YKK Corp. v. 3M Innovative Props. Co.

Before BARRY L. GROSSMAN, KEVIN W. CHERRY, and MATTHEW S. MEYERS, Administrative Patent Judges.

JUDGMENT

FINAL WRITTEN DECISION

DETERMINING SOME CHALLENGED CLAIMS UNPATENTABLE DENYING

PATENT OWNER'S REVISED CONTINGENT MOTION TO AMEND 35 U.S.C. § 318(A)

MEYERS, Administrative Patent Judge.

1. INTRODUCTION

A. Background and Summary

YKK Corporation ("Petitioner") filed a petition, on March 10, 2020, for inter partes review (Paper 1 ("Pet.")) challenging claims 1-20 of U.S. Patent No. 10, 165, 833 B2 (Ex. 1001, "the '833 patent"). See 35 U.S.C. § 311. 3M Innovative Properties Co. ("Patent Owner") timely filed a Preliminary Response to the Petition. Paper 7 ("Preliminary Response" or "Prelim. Resp.").

Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of all challenged claims on all grounds presented in the Petition. Paper 8 ("Inst. Dec."). After institution, Patent Owner filed a Patent Owner Response (Paper 15, "PO Resp.") as well as a Contingent Motion to Amend (Paper 16, "MTA"). Petitioner filed a Reply to Patent Owner's Response (Paper 19, "Pet. Reply"), and an opposition to Patent Owner's Motion to Amend (Paper 20, "MTA Opp.").

On April 8, 2021, pursuant to Patent Owner's request (see MTA 2), we issued Preliminary Guidance on Patent Owner's Motion to Amend. Paper 21 ("PG"). Patent Owner then filed a Revised Contingent Motion to Amend (Paper 23, "RMTA"), along with a Sur-reply (Paper 22, "PO Sur-reply"). Petitioner opposed Patent Owner's Revised MTA. Paper 25 ("RMTA Opp."). Patent Owner filed a reply in support of its Revised MTA. Paper 32 ("RMTA Reply"). Petitioner then filed a Sur-reply related to the Revised Contingent Motion to Amend. Paper 34 ("RMTA Sur-reply").

On July 14, 2021, we conducted an oral hearing.^[1] A copy of the transcript (Paper 38, "Tr.") is included in the record.

We have jurisdiction under 35 U.S.C. § 6(b), and we issue this Final Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. As explained below, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1-11 and 13-20 of the '833 patent are unpatentable, but has not shown that claim 12 of the '833 patent is unpatentable. We also determine that Petitioner has met the burden to show, by a preponderance of the evidence on this trial record that, all the proposed claims in the revised motion to amend, including independent claim 28 and dependent claims 29 and 30, as set forth in Patent Owner's Revised Contingent Motion to Amend, are unpatentable. Accordingly, for the reasons given below, we conclude that claims 1-11 and 13-20 are unpatentable and should be canceled. Petitioner has also shown by a preponderance of the evidence that all of the proposed substitute claims that are the subject of Patent Owner's Revised Contingent Motion to Amend are unpatentable.

B. Real Parties in Interest

Petitioner identifies itself and YKK Corporation of America as the real parties in interest. Pet. 1 Patent Owner identifies itself and 3M Company as the real parties in interest. Paper 5, 1.

C. Related Matters

Petitioner states that "[t]here are no related matters under 37 C.F.R. § 42.8(b)(2)" concerning the '833 patent. Pet. 1. Petitioner does not identify any other matters known to it related to the '833 patent pending before the U.S. Patent Office. Id; see also Paper 5, 1 ("There are no related matters known to Patent Owner.").

D. The '833 Patent (Ex. 1001)

The '833 patent is titled "MECHANICAL FASTENER, FASTENING SYSTEM, AND DISPOSABLE ABSORBENT ARTICLE." Ex. 1001, (54). According to the '833 patent, "[m]echanical fasteners, which are also called hook and loop fasteners, typically include a plurality of closely spaced upstanding projections with loop-engaging heads useful as hook members, and loop members typically include a plurality of woven, nonwoven, or knitted loops." Id. at 1:17-21. The '833 patent is directed to "disposable absorbent articles" that include "a mechanical fastener with a relatively low basis weight compared to conventional mechanical fasteners and fastening systems and also provides disposable absorbent articles that contain the mechanical fastener." Id. at 1:57-61.

The '833 patent explains that "[d]ecreasing the basis weight of the mechanical fastener results in lower manufacturing cost and advantageously decreases the amount of thermoplastic that is discarded . . . when a disposable absorbent article including the mechanical fastener is thrown away." Id. at 1:61-65. To that end, the '833 patent discloses a mechanical fastener having a low basis weight and "comparable or better engagement to loop materials than higher-basis-weight mechanical fasteners as measured by shear and peel testing." Id. at 1:65-2:2.

Figure 1 of the '833 patent, reproduced below, illustrates a mechanical fastener including multiple, upstanding fastening elements 11 attached to a thermoplastic backing 14. Id. at 3:21-24.

(Image Omitted)

As shown in Figure 1 (above), the multiple, upstanding fastening elements 11 have posts 10 with proximal ends 10a attached to the thermoplastic backing 14 and distal ends 10b comprising a cap 12 with a larger area than a cross-sectional area of the post 10. Id. at 3:24-29. Cap 12 extends an overhang distance "o" beyond the post. Id. at 3:29-30. The height "h" of the upstanding fastening element is the distance between the thermoplastic backing 14 and the distal end 10b of the upstanding fastening element 11. Id. at 3:30-33. The thickness "t" of the thermoplastic backing 14, the width "w" of the post at its base, the width "w1" of the post just below the cap, and the width "w2" of the cap are also shown in Figure 1. Id. at 3:33-36.

The '833 patent further discloses that, in some embodiments, the mechanical fastener "is made by a method that includes stretching the initially formed thermoplastic backing to achieve a backing thickness in a range from 20 µm to 80 µm." Id. at 8:54-57. And, in some embodiments, "the stretching increases at least one of the thermoplastic backing's length ('L') or width ('W') at least 1.5 times (in some embodiments, at least 2, 2.5, or 3 times)." Id. at 9:5-8. "Stretching can be carried out to an extent so that the desired basis weight of the mechanical fastener can be achieved." Id. at 9:16-18.

The '833 patent discloses experimental results for various examples of fasteners that were measured and tested, as shown in Tables 1-8. Table 1, reproduced below, depicts Examples 1-19 as well as Comparative Examples 1 and 2 and Illustrative Examples 1-5.

(Image Omitted)

The '833 patent explains that "[t]he mechanical fastener strips with densities of271/cm2 were prepared by machine stretching of corresponding 542/cm2 strips in the machine direction with a draw ratio of2:1." Id. at 19:2-5. As shown in Table 1 (above), the fasteners of Examples 3, 4, 7, and 12 have densities of271/cm2 and thus, according to the '833 patent, were prepared by machine stretching.

E. Illustrative Claim

The '833 patent includes twenty claims, and Petitioner challenges claims 1-20. Claim 1, the sole independent claim, is illustrative and reads as follows:

1. A mechanical fastener comprising

a thermoplastic backing; and

multiple, upstanding fastening elements that have a post with a proximal end attached to the thermoplastic backing and a distal end comprising a cap larger in area than a cross-sectional area of the post

wherein the multiple, upstanding fastening elements have a height of at least 40 micrometers and up to 300 micrometers and wherein a basis weight of the mechanical fastener is in a range from 25 grams per square meter to 75 grams per square meter

Ex. 1001, 26:12-22.

F. Instituted Grounds of Unpatentability

We instituted inter partes review of all challenged claims based on the thirteen grounds of unpatentability (Pet. 6-7, 30-67), which are provided in the table below:

Claims Challenged	35 U.S.C. §	Reference(s)
1-5, 8-10, 13, 15-19	103(a)[2]	Petersen-1[3], [4]
11	103(a)	Petersen-1, AAPA (“AAPA”)

1-5, 8, 10, 13, 15-19[5]	103(a)	Petersen-1, Miller, [6] Daio-Seishi [7]
11	103(a)	Petersen-1, Miller, Daio-Seishi, AAPA
6, 7	103(a)	Petersen-1, Miller
9	103(a)	Petersen-1, Buzzell[8]
9	103(a)	Petersen-1, Miller, Daio-Seishi, Buzzell
11, 12, 14	103(a)	Petersen-1, Busam[9]
11, 12, 14	103(a)	Petersen-1, Miller, Daio-Seishi, Busam
15	103(a)	Petersen-1, Ausen, [10] Wood[11]
15	103(a)	Petersen-1, Miller, Daio-Seishi, Ausen, Wood

Petitioner also relies on the declaration of Mukerrem Cakmak, Ph.D. (Ex. 1002) to support its Petition. Patent Owner relies on the declaration of Mark Kline (Ex. 2008) to support its Response. Dr. Cakmak was cross-examined. See Ex. 2009 (deposition transcript of Dr. Cakmak). Mr. Kline was also cross-examined. See Ex. 1024 (deposition transcript of Mr. Kline). Patent Owner also submits a second declaration of Mr. Kline (Ex. 2014) to support its Revised Contingent Motion to Amend. Mr. Kline was also cross-examined in response to the second declaration. See Ex. 1046 (second deposition transcript of Mr. Kline).

II. ANALYSIS

A. Principles of Law

"In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable." Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)...