TY Inc. v. Softbelly's, Inc.

For PETITIONER: J. Aron Carnahan Nathan Sportel Michael Anderson Philip Segrest HUSCH BLACKWELL, LLP

For PATENT OWNER: James Lovsin Nicole Grimm MCDONNELL BOEHNEN HULBERT & BERGHOFF, LLP

Matthew Topic LOEVY & LOEVY

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

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

SCHNEIDER, ADMINISTRATIVE PATENT JUDGE.

I. INTRODUCTION

A. Background and Summary

TY Inc. ("Petitioner") filed a Petition requesting inter partes review of claims 15 and 16^[1] of U.S. Patent 6, 195, 831 CI (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.

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 (CD. Cal, filed Apr. 5, 2001);

Softbelly's, Inc. v. Tylnc, Case No. l:19-cv-06265 (N.D. Ill. filed Sept. 19, 2019); and

Softbelly's, Inc. v. Tylnc, Case No. l: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, 1. 66-col. 2, 1. 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.

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 dollike 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 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, U.S. 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

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 NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Atlas Powder Co. v. Irecolnc, 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 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 35U.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)).

B. Level of Ordinary Skill in...