Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 13
`
`Entered: June 10, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIANJIN SHUANGRONG PAPER PRODUCTS CO., LTD. AND
`SHUANG RONG AMERICA, LLC,
`Petitioner,
`
`v.
`
`KISS NAIL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00371
`Patent 8,561,619 B1
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 13
`
`Entered: June 10, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIANJIN SHUANGRONG PAPER PRODUCTS CO., LTD. AND
`SHUANG RONG AMERICA, LLC,
`Petitioner,
`
`v.
`
`KISS NAIL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00371
`Patent 8,561,619 B1
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
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`
`I. INTRODUCTION
`
`Petitioner, Tianjin Shuangrong Paper Products Co., Ltd. and Shuang
`Rong America, LLC (collectively, “Tianjin”), filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–5 of U.S. Patent No.
`8,561,619 B2 (“the ’619 patent”). Patent Owner, Kiss Nail Products, Inc.
`(“Kiss Nail”), timely filed a Preliminary Response (Paper 10, “Prelim.
`Resp.”) to the Petition. We have jurisdiction under 35 U.S.C. § 314.
`To institute an inter partes review, we must determine that the
`information presented in the Petition shows “a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). For the reasons set forth below upon
`considering the Petition and the Preliminary Response, we conclude that the
`information presented in the Petition establishes a reasonable likelihood that
`Tianjin will prevail in challenging claims 1–5 of the ’619 patent. Pursuant
`to 35 U.S.C. § 314, we hereby authorize an inter partes review to be
`instituted as to those claims.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This decision to
`institute trial is not a final decision as to patentability of claims for which
`inter partes review is instituted. Our final decision will be based on the full
`record developed during trial.
`
`
`A. Related Matters
`According to the Petition, the ’619 patent has been asserted against
`Petitioner by Patent Owner in Kiss Nail Products, Inc. v. Tianjin
`Shuangrong Paper Products Co., Ltd. et al., no. 1:15-cv-06019 (KPF), U. S.
`
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`District Court for the Southern District of New York. Pet. 2; see also Paper
`6, 1 (providing Patent Owner’s mandatory notices and identifying this
`pending litigation).
`
`
`B. The ’619 Patent
`The ’619 patent, titled “Artificial Nail or Tip Arrangement and
`Method of Making Same,” issued October 22, 2013. Ex. 1001. The claims
`of the ’619 patent are directed to artificial nails with a removable protective
`layer over an adhesive, with the removable layer including slits. Id. at 7:12–
`8:25. The slits purportedly allow the surface of the protective layer to
`remain smooth after the layer adheres to the adhesive. Id. at 2:16–19.
`Figures 1 and 2, reproduced below, depict an embodiment of the
`artificial nail.
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`Figure 1 depicts a side view of an embodiment of the artificial nail
`arrangement and Figure 2 depicts a perspective view of the bottom of the
`artificial nail of the embodiment shown in Figure 1. Ex. 1001, 2:46–49.
`Artificial nail 10 includes polymeric body 20 shaped like a natural fingernail
`and having upper surface 22 and lower surface 24, with lower surface 24
`structured to face the top surface of a user’s natural nail. Id. at 3:21–23,
`3:48–54. Adhesive layer 30 is secured to a portion of lower surface 24 and
`is configured to adhere to the upper surface of the user’s fingernail. Id. at
`3:54–59.
`Removable layer 40 covers adhesive layer 30. Ex. 1001, 3:63–64.
`When the artificial nail is used, tab 42 is used to remove removable layer 40
`and expose adhesive layer 30, which is applied to the user’s natural nail. Id.
`at 3:63–4:3.
`Figure 10E of the ’619 patent, reproduced below, depicts an
`embodiment of removable layer 40 with slits.
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`Figure 10E depicts a perspective view of removable layer 40 with slits
`501, 502, 503. Ex. 1001, 6:6–11. Slit 501 is oriented horizontally, slit 502
`is oriented vertically, and slit 503 is oriented radially, with slit 503 extending
`from edge 402 of removable layer 40. Id. The slits are preferably die cut,
`where the die is shaped to cut the number and orientation of slits desired in
`removable layer 40. Id. at 6:12–19. As seen in Figure 10E, slits may be
`non-continuous, forming co-linear slits separated by uncut portions. Id. at
`6:6–11; see also Pet. 8 (providing an annotated version of Figure 10E
`identifying the non-continuous, co-linear slits). “[R]emovable layer 40 will
`no longer crease or wrinkle due to the space and flexibility provided by slits
`401.” Ex. 1001, 6:3–5; see also id. at 1:54–58 (discussing a problem with
`the prior art, where the removable layer creases or wrinkles when contacting
`the adhesive layer during manufacture).
`
`
`C. Illustrative Claims
`Claim 1 of the ’619 patent, the sole independent claim, is
`representative of the claimed subject matter and is reproduced below.
` 1. An artificial nail or tip arrangement comprising:
`a body having a concave lower surface with a shape
`corresponding to a shape of at least one portion of a natural nail;
`an adhesive layer having a first surface and an opposing
`second surface, wherein the first surface adheres to at least one
`portion of the concave lower surface of the body and the second
`surface is provided to adhere to the at least one portion of the
`natural nail when applied thereto; and
`a removable layer that covers at least one portion of the
`second surface of the adhesive layer, and which is removable to
`expose the at least one portion of the second surface of the
`adhesive layer for application to the at least one portion of the
`natural nail, the removable layer comprising a plurality of slits
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`formed there through and disposed along a planar surface of the
`removable layer, at least one of the plurality of slits not extending
`to a peripheral edge of the removable layer and being separated
`from an adjacent, collinear slit by an uncut region of the
`removable layer,
`wherein the plurality of slits are configured to facilitate
`conformance of the planar surface of the removable layer to the
`concave lower surface of the body without wrinkling the
`removable layer after adherence of the first surface of the
`adhesive layer with the concave lower surface of the body.
`
`Ex. 1001, 7:12–8:12.
`
`
`D. The Prior Art
`Tianjin’s asserted grounds of unpatentability for the challenged claims
`of the ’619 patent rely on the following references:
`
`
`
`Zenon
`KR 10-0617510
`Sept. 1, 2006
`Han
`US 7,185,660 B1
`May 9, 1978
`Madsen
`US 2007/0282238 A1 Dec. 6, 2007
`Schiffler
`DE 2404682 A1
`July 8, 1975
`
`
`Ex. 1006/10071
`Ex. 1008
`Ex. 1009
`Ex. 1010/10112
`
`
`E. Asserted Grounds of Unpatentability
`Tianjin asserts the following grounds of unpatentability for the
`challenged claims of the ’619 patent.
`
`
`1 Exhibit 1007 provides a certified English translation of Zenon, with
`Exhibit 1006 providing the original Korean text.
`2 Exhibit 1011 provides a certified English translation of Schiffler, with
`Exhibit 1010 providing the original German text.
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`References
`
`Basis
`
`102(b)
`Zenon
`103(a)
`Zenon
`103(a)
`Zenon and Madsen
`103(a)
`Han and Madsen
`Han, Madsen, and Schiffler 103(a)
`
`
`Claims Challenged
`1, 2, and 5
`3–5
`5
`1–4
`5
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Also, we are careful not to read a
`particular embodiment appearing in the written description into the claim if
`the claim language is broader than the embodiment. See In re Van Geuns,
`988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`the claims from the specification.”).
`
`1. “slit”
`Claim 1 recites, in relevant part, “the removable layer comprising a
`plurality of slits.” Ex. 1001, 7:26–8:1. Kiss Nails contends that the term
`“slit” should be afforded its plain and ordinary meaning—“a long, narrow
`cut or opening.” Prelim. Resp. 17 (referencing Exs. 2001–2003, which
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`provide dictionary definitions for the word “slit”). Kiss Nails explains that
`this definition is consistent with the Specification, which depicts slits as long
`and narrow and which describes the slits as cut by a die. Id. at 17–18.
`Tianjin does not provide an express construction for the term “slit.”
`On this record, we agree with Kiss Nails that the ordinary and
`customary meaning of the term “slit” is “a long, narrow cut or opening.”
`
`2. “wherein the plurality of slits . . . of the body”
`Tianjin contends that we should interpret the final “wherein” clause of
`claim 1 “as adding no patentable weight beyond this claim’s other recited
`structural limitations.” Pet. 26. Tianjin argues that a claim directed to an
`apparatus must be distinguishable over the prior art based on the claim’s
`recited structure, not function. Id. Tianjin asserts that the recitation of claim
`1 that “the plurality of slits are configured to facilitate conformance of the
`planar surface of the removable layer to the concave lower surface of the
`body without wrinkling the removable layer” is functional language. Id. at
`27. In response, Kiss Nails argues that “the Federal Circuit has given
`patentable weight to functional claim language time and again” and that we
`should afford the final “wherein” clause of claim 1 patentable weight.
`Prelim. Resp. 9.
`“A patent applicant is free to recite features of an apparatus either
`structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed.
`Cir. 1997); see also Microprocessor Enhancement Corp. v. Texas
`Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (“Functional
`language may also be employed to limit the claims [of an apparatus] without
`using the means-plus-function format.”). As the Federal Circuit explains in
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`Microprocessor Enhancement Corp., an apparatus claim is limited to an
`apparatus possessing the recited structures and capable of performing the
`recited functions. Microprocessor Enhancement Corp., 520 F.3d at 1375.
`In view of that guidance from our reviewing court, we construe claim 1,
`including the final wherein clause, accordingly.
`3. “radially”
`Tianjin contends that the term “radially” should be afforded its
`broadest reasonable interpretation consistent with the ’619 patent
`Specification, which Tianjin contends “uses the term ‘radially’ in a broader
`sense than its general defined meaning.” Pet. 24. Tianjin asserts that the
`’619 patent expressly provides that radial slits are “not limited to lines
`directed towards the center of [ ] removable layer 40.” Id. at 25 (quoting Ex.
`1001, 5:64–66). As Tianjin further explains, Figure 10D of the ’619 patent
`illustrates radial slits 401, which include slits that are oriented horizontally
`and vertically. Id.; see also Ex. 1001, Fig. 10D, 5:55–53 (illustrating and
`describing radial slits 401). That is, the ’619 patent refers to slits oriented
`such that the slits are directed towards the center of a removable layer as
`radially oriented and that these radially oriented slits may be horizontal or
`vertical. The ’619 patent also refers to slits oriented such that the slits are
`not directed towards the center of a removable layer and are further oriented
`at an angle (that is, not horizontal or vertical) as also being radially oriented
`slits.
`Tianjin provides an express construction for the term “radially” as
`“[f]rom a center or at an angle other than horizontal and vertical directions.”
`Pet. 26. Based on Tianjin’s explanation and application of the prior art to a
`claim limitation including the term “radially,” we understand this proposed
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`construction to mean that the term “radially” means oriented in a direction
`from the center, such as the center of a removable layer, (including oriented
`horizontally or vertically) or oriented at an angle (that is, not oriented
`horizontally or vertically) and not in a direction from the center.
`Kiss Nails contends that the term “radially” need not be construed, as
`none of its arguments rely on the meaning of the term and that the term
`should be afforded its ordinary and customary meaning. Prelim. Resp. 6.
`We agree with Tianjin that the ’619 patent uses the term “radially”
`more broadly than its ordinary and customary meaning, by encompassing in
`the term slits that are oriented at an angle, yet are not oriented towards the
`center of a removable layer. Accordingly, on this record, we adopt Tianjin’s
`construction of the term “radially,” which is consistent with our
`understanding of that construction, as explained above.
`4. “adhesive layer;” “removable layer;” and “collinear”
`
`Tianjin provides express constructions for the terms “adhesive layer,”
`“removable layer,” and “collinear.” Pet. 20–24. We determine that we need
`not construe these terms explicitly in reaching our Decision. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(construing explicitly only those claim terms in controversy and only to the
`extent necessary to resolve the controversy).
`
`
`B. Asserted Grounds of Unpatentability
`Tianjin proposes five grounds of unpatentability for claims 1–5 of the
`’619 patent: 1) claims 1, 2, and 5 are unpatentable under 35 U.S.C. § 102(b)
`as anticipated by Zenon; 2) claims 2–5 are unpatentable under 35 U.S.C.
`§ 103(a) over Zenon alone; 3) claim 5 is unpatentable under 35 U.S.C.
`
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`§ 103(a) over Zenon and Madsen;3 4) claims 1–4 are unpatentable under
`35 U.S.C. § 103(a) over Han and Madsen; and 5) claim 5 is unpatentable
`under 35 U.S.C. § 103(a) over Han, Madsen, and Schiffler. Tianjin presents
`a limitation-by-limitation analysis of the identified claims against the
`identified references. See Pet. 34–59. This analysis relies on testimonial
`evidence by Dr. Zeliger. See Ex. 1002. Kiss Nails’ Preliminary Response
`presents detailed arguments countering positions taken in the Petition. See
`Prelim. Resp. 9–38.
`
`1. Claims 1, 2, and 5 and Zenon
`a. Overview of Zenon
`Zenon, titled “Adhesive tape for artificial nails, the artificial nail and
`the method of making the same,” is directed to artificial nails with an
`adhesive layer with a first layer that includes a cutting line, where the first
`layer is removed to expose the adhesive layer. Ex. 1007, Abstract.
`Zenon’s Figure 6 is reproduced below.
`
`
`3 The Petition provides, as a ground of unpatentability, that claims 3–5 are
`obvious over Zenon alone or over Zenon and Madsen. Pet. 4, 43. As is
`apparent from the analysis provided in the Petition, Tianjin relies on the
`combination of Zenon and Madsen in asserting that claim 5 is obvious but
`not in asserting that claims 3 and 4 are obvious. See Pet. 43–50.
`
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`Figure 6 depicts a perspective view of an embodiment of Zenon’s
`artificial nail. Ex. 1007, 7. Artificial nail body 150 includes back 151. Id.
`Adhesive part 105 includes release paper 111 and release film 131, which
`are attached to adhesive film 121. Id. In assembling the artificial nail,
`release paper 111 is removed to expose adhesive film 121, which is adhered
`to back 151 of body 150. Id. Cutting line 109 is formed on release film 131
`and “ensures that the release film (131) can crack after the adhesive film
`(121) is deformed, and prevents the release film (131) separating itself from
`the adhesive film (121).” Id. at 6.
`Zenon discloses that:
`cutting line (109) is formed vertically from the lower end (135)
`of the release film (131). After the adhesive film (121) is
`deformed, e.g. after the adhesive film (121) stretches on both
`sides, the release film (131) cracks on both sides along the cutting
`line (109). The principle is that with the action of the adhesive
`force between the release film (131) and the adhesive film (121),
`the release film (131) becomes deformed together with the
`adhesive film (121).
`Ex. 1007, 6. Figure 6 depicts cutting line 109 as a “beeline”—that is, a
`straight line—but Zenon discloses that the cutting line may be in the form of
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`a cross or dotted line. See Ex. 1007, 4; see also id. Fig. 10 (showing cutting
`line as a cross), Fig. 12 (showing cutting line as a dotted line).
`Zenon discloses that cutting line 109 “is formed by drilling small
`holes on the release film (131).” Ex. 1007, 6. Zenon similarly discloses that
`cutting line 209 (cross-shape depicted in Figure 10) “is formed through
`superfine holes in the middle part of the release film.” Id. at 8. Zenon
`further discloses that cutting line 309 (dotted line depicted in Figure 12) “is
`formed through superfine dot and line holes in the middle part of the release
`film.” Id.
`Zenon’s Figure 12 is reproduced below.
`
`
`
`Figure 12 depicts a back view of the adhesive tape used for an
`artificial nail. Ex. 1007, 2. In this embodiment, cutting line 309 (not
`identified by reference numeral), forms a dotted line. Id. at 8. As with other
`cutting line embodiments disclosed in Zenon, cutting line 309 serves as a
`line along which the release film “cracks” to prevent the release film from
`separating from the adhesive layer. See id.
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`Zenon further discloses cutting line 209, which is shaped as a cross
`centered on a removable layer. See Ex. 1007, 15 (Figs. 10–11). As with
`cutting line 309, “cross cutting line (209) is formed on the release film (231)
`to prevent the release film’s (231) separation from the adhesive film (221)
`after the adhesive film (221) becomes deformed.” Id. at 8.
`b. Independent claim 1
`Claim 1 recites “[a]n artificial nail or tip arrangement
`comprising: a body having a concave lower surface with a shape
`corresponding to a shape of . . . a natural nail; an adhesive layer . . .;
`and a removable layer.” Ex. 1001, 7:12–22. Tianjin contends that
`Zenon discloses an artificial nail with the recited body, adhesive layer,
`and removable layer. Pet. 34–36. Kiss Nails does not dispute this
`contention at this time.
`Claim 1 further recites, “the removable layer comprising a plurality of
`slits.” Ex. 1001, 7:26–8:1. Claim 1 also requires that “at least one of the
`plurality of slits not extend[ ] to a peripheral edge of the removable layer and
`be[ ] separated from an adjacent, collinear slit by an uncut region of the
`removable layer.” Id. at 8:3–6. Tianjin contends that Zenon discloses the
`recited slits, relying on Zenon’s cutting line 309 depicted in Figures 12 and
`13. Pet. 37–38. To illustrate this contention, Tianjin annotates Zenon’s
`Figure 12.
`Reproduced below is Tianjin’s annotated Figure 12.
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`The annotated Figure 12 identifies what Tianjin contends are the
`plurality of slits on release film 331, including collinear, adjacent slits
`having an uncut region of release film 331 between them. Tianjin also
`illustrates that at least one of the slits does not extend to the peripheral edge
`of release film 331. Pet. 38.
`Tianjin further contends that cutting line 309 differs from Zenon’s
`cutting line 109, in that cutting line 109 is depicted as a continuous line,
`while cutting line 309 is depicted as a dashed line. Pet. 38 (“Thus, Zenon’s
`different use of continuous compared to dashed lines to illustrate the
`different cutting lines (e.g., lines 109 and 309) shows that the cross cutting
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`line 309 is a plurality of individual slits and not a single, continuous line,
`such as the cutting line 109.”); see also Ex. 1007, 4 (“The cutting line is
`formed . . . by an extension of a dotted line from one end of the release film,
`or formed by an extension of a beeline from one end of the release film.”).
`Kiss Nails argues that “a ‘dotted line’ in a drawing does not teach the
`claimed ‘plurality of slits.’” Prelim. Resp. 11. Kiss Nails asserts that Zenon
`discloses that cutting line 309 “is formed through superfine dot and line
`holes” and that “Petitioner’s expert never attempts to explain what
`‘superfine dot and line holes’ are.” Id. at 12. Kiss Nails further argues that
`“[a]ll of the cutting lines [in Zenon] are described as being comprised of
`small or superfine holes, and the only way Zenon describes forming the
`cutting lines is by drilling small holes in the release film.” Id. at 12–13.
`Based on the record before us, Kiss Nails’ argument does not
`persuade us of a deficiency in Tianjin’s position that Zenon discloses the
`recited plurality of slits. As Kiss Nails recognizes, Zenon expressly
`discloses that cutting line 309 “is formed through superfine dot and line
`holes.” Prelim. Resp. 12 (emphasis added). See also Ex. 1007, 8
`(discussing how cutting line 309 is formed); Pet. 37 (same). Further, Dr.
`Zeigler, Tianjin’s expert, declares that cutting line 309 includes slits. Ex.
`1002 ¶ 120. Tellingly, Zenon makes a distinction between the continuous
`(or “beeline”) cutting line 109, which is formed by drilling small holes, and
`dotted cutting line 309, which is formed by superfine dots and line holes.
`See Ex. 1007, 6, 8. Based on the record before us, we find that “line holes”
`would be long, narrow openings (that is, holes or openings that are shaped
`like a line), which is consistent with Kiss Nails’ proffered construction of the
`term “slit.”
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`Kiss Nails next argues that Zenon describes its release film as
`“cracking” along the cutting lines, which demonstrates that the cutting lines
`(including cutting line 309) are perforated. Prelim. Resp. 13–14. Kiss Nails
`argues that an understanding that the lines are perforated is consistent with
`lines formed by drilling small or super fine holes in the release film. Id. at
`14–15. Kiss Nails further argues that break lines 101, 201, and 301 are
`referred to as “cracking” and that these lines must be perforated (rather than
`continuous cuts) or the structures would fall out of the adhesive tape. Id. at
`16. Kiss Nails then asserts that a perforated line is not a slit. Id. at 17–18.
`Based on the record before us, Kiss Nails’ argument does not
`persuade us of a deficiency in Tianjin’s position that Zenon discloses the
`recited slits. Kiss Nails’ argument ignores Zenon’s express disclosure that
`cutting line 309 is formed by line holes. Even if cutting line 309 is
`perforated, such a line, formed with line holes, would include collinear slits
`separated by uncut portions of the release film. These uncut portions would
`“crack” when the release film separates at cutting line 309.
`Claim 1 also requires the recited “plurality of slits” to be “configured
`to facilitate conformance of the planar surface of the removable layer to the
`concave lower surface of the body without wrinkling the removable layer
`after adherence of the first surface of the adhesive layer with the concave
`lower surface of the body.” Ex. 1001, 8:7–12. Tianjin contends that any slit
`in the removable layer would inherently function to facilitate the planar
`surface of the removable layer to conform to the concave surface of the
`body. Pet. 39–40. Tianjin argues that Zenon discloses the structural
`requirements of claim 1 and is capable of performing the recited function of
`the wherein clause. Id. at 40.
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`Tianjin further contends that Zenon expressly discloses the cutting
`lines on the release film prevent the release film from falling off the
`adhesive. Pet. 40–41. Tianjin explains that not falling off the adhesive is
`the same as not wrinkling, as wrinkling results in the release layer not
`attached to the adhesive layer. Id. at 41 (citing Dr. Zeigler, Ex. 1002 ¶ 123).
`Kiss Nails argues that Zenon’s cutting lines are configured to crack,
`not to facilitate the release film to conform to the concave surface of an
`artificial nail body. Prelim. Resp. 30. Kiss Nails asserts that, for example,
`when the adhesive layer and release film behave differently to a condition,
`the film will crack to remain adhered to the adhesive.
`Based on the record before us, Kiss Nails’ argument does not
`persuade us of a deficiency in Tianjin’s position that Zenon’s slits are
`configured to facilitate the release film to conform to the concave surface of
`an artificial nail body. As Kiss Nails recognizes, when the adhesive and
`release film are subjected to a condition, such as temperature change, the
`adhesive deforms and the release film cracks at the cutting line so that the
`release film will remain attached to the adhesive layer. That is, the cracking
`of the cutting line causes the release film to remain in conformance with the
`concave shape of the adhesive layer, which assumes the concave shape of
`the nail body, when the adhesive layer deforms—the adhesive layer and
`release film can deform together because the cutting line cracks. See, e.g.,
`Ex. 1007, 6 (“The principle is that with the action of the adhesive force
`between the release film (131) and the adhesive film (121), the release film
`(131) becomes deformed together with the adhesive film (121).”).
`
`
`
`18
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`
`Accordingly, on the record before us, we conclude that Tianjin has
`shown a reasonable likelihood of prevailing in its assertion that Zenon
`anticipates independent claim 1.
`b. Dependent claims 2 and 5
`Claim 2 recites “[t]he artificial nail or tip arrangement according to
`claim 1, wherein the at least one of the plurality of slits is oriented vertically
`along a length of the body.” Ex. 1001, 8:13–15. Claim 5 recites “[t]he
`artificial nail or tip arrangement according to claim 1, further comprising
`one or more slits that extend radially through an edge of the removable
`layer.” Id. at 8:22–25. Tianjin contends that Zenon anticipates claims 2 and
`5.
`
`Specifically, Tianjin contends that Zenon’s Figure 12 depicts slits
`oriented vertically as required by claim 2, identifying cutting line 309 as
`disclosing the plurality of slits. Pet. 42. With respect to claim 5, Tianjin
`contends that Zenon’s Figure 12 depicts the top- and bottom-most portions
`of cutting line 309 extending radially through the edge of release film 331.
`Id. at 42–43. Kiss Nails does not contest these assertions at this time.
`On the record before us, we conclude that Tianjin has shown a
`reasonable likelihood of prevailing in its assertion that Zenon anticipates
`claims 2 and 5.
`
`2. Claims 3–5 over Zenon alone
`Claim 3 recites “[t]he artificial nail or tip arrangement according to
`claim 1, wherein the at least one of the plurality of slits is oriented
`horizontally across a width of the body.” Ex. 1001, 8:16–18. Similarly,
`claim 4 recites “[t]he artificial nail or tip arrangement according to claim 1,
`
`
`
`19
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`wherein the plurality of slits extend vertically along a length of the body and
`horizontally across a width of the body.” Id. at 8:19–21.
`Tianjin contends that Zenon teaches cutting lines oriented both
`vertically and horizontally. Pet. 44. Tianjin explains that Zenon’s Figure 10
`depicts cutting line 209 oriented in the horizontal and vertical direction in a
`cross configuration. Id. As Tianjin asserts, Zenon discloses that cutting line
`209 serves the same purpose as cutting line 309. Id. Tianjin concludes that
`it would have been obvious to orient the cutting lines such as cutting line
`309 in both a vertical and a horizontal direction given this teaching in Zenon
`to arrive at the subject matter of claims 3 and 4, as “[f]orming [ ] cutting line
`209 as a plurality of individual slits, as in [ ] cutting line 309, would provide
`the same or similar reduced resiliency of the release film while also reducing
`the amount of adhesive exposed though the cutting line.” Id. at 45 (citing
`Ex. 1002 ¶ 139). Tianjin explains that Zenon’s “embodiments of the cutting
`lines each have the same function, to prevent the release film from becoming
`unintentionally detached from adhesive layer when the adhesive layer is
`adhered to the artificial nail body.” Id. at 46 (citing Ex. 1002 ¶ 137; Ex.
`1007, 8).
`Kiss Nails argues that Tianjin’s position is flawed as every
`embodiment in Zenon includes a cutting line along the vertical axis of the
`release film. Prelim. Resp. 20. Kiss Nails further observes that Zenon fails
`to disclose any embodiment with horizontal cutting lines only. Id. at 22.
`Based on the record before us, Kiss Nails’ arguments do not persuade
`us of a deficiency in Tianjin’s position, as the arguments are not
`commensurate with that position. Tianjin contends that Zenon teaches that
`horizontal and vertical cutting lines may be used to serve the same
`
`
`
`20
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`function—ensuring that the release film remains conformed to the adhesive
`layer when that layer deforms. Tianjin concludes that it would have been
`obvious, based on this teaching, to have the horizontal cutting lines of
`cutting line 209 formed as cutting line 309 is formed—from superfine dots
`and line holes. This combined teaching arrives at the subject matter of
`claims 3 and 4.
`In addition to arguing that Zenon anticipates the subject matter of
`claim 5, Tianjin argues that Zenon renders obvious claim 5. To support this
`contention, Tianjin asserts that “it also would have been obvious to one
`skilled in the art at the time of the alleged invention was made to further
`include slits in the release film 331 that extend at an angle other than
`horizontal and vertical through an edge of the release film 331.” Pet. 48.4
`Tianjin characterizes this modification as a mere change in shape, which
`would have been obvious to an artisan of ordinary skill, as the ’619 patent
`does not indicate that a specific orientation for the slits has any significance.
`Id. at 48–49.
`Kiss Nails argues that Zenon fails to teach or suggest any angled slits
`or slits that do not go through the center of the release film and that Tianjin’s
`reasoning—that the angled slits would be positioned in the corners of the
`release film—lacks a rational basis. Prelim. Resp. 34–35. We agree. We
`recognize that “rejections on obviousness grounds cannot be sustained by
`mere conclusory statements; instead, there must be some articulated
`
`
`4 We note that claim 5 does not require “slits in the release film that extend
`at an angle other than horizontal and vertical through an edge of the release
`film.” The language is addressed insofar as Petitioner has provided that as
`the rationale for modifying Zenon.
`
`
`
`21
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, Tianjin has
`failed to support adequately its conclusion that adding angled slits to the
`corners of the release film is merely an obvious change in shape of the
`disclosed slits or to provide any other reasoning as to why an artisan of
`ordinary skill would have modified Zenon in the manner contemplated by
`Tianjin.
`Accordingly, on the record before us, we conclude that Tianjin has
`shown a reasonable likelihood of prevailing in its assertion that claims
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