[O]bjective evidence of nonobviousness includes copying, long felt
but unsolved need, failure of others, commercial success, unexpected results
created by the claimed invention, unexpected properties of the claimed
invention, licenses showing industry respect for the invention, and
skepticism of skilled artisans before the invention.” In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998) (citations omitted). “For objective [evidence of
secondary considerations] to be accorded substantial weight, its proponent
must establish a nexus between the evidence and the merits of the claimed
invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)
(alterations in original) (quoting In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.
Cir. 1995)).
IPR2020-00689
Patent 6,195,831 C1
8
B. Level of Ordinary Skill in the Art
The level of ordinary skill in the art is a factual determination that
provides a primary guarantee of objectivity in an obviousness analysis.
Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing
Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu- Star, Inc., 950 F.2d 714,
718 (Fed. Cir. 1991)).
In our Decision on Institution, we adopted Petitioner’s proposed
definition of a person of ordinary skill in the art as a person with “a
Bachelor’s Degree in Design or a similar field, at least two years of
experience working with or designing plush toys, or equivalent practical
work experience.” Dec. 20.
In its response, Patent Owner now offers a different definition of a
person of ordinary skill in the art. Patent Owner now contends that a person
of ordinary skill in the art would have “(1) a Bachelor’s Degree in textile
engineering or similar engineering and at least two years of industrial
experience in textile engineering or similar engineering; or (2) 5 years or
more industrial experience in manufacturing processes of fabrics and related
products.” PO Resp. 6–7. Patent Owner contends that this is the proper
definition of a person of ordinary skill in the art as the ’831 patent is directed
to fabrics and textiles. Id.
Petitioner responds that Patent Owner’s proposed definition is
improper as Patent Owner misstates the field of the invention. Reply 3.
Petitioner contends that the claimed invention is not directed to fabrics or
textiles but to cleaning tools in the form of a doll-like figure. Id. at 2.
Petitioner contends that this interpretation is supported by the present
Specification and the claims at issue. Id.
IPR2020-00689
Patent 6,195,831 C1
9
We have considered the arguments presented by the parties and the
evidence of record and are not persuaded that our original definition of a
person of ordinary skill in the art was in error. While the claims at issue refer
to an optical grade fabric, we note that the fabric is not the invention. Rather,
as stated in the Specification, the field of the invention is “cleaning tools for
electronic display screens, and more specifically to cleaning tools for
computer display screens and the like.” Ex. 1001, col. 1, ll. 4–6. The claims
further narrow the field of the invention to cleaning tools in the form of a
doll-like structure. Id. at col. 6, l. 37.
Based on the forgoing, we continue to apply the same definition of a
person of ordinary skill in the art we used in our Decision on Institution.
However, the findings and conclusions set forth below would have been the
same had we instead adopted Patent Owner’s proposed definition.
C. Claim Construction
We interpret a claim “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).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe 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.” Id. Furthermore, we need only construe the
claims to the extent necessary to determine the patentability of the
challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 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))).
IPR2020-00689
Patent 6,195,831 C1
10
The parties identify two terms that require construction, “optical grade
fabric having substantially non-abrasive characteristics” and “display
screen.” Pet. 23, PO Resp. 12–14.
1. Optical grade fabric having substantially non-abrasive characteristics
In our Decision on Institution, we construed the term “optical grade
fabric having substantially non-abrasive characteristics” to mean “a fabric
that has a minimal degrading effect on a display screen due to wiping of the
display screen with the fabric.” Dec. 21–22. The parties appear to have
accepted this construction as correct. PO Resp. 12; Reply 4. We adopt the
construction set forth in our Decision on Institution for the term “optical
grade fabric.”
2. Display Screen
The issue with respect to the term “display screen,” which appears in
the preamble of independent claims 6 and 11, is not the definition of the
term but whether the term should be given any patentable weight, or if it is
merely an intended use for the cleaning device.
Patent Owner contends that the term display screen should be given
patentable weight as the term defines how the cleaning tool is to be used. PO
Resp. 12–14. Patent Owner points to the presence of the term “display
screen” in the preamble and contends that it “breathes life” into the claim.
Id. at 12–13. Patent Owner also contends that the use of the term “display
screen” in the body of the claim demonstrates that the term limits the scope
of the claim. Id. at 13–14.
Petitioner contends that the term “display screen” as it is used in the
challenged claims reflects an intended use for the cleaning tool and is not a
IPR2020-00689
Patent 6,195,831 C1
11
claim limitation. Reply 5–7. Petitioner contends that the term does not add
anything to the structure of the claimed article. Id.
Patent Owner responds that Petitioner is improperly proposing a new
claim construction. Sur-Reply 8. Patent Owner contends that the term
“display screen” limits the claim in that it defines the nature of the optical
grade fabric used in the cleaning tool. Id.
We have considered the arguments presented by the parties and the
evidence of record and conclude that Petitioner has the better position. The
term “display screen,” as used in the challenged claims, refers to an intended
use of the cleaning tool. As such, it does limit the scope of the claims.
We begin by noting that the challenged claims are directed to a device
or apparatus. Ex. 1002, col. 2, ll. 8–13. As such, the claims “cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (1990).
The preamble of both claims 6 and 11 read in part: “doll-like figure
for cleaning or wiping the surface of a display screen.” Ex. 1001, col. 6, ll.
37–38; col. 7, ll. 1–2. Both claims end with the clause “providing a pliant
cleaning tool for wiping a display screen.” Id. at col. 6, ll. 50–51; col. 7, ll.
13–14. These phrases are crafted in terms of a device for performing a
specific function or use. This type of phrase has been found to recite an
intended use and not a physical limitation. See Marrin v. Griffin, 599 F.3d
1290, 1294–96 (Fed. Cir. 2010).
The recitation of the intended use in the body of the claim does not
affect our analysis. The term for wiping a display screen still recites a use of
the device that does not impart a structural limitation.
With respect to Patent Owner’s contention that Petitioner has
improperly raised a new construction in its reply, we note that Patent Owner
IPR2020-00689
Patent 6,195,831 C1
12
first raised the issue of whether the term “display screen” should be
interpreted as a claim limitation in its Response. See PO Resp. 12–14.
Petitioner’s arguments concerning the construction of the term “display
screen” are proper as they address and respond to the issue raised by Patent
Owner in its Response. 37 C.F.R. § 42.23. Additionally, Patent Owner had
sufficient notice of Petitioner’s arguments and an opportunity to respond to
those arguments in its Sur-Reply.
D. Ground 1 — Anticipation by Ogawa
Petitioner contends that claim 15 is anticipated by Ogawa. Pet. 23.
Patent Owner disagrees. PO Resp. 14–27.
1. Ogawa
Ogawa is a Japanese Utility Model Application, which was published
in July 1993. Ex. 1006, 1. Ogawa teaches a multi-fabric stuffed toy that can
be used as a cleaning tool for various surfaces such as glassware. Id. ¶ 1;
Abstr. In one embodiment, the cleaning tool of Ogawa comprises a stuffed
toy constructed from two different fabrics, one for the gripping surface and
the other for the cleaning surface. Id. ¶¶ 4–5. Ogawa teaches that the fabric
used for the wiping surface can comprise woven or knit microfiber fabric
made of microfiber yarn of between 0.2 and 0.00001 denier. Id. ¶ 4. Ogawa
teaches that the stuffed toy can be in the shape of stuffed animal. Id.
2. Analysis of Claim 15
a) A three-dimensional doll-like figure for cleaning or wiping the surface
of a display screen comprising
Petitioner contends that Ogawa discloses this limitation. Pet. 25–27.
Petitioner contends that Ogawa discloses a wiping tool that is a three
dimensional stuffed alligator, pig, whale, ladybug, or similar (three
dimensional doll-like figure) used for removing dust and oil/fat smudges
IPR2020-00689
Patent 6,195,831 C1
13
from the surface of various objects. Id. at 25–26 (citing Ex. 1006 ¶¶ 1–2).
Petitioner contends that while Ogawa does not specifically disclose wiping a
display screen, Ogawa discloses using the wiping tool to clean glassware
and that this would lead one skilled in the art to understand that the tool can
be used to clean a display screen. Id. at 26 (citing Ex. 1006 ¶¶ 4–5; Ex. 1005
¶ 57).
Patent Owner contends that Ogawa does not disclose this limitation.
PO Resp. 24–25. Patent Owner points to the fact that Ogawa does not
specifically mention using the tool to clean a display screen and does not
present any data to show that the use of the tool does not degrade the display
screen. Id. Patent Owner contends that one skilled in the art would not view
Ogawa’s mention of cleaning glassware to teach that the tool can be used to
clean display screens. Id.
We have considered the argument presented by the parties and the
evidence of record and find that Ogawa discloses the limitation calling for a
three-dimensional doll-like figure for cleaning or wiping the surface of a
display screen.
Ogawa discloses a wiping tool “in a decorative mode, for example, in
the form of a stuffed animal of an alligator, pig, whale, ladybug.” Ex. 1006
¶ 5. Thus Ogawa teaches the element of the preamble calling for a three-
dimensional doll-like figure.
With respect to the remainder of the preamble, as discussed above, the
term “for cleaning or wiping a display screen” recites an intended use for the
tool and does not limit the claim. However, even if the term were construed
to limit the claim, we find that Ogawa discloses this limitation.
Ogawa discloses that the wiping tool can be used to “clean surfaces of
glassware.” Id. ¶ 1. Dr. Anderson has testified that at the time Ogawa was
IPR2020-00689
Patent 6,195,831 C1
14
published, CRT screens were usually made of glass, falling within the scope
of the term “glassware.” Ex. 1028 ¶ 43. This is consistent with the teachings
of the ’831 patent and the interpretation of the term display screen used by
the examiner during the Reexam. Ex. 1001, col. 1, ll. 12–16; see Ex. 1004,
441.3
b) a plurality of strips of fabric material sewed together so as to form a
doll-like figure body having outer surface portions and at least one inner
chamber, and wherein at least one of said plurality of strips of fabric
material forms, in part, said inner chamber
Petitioner contends that Ogawa meets this limitation. Pet. 27–28.
Petitioner contends that Ogawa discloses a cleaner comprising a grip body
and a wipe body that are sewn together. Id. at 27. Petitioner contends that
Ogawa discloses that the cleaner can be in the shape of “a stuffed animal
shaped alligator, pig, whale, ladybug, etc., any of which is equivalent to the
claimed doll-like figure body, after being stuffed with synthetic fiber or
cushioning material.” Id. Petitioner contends that Ogawa discloses forming
an inner chamber which can be filled with stuffing material. Id.
Patent Owner contends that Ogawa does not meet this limitation. PO
Resp. 15–22. Patent Owner contends that a proper reading of this limitation
requires that the inner chamber be formed by combining a strip of optical
grade fabric and a strip of non-optical grade fabric. Id. at 15–16. Patent
Owner supports this contention by citing to a specific embodiment disclosed
in the ’831 patent which has an inner chamber formed by a piece of optical
grade fabric combined with a piece of non-optical grade fabric. Id. (citing
Ex. 1001, col. 3, ll. 33–59).

3 For Exhibit 1004, we refer to the page number added by Petitioner to the
exhibit.
IPR2020-00689
Patent 6,195,831 C1
15
Patent Owner contends that Ogawa does not teach this arrangement.
Id. at 18–19. Patent Owner contends that one skilled in the art would
understand that Ogawa teaches forming two separate inner chambers, one
formed from the wiping surface material and the other by the gripping body
material and then combining the two chambers together to form the tool. Id.
Petitioner responds by contending that Patent Owner’s argument that
the inner chamber must be made of two different materials is in error. Reply
7–9. Petitioner contends that Patent Owner is attempting to improperly read
limitations from the Specification into the claims and that a proper reading
of the claims would embrace an inner chamber formed completely of an
optical grade fabric. Id.
Petitioner contends that even if Patent Owner’s construction were
proper, Ogawa discloses an inner chamber comprising, in part, an optical
grade fabric and a non-optical grade fabric. Id. at 9–12. Petitioner contends
that one skilled in the art would not interpret Ogawa as teaching forming two
different stuffed portions of the tool and them sewing those portions
together. Id.
Patent Owner contends that in its Reply, Petitioner is improperly
asserting new arguments and evidence regarding the inner chamber of
Ogawa. Sur-Reply 9. Patent Owner contends that Mrs. Ryan testified that
the tool of Ogawa could have up to three possible chambers, not just the one
asserted by Petitioner. Id. at 10. Patent Owner contends that the teachings of
how to make a stuffed toy are not applicable as the invention is a tool not at
toy. Id. at 11. Patent Owner reiterates its argument that the proper
interpretation of the claims term is that at least one chamber is formed of a
strip of optical grade fabric and a strip of a non-optical grade fabric. Id. at
11–12.
IPR2020-00689
Patent 6,195,831 C1
16
We have considered the arguments advanced by the parties and the
evidence of record and find that Ogawa discloses this claim limitation.
Ogawa discloses a wiping tool comprising a gripping body and a
wiping part “that are integrated into one unit by means of stitching.”
Ex. 1006 ¶ 6. Ogawa also teaches that the tool is filled with synthetic fiber
or cushioning material. Id. Mrs. Ryan testified that this necessarily means
that the tool has an inner chamber, satisfying the requirements of this
limitation. Ex. 1005 ¶¶ 40–41.
While the parties disagree as to whether the challenged claims call for
an inner chamber comprising a strip of optical grade material and a strip of
non-optical grade material, we need not resolve the issue. Even if we were to
adopt Patent Owner’s proposed construction, we find that Ogawa discloses
this limitation.
While we agree with Patent Owner that Ogawa is silent as to the
whether the tool comprises an inner chamber formed by a strip of optical
grade material and a strip of non-optical grade material, our analysis does
not end there. PO Resp. 22. “[A] reference can anticipate a claim even if it
‘d[oes] not expressly spell out’ all the limitations arranged or combined as in
the claim, if a person of skill in the art, reading the reference, would ‘at once
envisage’ the claimed arrangement or combination.” Kennametal, Inc. v
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In
re Petering, 301 F.2d 676, 681 (CCPA 1962)) (second alteration in original).
Patent Owner and Petitioner offer conflicting interpretations of how
one skilled in the art would envision the tool disclosed in Ogawa. Patent
Owner’s expert, Dr. Adanur, testified that one skilled in the art would
interpret Ogawa as calling for forming the grip body and wipe parts
separately, filling the two separate bodies with a stuffing material, and then
IPR2020-00689
Patent 6,195,831 C1
17
joining the two bodies together. Ex. 2005 ¶¶ 86–87. In support of his opinion
Dr. Adanur quotes the following passage from Ogawa:
Figure 1 shows a side view of the wiping tool configured as a
stuffed animal of an alligator. Figure 2 shows the bottom plane
view of the wiping tool shown in Figure 1. In Figure 1, the
reference code 1 represents a grip body, and the reference code
2 represents a wipe part. In Figure 2, the reference code 2
represents the wipe part. The grip body 1 comprises woven/knit
fabric (textile material) consisting of natural or synthetic fiber,
said woven/knit fabric being filled with synthetic fiber or a
cushioning material. The wipe part 2 comprises a regular textile
material, such as woven/knit fabric or velvet, but more preferably
woven/knit microfiber fabric — i.e., woven/knit fabric
consisting primarily of a microfiber yarn of 0.2 to 0.00001
denier, wherein at least the microfiber is entwined between and
within the threads of said woven/knit fabric; provided that such
a textile material is filled with synthetic fiber or a cushioning
material. And, the grip body 1 and the wipe part 2 are integrated
into one unit by means of stitching, etc., so as to form a wiping
tool.
Id. ¶ 84 (quoting Ex. 1006 ¶ 6).
Mrs. Ryan, Petitioner’s expert, offers a different interpretation of the
disclosure of Ogawa. Mrs. Ryan testifies that one skilled in the art would
understand that Ogawa calls for an inner chamber formed by stitching
together the grip body and the wipe part. Ex. 1022 ¶ 25. In addition to her
own experience in making stuffed toys, Mrs. Ryan supports this conclusion
by citing to several references relating to the manufacture of stuffed toys. Id.
¶¶ 26–28 (citing Ex. 1023, Ex. 1025, and Ex. 1026).
We have considered the testimony of both experts and the evidence of
record and find Mrs. Ryan’s testimony to be more persuasive. Therefore, we
agree with Petitioner that Ogawa discloses a wiping tool which has an inner
IPR2020-00689
Patent 6,195,831 C1
18
chamber formed by a strip of optical grade fabric — the wipe portion — and
a non-optical grade fabric — the gripping body.
We give more weight to Mrs. Ryan’s testimony based on her
extensive experience in designing plush toys. Ex. 1005 ¶¶ 3–5. Mrs. Ryan
has worked in the area of plush toy design for over twenty-six years and has
taught classes relating to plush toy design. Id. ¶¶ 3–4; page 40. In addition,
Mrs. Ryan’s testimony regarding how one skilled in the art would envision
the wiping tool of Ogawa is consistent with the evidence of record. For
example, King4 teaches that teddy bears are formed by joining pieces of
fabric creating an inner pocket into which stuffing is inserted. Ex. 1026,
7–12. Cockrill5 also teaches that teddy bears are traditionally made by
cutting out the material, sewing the pieces together, and then stuffing the
bears. Ex. 1025, 67.
Dr. Adanur’s experience and expertise appears to be primarily focused
on textiles. Ex. 2005 ¶¶ 8–24. While Dr. Adanur testified that he has some
experience in the area of plush toys, that experience appears to be limited to
selection of fabric that could be used to manufacture plush toys and making
several puppets at home to earn extra money. Ex. 1027, 52, 57–59, 78–79. In
addition, Dr. Adanur does not cite to any evidence other than Ogawa to
support his opinions as to what one skilled in the art would envision upon
reading Ogawa. See Ex. 2005 ¶¶ 84–87. Patent Owner, however, contends
that Ogawa is silent as to whether the tool has an inner chamber made from a
piece of optical grade fabric and a piece of non-optical grade fabric. PO
Resp. 1, 22.

4 King, Make Your Own Teddy Bears, 1985 (Ex. 1026) (“King”).
5 Cockrill, The Teddy Bear Encyclopedia, 1993 (Ex. 1025) (“Cockrill”).
IPR2020-00689
Patent 6,195,831 C1
19
Patent Owner contends that we should give Dr. Adanur’s testimony
greater weight that Mrs. Ryan’s because Mrs. Ryan does not have sufficient
experience with textiles. Id. at 8–10. Patent Owner also contends that Mrs.
Ryan’s testimony is biased in that a significant part of her work has been for
Petitioner. Sur-Reply 2. We are not persuaded that we should give greater
weight to Dr. Adanur’s testimony on this point.
The limitation at issue is not directed to a specific fabric but whether
one skilled in the art would envision Ogawa as calling for the tool to have an
inner pocket formed by a strip of optical grade fabric and a strip of non-
optical grade fabric. We find that this is an issue of product design and
manufacturing rather than the nature of the fabrics used. Given that context,
we give more weight to Mrs. Ryan’s testimony than Dr. Adanur’s testimony
with respect to this claim limitation.
Patent Owner argues that we should give Mrs. Ryan’s testimony little
weight because “[s]eventy-five percent of Mrs. Ryan’s expert work has been
for Ty.” Sur-Reply 2. While Mrs. Ryan testified that seventy five percent of
her expert witness work has been for Petitioner, Mrs. Ryan also testified that
her work as an expert witness for Petitioner was limited to three cases and
the fees she received did not constitute a significant portion of her income.
Ex. 2035, 54, 70. Moreover, as discussed above, Mrs. Ryan’s opinions with
respect this limitation are consistent with the evidence of record.
Based on the foregoing, we conclude that Ogawa discloses the
limitation calling for a plurality of strips of fabric material sewed together so
as to form a doll-like figure body having outer surface portions and at least
one inner chamber, and wherein at least one of said plurality of strips of
fabric material forms, in part, said inner chamber.
IPR2020-00689
Patent 6,195,831 C1
20
c) and is composed of an optical grade fabric having substantially non-
abrasive characteristics with regard to display screen surfaces;
Petitioner contends that Ogawa discloses this limitation. Pet. 28–29.
Petitioner contends that Ogawa discloses that the wipe part of the tool
comprises a woven or knit microfiber material with the same characteristics
as the material described in the ’831 patent. Id. at 28.
Patent Owner argues that Ogawa does not disclose an optical grade
fabric. PO Resp. 22–25. Patent Owner contends that fibers at the lower end
of the denier range recited in Ogawa are in fact nanofibers and not
microfibers and that materials made with nanofibers would not be a suitable
optical grade fabric. Id. at 22–23. Patent Owner also contends that there is
no data in Ogawa to show that the material disclosed is an optical grade
fabric. Id. at 24. Patent Owner also points to the fact that Ogawa does not
specifically mention wiping a display screen despite the fact that computer
display screens were well-known at the time Ogawa was filed. Id.
Petitioner responds by contending that Patent Owner’s arguments
regarding the denier range disclosed in Ogawa only apply to the lower end
of the recited range and that fabrics made with fibers at the upper range
would be optical grade fibers. Reply 13. Petitioner also contends that Ogawa
is presumed to be enabled and the lack of data is not fatal. Id. at 14.
Petitioner contends that Patent Owner has failed to put forward any evidence
to show that the fabrics of Ogawa would not work as described in Ogawa.
Id. Petitioner also contends that one skilled in the art would understand that
Ogawa’s recitation of glassware would include a computer display screen.
Id.
IPR2020-00689
Patent 6,195,831 C1
21
We have considered the arguments presented by the parties and the
evidence of record and conclude that Petitioner has shown that Ogawa
discloses this limitation.
Ogawa discloses that it “is more preferable if the wipe part is formed
of woven/knit microfiber fabric, i.e., woven/knit fabric primarily consisting
of a microfiber yarn of 0.2 to 0.00001 denier, wherein at least the microfiber
is entwined between and within the threads of said woven/knit fabric.” Ex.
1006 ¶ 4. Ogawa also discloses that the wipe part is used to clean dust and
smudges from glassware. Id. ¶ 1. These properties are the same as materials
identified by Patent Owner during the Reexam as optical grade fabrics. See
Ex. 1004, 410–416, 601–618. The parties’ textile experts agree that fabrics
made with fibers at the upper range of denier recited in Ogawa can be
optical grade fabrics. Ex. 1027, 89; Ex. 1028 ¶ 35.
Patent Owner contends that Ogawa does not disclose an optical grade
fabric as fabrics made with fibers having a denier at the lower end to the
range recited in Ogawa could not be used to clean glass or a display screen.
PO Resp. 23–24 (citing Ex. 2005 ¶¶ 99–101). Patent Owner contends that
fibers at the lower end of the range recited in Ogawa are nanofibers that
cannot be fabricated into a useful fabric and that any such fabric could not
be successfully used to clean an optical surface. Id.
We are not persuaded by Patent Owner’s arguments. While Patent
Owner may be correct that nanofiber materials cannot be used to create an
optical grade fabric, as discussed above, the higher end of the range overlaps
with the denier range found in microfiber materials that were known to be
optical grade fabrics. In addition, Ogawa teaches that the fabrics should act
to clean glassware of dust and smudges. We agree with Petitioner’s experts
that one skilled in the art would understand this to be an optical grade fabric.
IPR2020-00689
Patent 6,195,831 C1
22
See Ex. 1005 ¶ 42; Ex. 1022 ¶¶ 34–35; Ex. 1028 ¶¶ 32–33. Disclosure of at
least some fabrics which are optical grade fabrics is sufficient to establish
anticipation. See In re Sasse, 629 F.2d 675, 682 (CCPA 1980) (disclosure of
at least one compound falling within the claims anticipates the claims.)
d) a selected quantity of stuffing material within said at least one inner
chamber so as to provide said doll-like figure with a three dimensional
shape which is squeezable for providing a pliant cleaning tool for wiping a
display screen
Petitioner contends that Ogawa discloses this limitation. Pet. 30.
Petitioner contends that Ogawa discloses a three dimensional doll-like figure
that comprises an inner chamber filled with stuffing. Id. (citing Ex. 1005
¶¶ 43–44; Ex. 1006 ¶¶ 5–6). Petitioner contends that this tool of Ogawa is
squeezable as Ogawa discloses that the tool can be gripped and that the tool
is filled with a soft material. Id. (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 1).
Patent Owner contends that Ogawa is silent as to whether the tool is
squeezable. PO Resp. 26. Patent Owner contends that the fact that the tool
can be gripped does not mean that the tool is squeezable or pliant. Id. (citing
Ex. 2008 ¶ 108).
Petitioner responds that while Ogawa does not use the word
squeezable, “Ogawa teaches a stuffed animal, which a POSITA would know
to inherently be squeezable.” Reply 16 (citing Ex. 1022 ¶ 38). Petitioner
contends that Ogawa discloses that the tool is filled with cushioning material
and that one skilled in the art would understand that the use of cushioning
material would result in a tool that is squeezable. Id. (citing Ex. 1006 ¶ 6;
Ex. 1005 ¶¶ 38, 40–41).
Patent Owner responds by arguing that Petitioner has improperly
raised a new argument regarding inherency. Sur-Reply 13. Patent Owner
also argues that Petitioner has not established the squeezability is an inherent
IPR2020-00689
Patent 6,195,831 C1
23
characteristic of the tool of Ogawa as the teachings with respect to toys is
not relevant to Ogawa’s tool. Id. at 13–14.
We have considered the arguments presented by the parties and the
evidence of record and find that Ogawa discloses this limitation.
Figure 1 of Ogawa, reproduced below, “shows a side view of the
wiping tool configured as a stuffed animal of an alligator.” Ex. 1006 ¶ 6.

Figure 1 of Ogawa showing a side view of a wiping tool.
Ogawa discloses that the stuffed animal is filled with synthetic fiber
or cushioning material. Id. We agree with Mrs. Ryan that one skilled in the
art reading that the tool of Ogawa comprises a stuffed animal filled with
either fiber or cushioning material would conclude that the tool was
squeezable. See Ex. 1022 ¶¶ 38–39.
Patent Owner contends that Ogawa does not disclose a squeezable
tool as Ogawa never mentions that the tool is squeezable. PO Resp. 26.
Patent Owner contends that the term grip part as used in Ogawa does not
mean that the tool is squeezable. Id. We are not persuaded by this argument.
While we agree with Patent Owner that Ogawa does not use the term
squeezable, Ogawa describes the tool as a stuffed animal. Ex. 1006 ¶ 6;
Ex. 1005 ¶ 43; Ex. 2022 ¶¶ 38–39. Ogawa also teaches that the tool is filled
IPR2020-00689
Patent 6,195,831 C1
24
with a cushioning material, further indicating that the tool is squeezable.
Ex. 1006 ¶ 6; Ex. 1005 ¶ 43; Ex. 2022 ¶¶ 38–39. Thus while Ogawa does
not use the term squeezable, we find that one skilled in the art, reading
Ogawa in its entirety would envision a tool that is squeezable.
Patent Owner contends that analogies to plush toys are improper as
Ogawa is directed to a tool and not a toy. Sur-Reply 14. Patent Owner points
to the fact that Ogawa never uses the term toy but does refer to the claimed
object as a tool multiple times. Id. at 12. Again, we do not agree with this
argument.
Ogawa describes the tool shown in the figures as a “stuffed animal.”
Ex. 1006 ¶ 6. Like the claimed doll-like figure, the tool of Ogawa is formed
from a plurality of strips of fabric and then filled with a stuffing material. Id.
Given the similarity of the two devices and the fact that Ogawa describes the
tool as a stuffed animal, we find that, like the present invention, the tool of
Ogawa can be made “in accordance with stuffed or under-stuffed toy sewing
techniques well known in the art.” Ex. 1001, col. 3, ll. 10–12; Ex. 1006 ¶ 6.
Thus, we find Petitioner’s reliance on practices found in the stuffed toy
industry to be proper.
With respect to Patent Owner’s contention that Petitioner has raised a
new argument with respect to inherency, we do not find this to be a new
argument. In the Petition, Petitioner argues that the teachings of Ogawa
showing that the tool was a stuffed animal filled with a soft material was at
least part of the basis for contending that the tool of Ogawa was squeezable.
Pet. 30. Thus, while not couched specifically in terms of inherency, it is
clear that Petitioner was relying on Ogawa’s disclosure that the tool was a
stuffed animal filled with a soft filling coupled with the disclosure that the
tool can be gripped as proof that the tool was squeezable. Id.
IPR2020-00689
Patent 6,195,831 C1
25
Based on the foregoing, we conclude that Ogawa discloses the
limitation “a selected quantity of stuffing material within said at least one
inner chamber so as to provide said doll-like figure with a three dimensional
shape which is squeezable for providing a pliant cleaning tool for wiping a
display screen.”
e) wherein another of said strips of fabric material is a non-optical
grade fabric material.
Petitioner contends that Ogawa discloses this limitation. Pet. 31.
Petitioner contends that Ogawa discloses using a non-microfiber fabric for
the grip part. Id. (citing Ex. 1006 ¶¶ 2–6; Ex. 1005 ¶¶ 45–46).
Patent Owner does not offer any arguments regarding this claim
limitation. See PO Resp. 14–27.
We have considered the argument presented by Petitioner and the
evidence of record and find that Ogawa discloses this limitation.
Ogawa discloses that the tool comprises a regular textile material such
as a woven or knit fabric. Ex. 1006 ¶¶ 2, 6. We agree with Mrs. Ryan that
this comprises a strip of fabric material that is a non-optical grade fabric
material. Ex. 1005 ¶ 46.
f) Conclusion
Based on the foregoing, we conclude that Petitioner has established by
a preponderance of the evidence that claim 15 is unpatentable as anticipated
by Ogawa.
E. Ground 2 — Obviousness based on Ogawa and Masahiro
Petitioner contends that the subject matter of claim 15 would have
been obvious to one of ordinary skill in the art at the time the invention was
made over Ogawa combined with Masahiro. Pet. 31.
Patent Owner disagrees. PO Resp. 27.
IPR2020-00689
Patent 6,195,831 C1
26
a) Masahiro
Masahiro is a Japanese laid open patent application published April
23, 1996. Ex. 1013, 1. Masahiro teaches a wiping cloth to clean various
surfaces including CRT display screens. Id. ¶ 1. The cloth disclosed in
Masahiro comprises a non-woven reduced silk material. Id. ¶ 9. Masahiro
teaches that the silk material cleans surfaces better than either chamois or
microfiber materials. Id. ¶¶ 6–8.
b) Analysis
Petitioner contends that, to the extent the preamble of claim 15 is
limiting, Ogawa teaches this limitation either alone or in combination with
Masahiro. Pet. 31–38. Petitioner contends that Ogawa teaches a three
dimensional wiping tool in the shape of an alligator, pig, whale, or ladybug.
Id. at 32 (citing Ex. 1006 ¶¶ 1–2, 4–6). Petitioner contends that Ogawa
teaches that the wiping tool can be used to clean glass surfaces and that one
skilled in the art would understand that many display screens are glass
surfaces. Id. at 32–33 (citing Ex. 1006 ¶¶ 1–2; Ex. 1005 ¶ 37). Petitioner
contends that even if Ogawa does not teach wiping the surface of a display
screen, that element is taught by Masahiro. Id. at 33–34 (citing Ex. 10013
¶¶ 1, 5, 11; Ex. 1005 ¶ 55).
Petitioner contends that one skilled in the art would have been
motivated to combine the teachings of Ogawa and Masahiro to enhance the
ability of the wiping tool to clean water spots as well as remove fat and oil
from display screens. Id. at 34 (citing Ex. 1006 ¶¶ 1–2,4–6; Ex. 1007 ¶¶ 5,
10–11; Ex. 1005 ¶ 55).
Patent Owner contends that Masahiro does not address several
deficiencies in Ogawa including “(1) a stuffed inner chamber formed in part
by an optical grade fabric; (2) the use of an optical grade fabric for cleaning
IPR2020-00689
Patent 6,195,831 C1
27
display screens; or (3) a squeezable figure.” PO Resp. 29–30. Patent Owner
also contends that Petitioner has not shown a motivation to combine the
teachings of Ogawa with those of Masahiro. Id. at 30.
As discussed above, we have found that Ogawa teaches the limitation
relating to an inner chamber formed in part by an optical grade material and
that the tool of Ogawa is squeezable. See Sections II.D.2(c) and II.D.2(d)
supra. Therefore, we focus our analysis on the issues of whether Masahiro
teaches an optical grade fabric and whether Petitioner demonstrated a
motivation to combine the teachings of Ogawa and Masahiro.
(1) Optical Grade Fabric
Petitioner contends that, to the extent that Ogawa does not teach or
suggest the use of an optical grade fabric, Masahiro teaches this limitation.
Pet. 36. Petitioner contends that Masahiro teaches a silk fabric that can be
used to clean optical lenses and display screen surfaces. Id. (citing Ex. 1013
¶ 5).
Patent Owner contends that, based on the teachings of Masahiro, the
fabric describes would have a hard surface and would not yield an optical
grade fabric. PO Resp. 31–32 (citing Ex. 2005 ¶¶ 117–120).
Petitioner responds that Patent Owner’s analysis of Masahiro ignores
the plain teaching of Masahiro which is that the fabric can be used to clean
display screens without scratching. Reply 18 (citing Ex. 1013 ¶¶ 2, 11).
Petitioner also contends that Patent Owner’s analysis ignores the softening
step taught by Masahiro. Id. at 18–19 (citing Ex. 1013 ¶¶ 14–15). Petitioner
contends that the softening process taught by Masahiro would render the
fabric suitable for use as an optical grade fabric. Id. (citing Ex. 1013 ¶¶ 11,
15; Ex. 1028 ¶¶ 48–56).
IPR2020-00689
Patent 6,195,831 C1
28
Patent Owner argues that Petitioner’s evidence regarding the softening
process should be given little weight as Petitioner’s expert has little
experience in the area and the disclosure in Masahiro gives few details about
the process. Sur-Reply 18–22.
We have considered the arguments presented by the parties and the
evidence of record and find that Masahiro teaches an optical grade fiber.
Masahiro teaches a wiping cloth that can be used to wipe “glasses,
cameras, etc., precious metal, car window glass, or CRT display screens.”
Ex. 1013 ¶ 1. Masahiro also teaches that the fabric disclosed herein is
subject to a softening treatment and that the wiping cloths must have a
certain level of softness to prevent scratching the lens surface. Id. ¶¶ 2, 15.
We agree with Dr. Thompson that Masahiro teaches an optical grade fabric.
Ex. 1028 ¶¶ 50–52.
Patent Owner contends that the process of Masahiro would result in a
fabric with a hard surface making in unsuitable for use as an optical grade
fabric. PO Resp. 31–32. Patent Owner’s contention is supported by the
testimony of Dr. Adanur whom testified that the process used to make the
fabric described in Masahiro would result in a hard fabric that would not be
used to clean display screens. Ex. 2005 ¶¶ 120–121.
We have considered Patent Owner’s arguments, the testimony of
Dr. Adanur, and the evidence of record, but we are not persuaded that the
process of Masahiro would result in a hard fabric. Dr. Adanur’s analysis
focuses on the first part of the process used in Masahiro, the formation of the
base fabric. See id. ¶¶ 120–121. While Dr. Adanur discusses the softening
process of Masahiro, he only offers a conclusory statement that the process
IPR2020-00689
Patent 6,195,831 C1
29
does not soften the fabric. Id. ¶ 123;6 see In re Buchner, 929 F.2d 660, 661
(Fed. Cir. 1991) (“[A]n expert’s opinion on the ultimate legal issue [of
enablement] must be supported by something more than a conclusory
statement.”).
Patent Owner contends that Petitioner is relying on the presumption
that Masahiro is enabled and that the presumption is limited to patent
prosecution. Sur-Reply 15. We disagree. As our reviewing court has held,
an accused infringer should be similarly entitled to have the
district court presume the enablement of unclaimed (and
claimed) material in a prior art patent defendant asserts against a
plaintiff. Thus, a court cannot ignore an asserted prior art patent
in evaluating a defense of invalidity for anticipation, just because
the accused infringer has not proven it enabled.

Amgen, Inc. v. Hoesct Marion Rousel, Inc., 314 F.3d 1313, 1355 (Fed. Cir.
2003). We see no reason why this presumption should not also apply in the
present case.
Moreover, Dr. Thompson gives a detailed explanation to support his
opinion why the fabric in Masahiro would be an optical grade fabric. Ex.
1028 ¶¶ 48–56.
In an authorized post briefing submission (Paper 33), Patent Owner
brings our attention to our reviewing court’s decision in Raytheon Techs.
Corp. v. Gen. Elec. Co., 993 F.3d 1374 (Fed. Cir. 2021). We have
considered the decision of the court in reaching our determination, but it
does not alter our conclusion.

6 Most of Dr. Adanur’s testimony with respect to the softening process
involved distinguishing the process of Masahiro from the process described
in the ’831 patent. See Ex. 2005 ¶ 123.
IPR2020-00689
Patent 6,195,831 C1
30
The issue before the court in Raytheon was whether the Board had
properly found an asserted reference was enabled. 993 F.3d at 1380. In
Raytheon, the patent owner presented extensive, unrebutted evidence that the
primary reference was not enabled. Id. at 1382. Based on this uncontroverted
evidence, the court reversed the Board’s finding that the primary reference
was enabled and reversed the finding of unpatentability. Id.
The facts in the present case are significantly different than those in
Raytheon. As discussed above, Dr. Adanur’s analysis of Masahiro focused
almost exclusively on the first part of the process used to produce the fabric
of Masahiro and only offered a conclusory statement to address the softening
step. See Ex. 2005 ¶¶ 120–123. In addition, Dr. Thompson presented
extensive and persuasive testimony regarding the softening process of
Masahiro which rebutted Dr. Adanur’s testimony. Ex. 1028 ¶¶ 48–56.
Patent Owner contends that we should give more weight to Dr.
Adanur’s testimony as opposed to that of Dr. Thompson. Sur-Reply 2–5.
Patent Owner compares the experience and publications of Drs. Adanur and
Thompson and concludes that Dr. Thompson is neither a peer nor a
contemporary of Dr. Adanur. Id. at 3–4.
While we note that the Drs. Adanur and Thompson have had different
career paths, the relative experience of the two experts does not affect our
analysis. As discussed above, Dr. Adanur did not adequately address the
softening process of Masahiro, in contrast with the analysis done by Dr.
Thompson.
Based on the foregoing, we find that Masahiro teaches an optical
grade fabric.
IPR2020-00689
Patent 6,195,831 C1
31
(2) Motivation to Combine
Petitioner contends that one skilled in the art would have been
motivated to substitute the fabric of Masahiro for the wiping fabric of
Ogawa as both fabrics are optical grade fabrics and it involves substituting
one know fabric for another for the same purpose. See Pet. 37–38.
Patent Owner contends that one skilled in the art would not have
substituted the fabric of Masahiro for the wiping fabric of Ogawa as the
fabric of Masahiro would be too hard and would have a degrading effect on
a display screen. PO Resp. 34. Patent Owner also contends that one skilled
in the art would not have been motivated to use the fabric of Masahiro for
the tool of Ogawa because the fabric of Masahiro would be too expensive.
Id.
Patent Owner further contends that one skilled in the art would not
have a reasonable expectation of success. Id. at 35. Patent Owner argues that
one skilled in the art would not expect the fabric of Masahiro to work given
the fact that the fabric would be stiff or hard. Id. Patent Owner also contends
that the lack of any comparative data would lead one skilled in the art to
doubt whether the fabric would work in the tool of Ogawa. Id.
Petitioner responds that one skilled in the art would have been
motivated to use the fabric of Masahiro in the tool of Ogawa because
Masahiro teaches that the fabric is an improvement over other fabric used in
the art. Reply 19. Petitioner also contends that the non-woven fabric of
Masahiro would actually be cheaper to make than the woven fabric of
Ogawa. Id. at 20.
Petitioner contends that, given the teachings of Masahiro, one skilled
in the art would have had a reasonable expectation of success. Id. at 21.
IPR2020-00689
Patent 6,195,831 C1
32
Petitioner contends that there is no basis for skepticism opined by Dr.
Adanur. Id.
In its Sur-Reply, Patent Owner again contends that one skilled in the
art would understand that the fabric of Masahiro would be stiff and hard and
therefore would not expect to successfully use this fabric in the tool of
Masahiro. Sur-Reply 18–19. Patent Owner argues that we should give little
weight to the testimony of Dr. Thompson regarding the softening process,
again pointing to Dr. Thompson’s credentials. Id. at 19–21.
We have considered the arguments presented by the parties and the
evidence of record and find that Petitioner has the better argument.
Masahiro teaches “a wiping cloth being used to wipe lenses of glasses,
cameras, etc., precious metals, car window glass, or CRT display screens.”
Ex. 1013 ¶ 1. Masahiro teaches that the cloth of the invention, when
compared with the prior art, provides “an inexpensive wiping cloth made of
silk that can successfully remove fatty-oil components adhered to a lens,
etc.” Id. ¶¶ 6–8. Masahiro also teaches as follows:
Moreover, because the aforementioned reduced silk is
formed into a nonwoven fabric, the manufacturing cost is low.
Furthermore, silk has an extremely high level of moisture
absorbent properties and thus contains a moisture content of
approximately 13% in the normal atmospheric environment.
Therefore, silk is less likely to produce static electricity and
thus demonstrates excellent performance when used as a
cleaning wipe for CRT-display screens.

Id. ¶ 11.
Given that both Ogawa and Masahiro relate to cleaning glass objects
and Masahiro teaches the advantages of the fabric disclosed therein over
prior art fabrics, we conclude that one skilled in the art would have been
motivated to use the fabric of Masahiro in the wiping tool of Ogawa. In
IPR2020-00689
Patent 6,195,831 C1
33
addition, as Petitioner points out, the use of the fabric of Masahiro in the tool
of Ogawa involves substitution of one known element for another. See Pet.
37–38.
We are not persuaded by Patent Owner’s argument that one skilled in
the art would not have been motivated to use the fabric of Masahiro in the
tool of Ogawa because of the increased cost of using the fabric. PO Resp.
34. While Dr. Adanur opined that production of the fabric of Masahiro
would be more expensive due to higher raw material and equipment costs,
Dr. Adanur offers no evidence to support this conclusion. Ex. 2005 ¶ 129.
Dr. Thompson, on the other hand, opined that the production cost of the
fabric of Masahiro would actually be lower than the woven fabric of Ogawa.
Ex. 1028 ¶ 58. Dr. Thompson testified:
Regarding the cost of Masahiro, a textile engineer reading
Masahiro would recognize that the non-woven silk fabric is not
expensive. Ex. 1013, Abstract, ¶¶7-8. While Dr. Adanur may be
correct that silk is a more expensive source fiber than, say,
polyester, the non-woven nature of Masahiro’s fabric could
offset any expense created by a more expensive source fiber.
Non-woven fabrics are inherently cheaper to produce than woven
fabrics because they do not need to be weaved. This fact is
certainly something Dr. Adanur would recognize, considering
the handbook he cited and authored says so. Ex. 2017, p. 141-
142, Table 4.7. (“Cost advantages have been one of the many
reasons [to use nonwoven fabrics].”). An important aspect of the
choice of a nonwoven fabric is the relative simplicity of the
manufacturing process, since the fibers are directly combined
into a fabric in a single processing step at high speeds (often
hundreds or even thousands of yards per hour), while knit fabrics
or woven fabrics require combining many individual yarns using
complicated looms or knitting machines to interlace the yarns
into fabrics at much lower speeds (only a few yards per hour).
Ex. 2017, p. 142 (Tables 4.5 and 4.6); Ex. 1036, p. 13. So, even
if silk is a more expensive source fiber than another synthetic
fiber, the added source material cost almost certainly mitigates
IPR2020-00689
Patent 6,195,831 C1
34
the added cost, if not produces a cheaper fabric than a woven
microfiber. Id. It seems that Dr. Adanur did not consider the non-
woven nature of Masahiro when declaring that he was skeptical
that Masahiro’s fabric was “inexpensive”. Ex. 2005, ¶129 citing
Ex. 1013, Abstract. When the non-woven nature of Masahiro is
properly considered, there is absolutely no reason to doubt the
claim that the fabric generated is inexpensive.
Id.
As seen from the testimony above, Dr. Thompson provides not only a
detailed explanation for his opinion, but supports his opinion with citations
to a text authored by Dr. Adanur as well as another reference on textile
manufacture. Id. (citing Ex. 1036; Ex. 2017).
Moreover, even if the fabric of Masahiro were more expensive, one
skilled in the art would have still been motivated to use the Masahiro fabric
in the Ogawa tool to take advantage of the superior properties recited in
Masahiro. See Ex. 1022 ¶ 49; Ex. 1028 ¶ 59.
Patent Owner contends that we should give little weight to Dr.
Thompson’s testimony vis-a-vis Dr. Adanur’s testimony. Sur-Reply 3–5.
Patent Owner contends that Dr. Thompson’s credentials are not the
equivalent of Dr. Adanur’s. Id. We are not persuaded by this argument.
As discussed above, we find Dr. Thompson’s testimony with respect
to motivation to combine the references credible based on the extensive
testimony he presented as well as the fact that his position is supported by
additional evidence and the testimony of Mrs. Ryan. Ex. 1028 ¶¶ 58–59; Ex.
1022 ¶ 29; Ex. 1036; Ex. 2017.
Dr. Adanur’s opinions with respect to motivation to combine are
based on the belief that the fabric of Masahiro would be too hard or too
expensive. Ex. 2005 ¶¶ 128–129. As discussed above, in reaching his
conclusion that the fabric of Masahiro would be too hard, Dr. Adanur failed
IPR2020-00689
Patent 6,195,831 C1
35
to properly address the softening step raised taught by Masahiro. In addition,
Dr. Adanur’s opinion regarding cost is unsupported by any analysis or
evidence and is limited to a conclusory statement that “the reduced silk
fabric would make the product more expensive due to the high material cost
and the extra processing requirements.” Id. ¶ 129.
Patent Owner’s argument that one skilled in the art would not have
had a reasonable expectation of success is also unpersuasive. Patent Owner
contends that one skilled in the art would not find the statements in Masahiro
about its applicability for use on a display screen credible because of the
lack of data to support those assertions. PO Resp. 35. Patent Owner contends
that this statement coupled with the fact that one skilled in the art would
understand that the fabric in Masahiro would be stiff, would lead one skilled
in the art to lack a reasonable expectation of success. Id.
Patent Owner’s argument is based, at least in part, on the assumption
that the fabric of Masahiro would be hard or stiff. However, as discussed
above, that conclusion by Dr. Adanur fails to persuasively address the
softening step of Masahiro.
With respect to a lack of a reasonable expectation of success based on
the teachings of Masahiro, Dr. Adanur testified that one skilled in the art
would be skeptical of the statements in Masahiro because the example
appears to be prophetic and there is no test data reported. Ex. 2005 ¶ 133. In
contrast, Dr. Thompson provided a detailed explanation of why one skilled
in the art would understand that the fabric produced by Masahiro would be
soft and therefore would have a reasonable expectation of success. Ex. 1028
¶¶ 51–56, 60.
Based on the foregoing, we conclude that Petitioner has established by
a preponderance of the evidence that one skilled in the art would have been
IPR2020-00689
Patent 6,195,831 C1
36
motivated to combine the teachings of Ogawa and Masahiro and would have
had a reasonable expectation of success in doing so.
c) Conclusion
We conclude, based on the above analysis, that Petitioner has
demonstrated by a preponderance of the evidence that claim 15 is
unpatentable as obvious over Ogawa combined with Masahiro.
F. Ground 3 — Obviousness based on Ogawa and Cherk
Petitioner contends that the subject matter of claim 16 would have
been obvious to one of ordinary skill in the art at the time the invention was
made over Ogawa combined with Cherk. Pet. 38. Patent Owner contends
that claim 16 would not be obvious over Ogawa combined with Cherk. PO
Resp. 36–37.
1. Cherk
Cherk teaches a stuffed toy animal. Ex. 1008, Abstr. The toy of Cherk
comprises several prices of material sewn together to form a three
dimensional shape. Id. at col. 2, ll. 22–43. Cherk teaches that the toy is
partially filled with stuffing or filler. Id. at col. 3, ll. 45–50; Figure 3. Cherk
teaches that by partially filling the toy “sufficient surface to surface contact
of the figure toy can be achieved in a great number of positions without
adversely affecting the ability of the toy to remain stable in the position
preselected by a child user.” Id. at col. 1, ll. 55–59. Cherk also teaches that
under-filling the toy allows the toy to be stable when placed in a variety of
positons. Id. at col. 1, ll. 43–52; col. 3, l. 61–col. 4, l. 3.
2. Claim 16
As noted above, claim 16 depends from claim 11. Ex. 1002, col. 2, l.
12. Claim 11 is similar to claim 6 with the additional limitation that the doll-
like figure is under-stuffed. Ex. 1001, col. 7, l. 1. Like claim 15, claim 16
IPR2020-00689
Patent 6,195,831 C1
37
adds the limitation that another of said plurality of strips of fabric material is
a nonoptical grade fabric material. Ex. 1002, col. 2, ll. 12–14.
3. Analysis
With the exception of the limitation calling for the toy to be under-
stuffed, Petitioner relies on the same teachings of Ogawa for the elements of
claim 16 as it did for claim 15 as set forth above. Pet. 40–44. Petitioner
contends that Cherk teaches under-stuffing a doll-like toy. Id. at 40–42
(citing Ex. 1005 ¶ 73; Ex. 1008, col. 1, ll. 43–60, col. 3, l. 45–col. 4, l. 7.)
Petitioner contends that one skilled in the art would have been motivated to
modify the tool of Ogawa to partially stuff the toy as taught by Cherk to
“(1) make the wiping tool easier to grip, (2) better protect the wipe part from
dust and dirt, and/or (3) increase the cleaning capabilities of the wipe part
through increased surface-to-surface contact with the surface being cleaned.”
Pet. 41–42 (citing Ex. 1005 ¶ 74).
Patent Owner contends that Cherk does not remedy the deficiencies of
Ogawa in that Cherk does not teach or suggest an inner chamber formed
from an optical grade fabric, “the use of an optical grade fabric to form any
part of the toy animal figure,” or that the toy is squeezable. PO Resp. 38
(citing Ex. 2005 ¶¶ 143–144). Patent Owner also contends that one skilled in
the art would not have been motivated to combine the teachings of Ogawa
with those of Cherk. Id. at 38–45.
As discussed in Section II.D.2 above, we have already determined that
Ogawa discloses all of the elements of claim 15, which parallel the elements
of claim 16. However, unlike claim 15, claim 16 also recites an “under-
stuffed doll-like figure.” Therefore we shall focus our analysis on whether
Cherk teaches an “under-stuffed doll-like figure” and whether one skilled in
IPR2020-00689
Patent 6,195,831 C1
38
the art would have been motivated to combine the teachings of Ogawa and
Cherk.
a) Under-Stuffing
Petitioner contends that Cherk teaches a stuffed toy that is under-
stuffed. Pet. 41. “Specifically, Cherk teaches a toy whale partially filled with
filler so that the toy can be placed and remain stable in a variety of different
positions.” Id. (citing Ex. 1008, col. 3, l. 45–col. 4, l. 7; Ex. 1005 ¶ 73).
Patent Owner has not presented any arguments or evidence to
contradict Petitioner’s contentions with respect to the teachings of Cherk.
See PO Resp. 36–46.
We have considered Petitioner’s contentions and the evidence of
record and find that Cherk teaches an under-stuffed stuffed toy. Referring to
Figure 3, reproduced below, Cherk teaches “the figure toy is only partially
filled with the filler material.” Ex. 1008, col. 3, ll. 45–47.

Figure 3 of Cherk showing a cross-section of a partially stuffed toy.
b) Motivation to Combine Ogawa and Cherk
Petitioner contends:
A POSA would be motivated to modify Ogawa to
incorporate the partial stuffing design of Cherk. Ex. 1005, ¶ 74.
IPR2020-00689
Patent 6,195,831 C1
39
Indeed, modifying Ogawa with Cherk applies a known technique
(partial stuffing) to a known device ready for improvement (the
wiping tool of Ogawa) to yield predictable results (the wipe tool
of Ogawa would be partially stuffed with stuffing material). KSR,
550 U.S. at 417; Ex. 1005, ¶ 74. Specifically, a POSA would
recognize that partially stuffing the wiping tool of Ogawa would
predictably (1) make the wiping tool easier to grip, (2) better
protect the wipe part from dust and dirt, and/or (3) increase the
cleaning capabilities of the wipe part through increased surface-
to-surface contact with the surface being cleaned. Ex. 1005, ¶ 74.
Pet. 41–42.
Patent Owner contends that Petitioner has not provided “any
‘articulated reasoning’ or ‘rational underpinning’ to support combining
Ogawa and Cherk. Ty’s alleged motivations are based on nothing more than
hindsight.” PO Resp. 38. Patent Owner contends that Ogawa teaches a filled
wiping tool and that there is no suggestion or teaching to partially fill the
tool. Id. at 39. With respect to Cherk, Patent Owner contends that Cherk
does not provide any motivation to apply teachings from a stuffed toy to a
cleaning tool. Id. at 40.
Patent Owner contends that while Petitioner has listed three potential
reasons to modify Ogawa, Petitioner has not stated why the tool of Ogawa
needs to be modified. Id. Patent Owner contends that there is no reason to
modify the tool of Ogawa to make it easier to grip as Ogawa already teaches
that it can be gripped. Id. at 40–41. Patent Owner contends that the passage
in Cherk cited by Petitioner relates to positioning the toy and not gripping
the toy. Id. at 41–43.
Patent Owner contends that one skilled in the art would not under-
stuff the tool of Ogawa to improve stability and protect the tool from dust as
Ogawa already teaches that the tool has these characteristics. Id. at 43–44.
IPR2020-00689
Patent 6,195,831 C1
40
Finally, Patent Owner contends that Petitioner’s argument with
respect to increasing surface area is misleading. Id. at 44–45. Patent Owner
contends that Cherk’s discussion of increased surface area relates to
allowing the toy of Cherk to assume various positions and does not relate to
increasing surface to surface contact. Id.
We have considered the arguments presented by the parties and the
evidence of record and find that one skilled in the art would have been
motivated to combine the teachings of Ogawa with those of Cherk to
produce an under-stuffed doll-like figure.
Cherk teaches
As seen in FIG. 6, the significant aspect of preselecting the
partial amount of filler permits animated placement of the figure
toy by a child user. In the exemplary figure toy 10 illustrated, a
child playing with the toy merely need grasp the whale 10 by the
tail whereby the filler 30 "packs" into the main body portion.
Ex. 1008, col. 3, ll. 61–66. We agree with Mrs. Ryan that this teaching
would lead one skilled in the art to understand that partial filling allows one
to more easily grasp the toy. Ex. 1005 ¶ 75; Ex. 1022 ¶ 51.
Dr. Adanur opines that Cherk does not teach that the toy of Cherk is
easier to grasp because the recited portion of Cherk teaches that the portion
grasped by the child has no stuffing present. Ex. 2005 ¶ 156. We are not
persuaded by Dr. Adanur’s testimony.
As Mrs. Ryan points out, the lack of filling is a result of under-
stuffing the toy. Ex. 1022 ¶ 51. As Mrs. Ryan explains, the region with little
or no stuffing is more easily grasped. Id.
Cherk also teaches
A further object of the invention is to provide a soft figure form
toy wherein the volumetric relationship of a filler material to the
volumetric capacity of the form defining cover member is such
IPR2020-00689
Patent 6,195,831 C1
41
that sufficient surface to surface contact of the figure toy can be
achieved in a great numer [sic] of positions without adversely
affecting the ability of the toy to remain stable in the position
preselected by a child user.
Ex. 1008, col. 1, ll. 52–59. We agree with Mrs. Ryan that the under-stuffed
toy will have greater surface to surface contact and provide increased
stability. Ex. 1005 ¶¶ 74–76; Ex. 1022 ¶¶ 52–54.
Dr. Adanur disputes Mrs. Ryan’s conclusion stating that the
discussion in Cherk relating to surface to surface contact has nothing to do
with increasing surface to surface contact but related to stability of the toy
when in an upright orientation. Ex. 2005 ¶ 161. We do not find Dr. Adanur’s
testimony persuasive. While the portion of Cherk analyzed by Dr. Adanur
focuses on positioning the toy in an upright position where the belly of the
toy in not in contact with any other surface, the disclosure of Cherk is not
limited to that example. “It is well settled that a prior art reference is relevant
for all that it teaches to those of ordinary skill in the art.” In re Fritch, 972
F.2d 1260, 1264 (Fed. Cir. 1992).
As seen from the passage cited above, Cherk discusses the concept of
increased surface to surface contact broadly, not just in the context of Figure
4. Cherk teaches that the toy can be arranged in a variety of different
positions. Ex. 1008, col. 1, ll. 56–57. As shown below, the figures of Cherk
disclose several positions for the toy including lying flat. Id. at Fig. 1.
IPR2020-00689
Patent 6,195,831 C1
42

Figures 1 through 6 of Cherk showing various views of a stuffed toy.

Patent Owner contends that the tool of Ogawa is already stable and
therefore there would be no motivation to incorporate the teachings of
Cherk. PO Resp. 43. We are not persuaded by this argument.
Mrs. Ryan testified that, as shown in the Figure 1, Ogawa discloses a
tool when the filling is such that the tool has a rounded shape, exposing the
bottom of the tool. Ex. 1022 ¶ 53.
IPR2020-00689
Patent 6,195,831 C1
43

Figure 1 of Ogawa showing a side view of the cleaning tool.
Cherk teaches that under-stuffing increases the stability of the toy. Ex.
1008, col. 1, ll. 52–60; col. 3, l. 45–col. 4, l. 7. Thus one skilled in the art
would be motivated to under-stuff the tool of Ogawa to improve the stability
of the tool. Ex. 1022 ¶ 53.
Patent Owner contends that one skilled in the art would not be
motivated to under-stuff the tool of Ogawa as taught by Cherk because
Ogawa teaches that the tool is entirely filled with fiber or cushioning. PO
Resp. 39. Patent Owner contends that Cherk is directed to a toy, not a
cleaning tool, and there is nothing in Cherk that would lead one to apply its
teaching to a cleaning tool. Id. at 40.
We are not persuaded by this argument. While Ogawa states that the
tool is filled with a fiber or cushioning, none of the passages cited by Patent
Owner states that it is completely filled. See, e.g., Ex. 1006 ¶ 6. Moreover,
Petitioner does not rely on the teachings of Ogawa for under-stuffing the
tool, that teaching is provided by Cherk.
With respect to the applicability of Cherk, as discussed above, Ogawa
teaches that the tool is in the form of a stuffed animal. Ex. 1006 ¶¶ 5–6.
Cherk discloses the fabrication of a stuffed animal. Ex. 1008, col. 1, ll. 4–9.
Thus, the teachings of Cherk would be applicable to the tool of Ogawa.
IPR2020-00689
Patent 6,195,831 C1
44
Based on the foregoing, we find that Petitioner has established by a
preponderance of the evidence that one skilled in the art would have been
motivated to combine the teachings of Ogawa with those of Cherk to
produce an under-stuffed doll-like figure.
4. Conclusion
We conclude that Petitioner has shown by a preponderance of the
evidence that claim 16 is unpatentable as obvious over Ogawa combined
with Cherk.
G. Ground 4 — Obviousness Over Ogawa Combined with Masahiro and
Cherk.
Petitioner contends that claim 16 is unpatentable as obvious over
Ogawa combined with Masahiro and Cherk. Pet. 44. Restating the
arguments presented with respect to Ground 2 above, Petitioner contends
that Ogawa combined with Masahiro teaches all of the elements of claim 16
with the exception of under-stuffing the tool. See Id. at 44–47. Petitioner,
incorporating the argument made with respect to Ground 3, contends that
Cherk teaches this limitation. Id. at 45–46.
In response, Patent Owner presents the same arguments presented in
opposition to Ground 3 above. PO Resp. 37–46.
For the reasons stated in Grounds 2 and 3 above, we find that
Petitioner has shown that claim 16 is unpatentable as obvious over Ogawa
combined with Masahiro and Cherk.
H. Unconstitutionality of this Proceeding
Patent Owner contends that this proceeding should be dismissed as
unconstitutional under Arthrex, Inc. v. Smith and Nephew, Inc., 941 F.3d
1320 (Fed. Cir. 2019). PO Resp. 46. Patent Owner contends that the remedy
set forth in Arthrex is ineffective and inapplicable. Id.
IPR2020-00689
Patent 6,195,831 C1
45
We do not reach Patent Owner’s Appointments Clause challenge
because the Supreme Court resolved the issue in United States v. Arthrex,
Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).
III. PETITIONER’S MOTION TO EXCLUDE
Petitioner has moved to exclude Patent Owner’s Expert’s Declaration
(Ex. 2005) as well as certain of Patent Owner’s exhibits. Paper 32, 1
(“PMTE”). Petitioner contends that Dr. Adanur’s Declaration should be
excluded as Dr. Adanur is not an expert in the relevant technology. PMTE 2.
Petitioner seeks to exclude certain exhibits as inadmissible. PMTE 6–14.7
A. Inadmissible Exhibits
Petitioner seeks to exclude Exhibits 2030–2034 on certain evidentiary
grounds including hearsay and that they constitute improper new evidence.
PMTE 6–14. We dismiss Petitioner’s motion as moot with respect to these
exhibits. We have not relied on any of Exhibits 2030–2034 in reaching our
decision with regards to the patentability of the challenged claims.
B. Dr. Adanur’s Declaration
Petitioner argues that we should exclude Dr. Adanur’s Declaration
(Ex. 2005) on the grounds that Dr. Adanur is not qualified in the pertinent
art. PMTE 3. Petitioner contends that the pertinent art is the field of plush
toy design. Id. at 4. Petitioner contends that Dr. Adanur’s experience is in
the area of textiles and not plush toy deign. Id. at 4–5.
Patent Owner contends that the pertinent art includes textiles and that
Dr. Adanur has extensive experience in the area of textiles. Paper 36, 1–2

7 Petitioner also filed a contested motion for leave to file errata pages for Dr.
Thompson’s deposition. (Paper 35). We dismiss that motion as moot as we
did not rely on that portion of Dr. Thompson’s deposition in reaching our
decision.
IPR2020-00689
Patent 6,195,831 C1
46
(“PMTE Opp.”) 1–2. Patent Owner also contends that even is the pertinent
art were limited to plush toys, Dr. Adanur has experience in that art. Id. at 3–
5. Finally, Patent Owner contends that Dr. Adanur’s qualifications go to the
weight given to his testimony rather than its admissibility. Id. at 5–6.
We have considered the arguments presented by the parties and the
evidence of record. We deny Petitioner’s motion with respect to Exhibit
2005.
While we agree with Petitioner that the pertinent art is plush toys, Dr.
Adanur has some experience in the field. See, e.g., Ex. 1027, 78–81. That
Dr. Adanur’s experience in the art is more limited than Mrs. Ryan’s
experience goes to the weight we give Dr. Adanur’s testimony, not whether
it should be excluded. See Patent Trial and Appeal Board Consolidated Trial
Practice Guide, November 2018.
C. Conclusion
For the reasons stated above, Petitioner’s Motion to Exclude is denied
in part and dismissed in part.
IV. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner has moved to exclude certain portions of Mrs. Ryan’s
second Declaration and Dr. Thompson’s declaration as well as portions of
Dr. Thompson’s deposition testimony. Paper 31, 1 (“POMTE”). Patent
Owner also seeks to exclude certain exhibits as hearsay. Id.
A. Mootness
We begin by dismissing certain portions of Patent Owner’s motion as
moot. In our Decision, we did not rely on paragraphs 36, 45, 47, and 48 of
Exhibit 1022; paragraphs 15–21, 30–33, 37, and 44–47 of Exhibit 1028,
pages 122–134 of Dr. Thompsons’ deposition or any of Exhibits 1030–1035.
IPR2020-00689
Patent 6,195,831 C1
47
We now consider the remaining portion of Patent Owner’s Motion to
Exclude.
B. Paragraph 49 of Exhibit 1022 and Paragraph 59 of Exhibit 1028
Patent Owner contends that we should exclude either paragraph 49 of
Mrs. Ryan’s Second Declaration (Ex. 1022) or paragraph 59 of Dr.
Thompson’s Declaration (Ex. 1028) as “inadmissible cumulative testimony.”
POMTE 6. Patent Owner contends that “[t]hese paragraphs are substantially
similar testimony regarding non-cost benefits of non-woven fabric.
Accordingly, they are cumulative and one of them should be excluded.” Id.
at 7.
Petitioner contends that the testimony of its two experts is not
cumulative. Paper 34, 5 (“POMTE Opp.”). Petitioner also contends that it is
proper to offer two experts as each brings a different background to the
issues at hand. Id. at 6. Petitioner contends that courts have permitted a party
to offer multiple experts on the same topic if they bring different
perspectives that can assist the trier of fact. Id.
Petitioner contends
Dr. Thompson’s analysis comes at the issues from a textile
engineering standpoint and focusing on the technical aspects of
the materials at issue as raised by Softbelly’s expert Dr. Adanur
in his declaration supporting Softbelly’s response. Ms. Ryan’s
analysis focuses on the way fabrics are chosen, used, and
understood in the plush toy design field to which the patent is
directed.
Id. at 9.
We have considered the arguments presented by the parties and the
relevant portions of the declarations and conclude that Patent Owner’s
Motion to Exclude should be denied with respect to paragraph 49 of Exhibit
1022 and paragraph 59 of Exhibit 1028.
IPR2020-00689
Patent 6,195,831 C1
48
While both paragraphs relate to the issue of whether cost alone would
be a factor in deciding whether to use the fabric of Masahiro in the tool of
Ogawa, as Petitioner points out, Petitioner’s experts approach the issue from
different perspectives. POMTE Opp. 9. Having testimony from different
perspectives assists the trier of fact. See, e.g., On Track Innovations Ltd. v.
T-Mobile USA, Inc., 106 F. Supp. 3d 369, 414 (S.D.N.Y. 2015) (“Experts
may opine on the same topic without being duplicative inasmuch as each
brings a different perspective from different fields of expertise.” (internal
quotations omitted)).
For this reason, Patent Owner’s Motion to Exclude either paragraph
49 of Exhibit 1022 or paragraph 59 of Exhibit 1028 is denied.
C. Conclusion
Patent Owner’s Motion to Exclude is denied in part and dismissed in
part.
V. CONCLUSION8
Weighing the evidence of the disclosures of the references, the
competing testimony, and the reasoning to combine the references, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 15 and 16 of the ’831 patent are unpatentable.

8 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).
IPR2020-00689
Patent 6,195,831 C1
49
We also deny in part and dismiss in part Petitioner’s Motion to
Exclude and Patent Owner’s Motion to Exclude.
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 15 and 16 are determined to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied
in part and dismissed in part;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied in part and dismissed in part; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

In summary:

Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
15 102 Ogawa 15
15 103(a) Ogawa, Masahiro 15
16 103(a) Ogawa, Cherk 16
16 103(a) Ogawa, Masahiro,
Cherk
16
Overall
Outcome
15, 16
IPR2020-00689
Patent 6,195,831 C1
50
For PETITIONER:
J. Aron Carnahan
Nathan Sportel
Michael Anderson
Philip Segrest
HUSCH BLACKWELL, LLP
Aron.carnahan@huschblackwell.com
Nathan.sportel@huschblackwell.com
Michael.anderson@huschblackwell.com
Philip.segrest@huschblackwell.com

For PATENT OWNER:
James Lovsin
Nicole Grimm
MCDONNELL BOEHNEN HULBERT & BERGHOFF, LLP
lovsin@mbhb.com
grimm@mbhb.com

Matthew Topic
LOEVY & LOEVY
matt@loevy.com