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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ALBAAD MASSUOT YITZHAK, LTD. AND ALBAAD USA, INC.,
`Petitioner,
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`v.
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`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
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`
`Case IPR2017-00693
`Patent 9,192,522 B2
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`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`TABLE OF CONTENTS
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`B. 
`
`Page
`INTRODUCTION ........................................................................................... 1 
`I. 
`BACKGROUND ............................................................................................. 4 
`II. 
`III.  GROUND 1 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT WADA ANTICIPATES
`ANY OF THE CHALLENGED CLAIMS ...................................................... 7 
`The Petition Fails to Demonstrate a Reasonable Likelihood that
`A. 
`Wada Teaches Elements 1f and 9f in Challenged Independent
`Claims 1 and 9 (and challenged dependent claims 2, 4, 7, 8, 10,
`12, 14) .................................................................................................... 8 
`The Petitioner Fails to Demonstrate a Reasonable Likelihood
`that Wada Teaches Elements 1g, 9g, 22k, 27j, 34i, and 39g in
`Reference to Challenged Independent Claims 1, 9, 22, 27, 34,
`39 (and dependent claims 2, 4, 7, 8, 10, 12, 14, 23, 25, 28, 29,
`31, 33, and 35-37) ................................................................................ 11 
`The Petitioner’s First Argument Fails Because Wada’s
`1. 
`Pledget Does Not Teach a Tapered Tip Having “a Length
`that is Less Than Said First Lengths of Said Plurality of
`Cuts” .......................................................................................... 12 
`The Petitioner’s Alternative “Obviousness” Argument
`Fails As Well ............................................................................. 16 
`The Petition Fails To Demonstrate A Reasonable
`Likelihood That Wada Anticipates Challenged Claim 4,
`25, 31 and 37 ............................................................................. 19 
`IV.  GROUND 2 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT WADA AND SO-CALLED
`“COMMON SENSE APPLICATION OF ROUTINE
`ENGINEERING PRINCIPLES” RENDER THE CLAIMS OBVIOUS ...... 23 
`The Petitioner’s Argument for Claim 1 Fails to Comply with
`A. 
`the Clarity Requirements of 37 C.F.R. § 42.104(b), and is Only
`Supported by its Expert's Conclusory Statements ............................... 24
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`2. 
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`3. 
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`B. 
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`C. 
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`The Petitioner’s Argument for Claims 22, 27, 29, 33, and 34
`Fails to Comply with the Clarity Requirements of 37 C.F.R. §
`42.104(b) Because These Five Claims Lack the Claim Element
`at Issue ................................................................................................. 26 
`The Petition Fails To Provide Any Analysis Explaining Why
`the Skilled Artisan Would be Motivated To Combine the Cited
`References Relative to Claims 4, 25, 31, and 37 ................................ 27 
`V.  GROUND 3 – THE PETITION FAILS TO ESTABLISH A
`REASONABLE LIKELIHOOD THAT CLAIMS 15, 18, AND 21
`ARE OBVIOUS IN LIGHT OF WADA AND HANKE .............................. 30 
`A.  Wada Fails to Teach the Pledget’s Tapered Tip Length is Less
`than the First Length of Cuts Defining the Applicator’s Petals .......... 30 
`B.  Hanke Fails To Teach The Claimed Ejection Force ........................... 31 
`The Petition Fails to Provide Any Motivation For Combining
`C. 
`Hanke with Wada; In fact, Hanke Teaches Away From Wada .......... 32 
`VI.  GROUND 4 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT WADA AND SO-CALLED
`“COMMON SENSE” ENGINEERING PRINCIPLES RENDER AS
`OBVIOUS CLAIMS 15, 18, and 21 ............................................................. 35 
`The Cited References in Ground 4 Also Fail To Teach Claimed
`A. 
`Ejection Force ...................................................................................... 35 
`The Petition Again Lacks Any Analysis Supporting a
`Motivation To Combine Cited References ......................................... 36 
`VII.  GROUND 5 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT WADA, HANKE, AND
`VOSS RENDER AS OBVIOUS CHALLENGED CLAIM 16 .................... 37 
`VIII.  THE BOARD SHOULD NOT INSTITUTE INTER PARTES
`REVIEW ........................................................................................................ 38 
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`B. 
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`TABLE OF AUTHORITIES
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`Page(s)
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`FEDERAL CASES
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`Avaya Inc., Dell Inc., Sony Corporation of America, and Hewlett-Packard
`Co. v. Network-1 Security Solutions Inc.,
`IPR2013-00071, Paper 103 (PTAB May 22, 2014) ........................................... 10
`
`
`
`Cutsforth, Inc. v. Motivepower, Inc.
`636 Fed. Appx. 575 (Fed. Cir. 2016) .................................................................. 18
`
`Ex parte Levy,
`17 U.S.P.Q.2d 1461 (Bd. Pat. App. & Inter. 1990) ............................................ 10
`
`Front Row Technologies, LLC v. MLB Advanced Media, L.P.,
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`IPR2015-01932, Paper 7 (PTAB Mar. 25, 2016) .............................................. 28
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`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ............................................................................ 14
`
`In re Chitayat,
`408 F.2d 475 (CCPA 1969) ................................................................................ 14
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 34
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .......................................................................... 37
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) .............................................................................. 10
`
`In re Wright,
`569 F.2d 1124 (CCPA 1977) .............................................................................. 14
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`Jackel Int’l Ltd. v. Admar Int’l, Inc.,
`
`IPR2015-00979, Paper 7 (PTAB Oct. 1, 2015) ................................................. 33
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`Kartri Sales Co., Inc. v. Zahner Design Group, Ltd.,
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`IPR2016-01327, Paper 10 (PTAB Jan. 3, 2017) ............................................... 18
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`KSR Int’l Co. v. Teleflex, Inc.,
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`550 U.S. 398 (2007) ........................................................................................... 36
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`Nautilus Hyosung Inc. v. Diebold, Inc.,
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`IPR2016-00633, Paper 9 (PTAB Aug. 22, 2016) ........................................ 33, 37
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`Nystrom v. TREX Co, Inc.,
`424 F.3d 1136 (Fed. Cir. 2005) .................................................................... 14, 22
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`Securus Technologies, Inc. v. Global Tel*Link Corp.,
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`IPR2016-00267, Paper 8 (PTAB Jun. 3, 2016) ................................................. 33
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`Spectrum Brands, Inc. v. Assa Abloy AB,
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`IPR2015-01563, Paper 7 (PTAB Jan. 15, 2016) ............................................... 28
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`Zepp Labs, Inc. v. Blast Motion, Inc.,
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`IPR2016-00672, Paper 8 (PTAB Aug. 29, 2016) .............................................. 18
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`ZTE Corp. v. ContentGuard Holdings, Inc.,
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`IPR2013-00137, Paper 58 (PTAB Jul. 1, 2014) ................................................ 10
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`
`
`REGULATIONS
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`Manual of Patent Examining Procedure (“MPEP”), Ninth Ed., Rev. 07.2015,
`Last Rev. Nov. 2015, § 2112 (IV), p. 2100-50 ................................................... 10
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`MPEP § 2125 (II), p. 2100-66 ................................................................................. 14
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`MPEP § 2143.01(V), p. 2100-164 ........................................................................... 34
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`MPEP § 2144, p. 2100-167 ...................................................................................... 18
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`MPEP § 2145(X)(2), p. 2100-196............................................................................ 33
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`MPEP § 2141(III), p. 2100-132 ......................................................................... 36, 37
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`LIST OF EXHIBITS
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`Ex. No.
`2001
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`Description
`Joint Claim Construction Brief, Dkt. No. 83, Edgewell Personal
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`Care Brands, LLC v. Albaad Massuot Yitzhak Ltd., No. 15-1188 (D.
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`Del. Mar. 15, 2017)
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`Pursuant to 37 C.F.R. § 42.107(a), the Patent Owner, Edgewell Personal
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`Care Brands, LLC (“Edgewell”), hereby submits the following Patent Owner
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`Preliminary Response in response to the Petition for Inter Partes Review of U.S.
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`Patent No. 9,192,522 (“the ’522 patent). As discussed below in more detail, the
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`Petition is mostly a copy-and-paste version of the Expert’s Declaration that
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`consists of:
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` conclusory statements of inherency and “design choice” arguments,
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`with no facts, evidence, or underlying rationale provided;
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` unsupported and arbitrary dimensions that are pulled from imprecise
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`and non-scaled patent drawings; and
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` arguments alleging the claimed invention is obvious that are
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`completely silent on the critical explanation of why a skilled artisan
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`would be motivated to combine or modify cited references.
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`As will be described below, the Petitioner has failed to meet its burden of
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`establishing why this Inter Partes Review should be instituted.
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`I.
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`INTRODUCTION
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`Edgewell is a leading provider of personal care products and sells a wide
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`range of feminine products, including tampons marketed under the Playtex®
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`brand. Edgewell’s ‘522 patent, titled “Tampon Assembly Having Shaped
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`Pledget,” is at issue here.
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`The Petitioner, Albaad Massuot Yitzhak, Ltd. and Albaad USA Inc.
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`(collectively “Albaad”), is selling a tampon that Edgewell believes is infringing the
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`‘522 patent. Edgewell filed its Complaint for patent infringement against Albaad
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`on December 21, 2015, in the United States District Court for the District of
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`Delaware (Case 1:15-cv-01188-RGA).
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`The Petitioner is now attacking the validity of the ‘522 patent in the present
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`Petition for Inter Partes Review. Specifically, claims 1, 2, 4, 7-10, 12, 14-16, 18,
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`21-23, 25, 27-29, 31, 33-37, and 39 (the “Challenged Claims”) of the ‘522 patent
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`are challenged under five related grounds, each of which is based on the same
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`primary reference, U.S. Patent No. 6,432,075 to Wada (hereinafter “Wada”).
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`Edgewell is the exclusive licensee of Wada and is also asserting Wada against
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`Albaad in the aforementioned lawsuit. The Petitioner has also filed an Inter Partes
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`Review alleging Wada is invalid. See Albaad Massuot Yitzhak, Ltd. and Albaad
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`USA, Inc. v. Edgewell Personal Care Brands, LLC, IPR2017-00694, Paper 2
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`(PTAB Jan. 19, 2017).
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`According to the current Petition, Ground 1 alleges that claims 1, 2, 4, 7-10,
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`12, 14, 22, 23, 25, 27-29, 31, 33, 34-37, and 39 are anticipated by Wada. Ground 2
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`alleges that some of the claims already addressed in Ground 1 (i.e., claims 4, 22,
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`25, 27, 29 31, 33, 34, and 37) are obvious in view of Wada and “Common Sense
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`Application of Routine.”
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`Ground 3 alleges that claims 15, 18, and 21 are obvious in view of Wada and
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`Hanke. Ground 4 alleges that the same claims 15, 18, and 21 addressed in Ground
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`3 are obvious in view of Wada and “Common Sense Application of Routine
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`Engineering Principles.”
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`Ground 5 alleges that claim 16 is obvious in view of a three-way
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`combination consisting of Wada, U.S. Patent No. 3,699,962 to Hanke (hereinafter
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`“Hanke”), and U.S. Patent No. 3,433,225 to Voss et al. (hereinafter “Voss”).
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`As a brief overview, Grounds 1-5 should not be instituted because they are
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`based on the following legal errors and/or factual inaccuracies:
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` Ground 1 (i) uses arbitrarily measured and incorrect dimensions from
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`Wada’s patent drawings to find critical dimensions in the claims, and
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`(ii) fails to provide any analysis of why or how it concludes that
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`Wada’s tapered insertion tip includes that claim element of the tapered
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`tip “has a greater density than an adjacent region”;
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` Ground 2 fails to provide any motivation whatsoever to modify the
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`cited references, and further includes five claims (claims 22, 27, 29,
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`33, and 34) that do not include the primary claim element at issue in
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`Ground 2;
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` Ground 3 lacks any explanation on the motivation to combine Hanke
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`and Wada, but is instead silent on this critical aspect of the
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`obviousness analysis, while also relying on arbitrary and incorrect
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`dimensions taken from Wada’s patent drawings;
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` Ground 4 relies on cited references that fail to teach the claimed
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`ejection force, and again lacks any analysis supporting a motivation
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`to combine the cited references; and
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` Ground 5 also fails to provide any articulated reasoning with some
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`rational underpinning to support the legal conclusion on obviousness.
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`II. BACKGROUND
`The ‘522 patent was issued on November 24, 2015, from U.S. Patent
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`Application Serial No. 11/713,974. The ‘522 patent discloses, inter alia, a tampon
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`applicator assembly having an applicator barrel with a tapered insertion tip and a
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`shaped pledget housed in the applicator barrel. Ex. 1001, 2:48-51; FIG. 1.
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`The success of the tampon assembly is dependent on the shape and size of
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`the applicator’s insertion tip and the pledget, which are critical in achieving a
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`balance between comfort, ease of installation, and leakage protection. Id. at 1:27-
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`61. The petals of the shaped applicator eliminate or reduce previous known
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`problems, such as pinching or scratching the vaginal vault during insertion. Id. at
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`1:37-57.
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`According to a representative embodiment, as illustrated below in annotated
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`FIG. 1, the ‘522 patent discloses a tampon assembly 10 with a shaped pledget 12
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`that is housed in a barrel 14 near an insertion tip 24. A plunger 16 is further
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`housed partially within the barrel 14 rearward of the shaped pledget 12.
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`As further illustrated below in annotated FIG. 3 of the ‘522 patent below, the
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`barrel 14 has a plastic tubular wall with an inner surface 50 and an outer surface.
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`The barrel 14 has a first end 20 and a second end 22, and includes a plurality of
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`discrete petals 26 at the first end 20. The petals 26 define a generally tapered
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`shaped insertion tip 24 and are separated from each other by a plurality of slits 28,
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`which form a break of material through the tubular wall. Each of the slits 28 has a
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`terminal end adjacent to a base 43 of the petals 26 (i.e., at plane 30). Additionally,
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`each of the slits 28 extends along the barrel 14 for a first length 34 measured from
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`the first end 20 to the terminal end of the slits 28.
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`As further illustrated below in annotated FIG. 4 of the ‘522 patent, the
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`shaped pledget 12 has an end region compressed to form a tapered insertion tip
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`section 40. The insertion tip section 40 may have a greater density than an
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`adjacent region of the shaped pledget 12, as required by independent claims 1 and
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`9. The pledget’s insertion tip section 40 has a length 42 that is less than the first
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`length 34 of the slits 28 of the applicator (see annotated FIG. 3 above). The
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`insertion tip section 40 contacts and supports base regions of the petals 26 adjacent
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`to the terminal ends 43 of the slits 28 while the tampon assembly 10 is being
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`inserted into the user’s body to help mitigate against the petals 26 pinching the user
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`during insertion. Id. at 3:45-49; 4:60-63.
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`III. GROUND 1 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT WADA ANTICIPATES ANY
`OF THE CHALLENGED CLAIMS
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`Ground 1 of the Petition fails to establish that Wada teaches each and every
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`element of the pending claims. First, regarding independent claims 1 and 9 (along
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`with all the claims dependent therefrom), the Petition fails to establish that Wada’s
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`pledget is compressed to form a tapered insertion tip “that has a greater density
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`than an adjacent region of said pledget prior to said tampon assembly being
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`inserted into a user” (i.e., elements 1f and 9f). And second, regarding independent
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`claims 1, 9, 22, 27, 34, and 39, the Petition fails to establish that Wada’s pledget
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`has a tapered tip “having a length that is less than said first lengths of said plurality
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`of cuts” (i.e., elements 1g, 9g, 22k, 27j, 34i, and 39g).
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`A. The Petition Fails to Demonstrate a Reasonable Likelihood that
`Wada Teaches Elements 1f and 9f in Challenged Independent
`Claims 1 and 9 (and challenged dependent claims 2, 4, 7, 8, 10, 12,
`14)
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`Ground 1 of the Petition relies on Wada in challenging the novelty of
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`independent claims 1 and 9 (along with all the claims dependent therefrom), each
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`of which requires a tapered pledget compressed to form a tapered insertion tip “that
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`has a greater density than an adjacent region of said pledget” (i.e., elements 1f and
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`9f). The Petitioner’s only argument for challenging this claim element is that its
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`Expert believes that “when a pledget is shaped to form the taper shown in Wada
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`FIG. 1, it is ‘compressed’ and inherently has a greater density than an adjacent
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`region.” Ex. 1036 (Expert Declaration) at ¶¶ 116 and 117 (emphasis added); see
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`also Petition at pp. 43, 53, and 54. No analysis is provided. No evidence is cited
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`to support this allegation. The Petitioner’s argument and its Expert’s statements
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`are no more than a conclusory statement of inherency, which is technically
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`inaccurate and legally flawed.
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`The Petitioner’s broad-sweeping inherency argument stands in stark contrast
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`to the teachings of the ‘522 patent and basic concepts of compressing fibrous
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`material. If the cylindrical portion of the tampon is tightly compressed from
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`fibrous material from a radial force to a cylindrical form and the tapered tip
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`receives less compressive axial force on the same fibrous material to form the
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`upper tapered tip, then logic would dictate that the tapered tip would have a density
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`less than (not greater than) an adjacent region of the pledget.
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`In fact, the ‘522 patent teaches just that – the tapered tip of the pledget 12
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`can be compressed to achieve different densities.
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` In a first exemplary
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`configuration (which is consistent with claims 1 and 9) the pledget 12 is “shaped
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`by compressing the tip to a higher density than the rest of the pledget.” Ex. 1001 at
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`5:44-45. In other configurations, the tip section 40 can be formed from less dense
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`material that is compressed to the same density as the rest of the pledget. Id. at
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`5:45-48. In yet another configuration, the tip section 40 is shaped by cutting or
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`trimming the tip to the desired shape so that the tip has the same density as the rest
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`of the pledget. Id. at 5:48-51. Of course, slightly less compression in the tapered
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`tip would yield a lesser density at the tapered tip. Consequently, the ‘522 patent
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`itself teaches that the tip section 40 of the pledget 12 can be configured with a
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`density that is greater, the same, or less than an adjacent region of the pledget.
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`Because it is possible for the tip in Wada’s pledget to have a density
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`configuration that is different from the claimed density in elements 1f and 9f, the
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`Petition’s inherency argument fails. As noted in the MPEP, “[t]he fact that a
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`certain result or characteristic may occur or be present in the prior art is not
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`sufficient to establish the inherency of that result or characteristic.” Manual of
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`Patent Examining Procedure (“MPEP”), Ninth Ed., Rev. 07.2015, Last Rev. Nov.
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`2015, § 2112 (IV), p. 2100-50 (emphasis in original) (citing In re Rijckaert, 9 F.3d
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`1531, 1534 (Fed. Cir. 1993)). Thus, “[i]n relying upon the theory of inherency, the
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`examiner must provide a basis in fact and/or technical reasoning to reasonably
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`support the determination that the allegedly inherent characteristic necessarily
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`flows from the teachings of the applied prior art.” Id. (citing Ex parte Levy, 17
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`USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)). See
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`also ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00137, Paper 58 at 26
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`(PTAB July 1, 2014) (mere probabilities or possibilities fell short of demonstrating
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`that procedures related to distribution and usage rights enforcement for digitally
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`encoded works “necessarily require” using a digital certificate); Avaya Inc., Dell
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`Inc., Sony Corp. of America, and Hewlett-Packard Co. v. Network-1 Security
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`Solutions Inc., IPR2013-00071, Paper 103 at 4, 16, and 21 (PTAB May 22, 2014)
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`(mere probabilities or possibilities fell short of demonstrating anticipation by
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`inherency and concluding that the Petitioner’s prior art reference did not inherently
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`disclose a “low level current” limitation because the reference did not disclose the
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`specific amount of current generated or whether the amount of current is sufficient
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`or insufficient for the device to operate).
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`The Petitioner has failed to provide any basis in fact and/or technical
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`reasoning that the claimed density necessarily flows from the teachings of Wada.
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`Instead, the Petitioner and its Expert merely repeat the claimed element word by
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`word and, then, conclude that the claimed element is inherent. Ex. 1036 at ¶ 117
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`and Petition at p. 43. The Petitioner’s argument fails to provide even a speck of
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`factual or technical reasoning to reach the conclusion, likely because there is no
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`factual or technical reasoning that would lead to that conclusion.
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`Consequently, the Petitioner’s Ground 1 fails to establish that Wada
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`anticipates independent claims 1 and 9, as well as dependent claims 2, 4, 7, 8, 10,
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`12, 14.
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`B.
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`The Petitioner Fails to Demonstrate a Reasonable Likelihood that
`Wada Teaches Elements 1g, 9g, 22k, 27j, 34i, and 39g in
`Reference to Challenged Independent Claims 1, 9, 22, 27, 34, 39
`(and dependent claims 2, 4, 7, 8, 10, 12, 14, 23, 25, 28, 29, 31, 33,
`and 35-37)
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`Ground 1 of the Petition also fails to establish that Wada’s pledget has a
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`tapered tip “having a length that is less than said first lengths of said plurality of
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`cuts.” Independent claims 1, 9, 22, 27, 34, and 39 (along with all the claims
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`dependent therefrom) require the pledget’s tapered tip to have “a length that is less
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`than said first lengths of said plurality of cuts” (i.e., elements 1g, 9g, 22k, 27j, 34i,
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`and 39g). The Petitioner makes two arguments regarding this claim element.
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`First, the Petitioner argues that this claim element can be found by reviewing the
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`relative dimensions in one of Wada’s figures, which is not true. And second, the
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`Petitioner then provides an alternative position, arguing that even if Wada’s figures
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`do not teach the relative dimensions required by this claim element (which they do
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`not), then it would be an obvious matter of design choice. The Petitioner’s
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`alternative argument in Ground 1 is misplaced because Ground 1 is based on
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`anticipation, not obviousness.
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`1.
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`The Petitioner’s First Argument Fails Because Wada’s
`Pledget Does Not Teach a Tapered Tip Having “a Length
`that is Less Than Said First Lengths of Said Plurality of
`Cuts”
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`For ease of understanding, annotated FIGs. 3 and 4 of the ‘522 patent have
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`been reproduced below to illustrate the claimed relationship embodiment in which
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`the tip section 40 of the pledget 12 has a length 42 and the slits (or cuts) 28
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`defining the petals in the applicator have a length 34.
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`Consistent with the claim element in question, the specification also teaches that
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`the length 42 of the shaped pledget 12 is less than the length 34 of the applicator’s
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`insertion tip 24. Ex. 1001, 4:30-35.
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`The Petitioner alleges that FIG. 1 of Wada shows the tapered tip of the
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`tampon 3 to be shorter than the barrel’s insertion tip. Petition at p. 44. The
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`allegation is based solely on the Expert’s conclusory statement:
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`Wada Figure 1 shows tampon 3 pressed snuggly against
`the wall of the outer cylinder 1. The tampon’s tapered tip
`is shown to be shorter than the barrel’s insertion tip.
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`Ex. 1036 at ¶ 118. The Expert does not attempt to measure aspects of the
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`pledget or the applicator in FIG. 1 of Wada, likely because any attempted
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`measurement would not support his position. Not only does the Petitioner and its
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`Expert fail to provide any specific dimensions or references, but they are
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`improperly relying on patent drawings as if they should be understood to have an
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`exact dimensional scale. See Nystrom v. TREX Co, Inc., 424 F.3d 1136, 1149
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`(Fed. Cir. 2005) (emphasizing that “patent drawings do not define the precise
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`proportions of the elements and may not be relied on to show particular sizes if the
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`specification is completely silent on the issue”); Hockerson-Halberstadt, Inc. v.
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`Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000); In re Wright, 569 F.2d 1124,
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`1127 (CCPA 1977) (“[a]bsent any written description in the specification of
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`quantitative values, arguments based on measurement of a drawing are of little
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`value”); In re Chitayat, 408 F.2d 475, 478 (CCPA 1969) (“in view of the absence
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`in [the reference’s] specification of any written description of the quantitative
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`value of the image displacement relative to fiber diameter, the arguments based on
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`mere measurement of the drawings appear to us of little value”); MPEP § 2125
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`(II), p. 2100-66.
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`In fact, the Petitioner implicitly admits that FIG. 1 of Wada fails to teach this
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`limitation by contriving the alternative argument discussed below that, even if
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`Wada does not teach this claim element, “the choice of lengths of cuts and length
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`of the tampons tapered were at the relevant time an engineering design choice.”
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`Petition at p. 44. By hedging its anticipation argument with an alternative
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`obviousness argument, the Petitioner knows its anticipation position for Ground 1
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`has problems.
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`Even if it were legally permissible to measure dimensions from an unscaled,
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`imprecise patent drawing as if it were a mechanical drawing (which it is not), the
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`Petitioner’s argument would still fail. Wada’s FIG. 1, which is reproduced below
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`in annotated form, fails to show the tampon’s tapered tip “having a length that is
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`less than said first lengths of said plurality of cuts.”
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`Assuming that the Petitioner’s contention, which is not entirely clear, refers
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`to the length of the valves 17 and the curved tip length of the tampon 3, the
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`annotations above prove that this claim element (i.e., elements 1g, 9g, 22k, 27j,
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`34i, and 39g) in independent claims 1, 9, 22, 27, 34, and 39 is not disclosed by
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`Wada. In fact, the opposite is true. Because of the long curved shape along the
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`length of Wada’s applicator, the tampon 3 has a very long tapered tip portion that
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`appears to extend to about the midway point along the length of the tampon 3.
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`After the midway point, the tampon 3 then transitions into a reverse-tapered rear
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`portion that leads to its back end that engages the plunger 11. The length “A” of
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`the tapered tip of Wada’s tampon 3 is, in fact, larger than the length “B” of the
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`valves 17 of Wada’s applicator 1. Consequently, even if it were legally
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`permissible for the Petitioner to measure dimensions from an unscaled, imprecise
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`patent drawing (which it is not), it is unclear how the Petitioner and its Expert
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`could have relied upon FIG. 1 of Wada to support its argument on this claim
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`element.
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`For this reason alone, Ground 1 fails to establish a reasonable likelihood of
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`anticipation based on Wada.
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`2.
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`The Petitioner’s Alternative “Obviousness” Argument Fails
`As Well
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`Alternatively, the Petitioner argues that if its anticipation argument above
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`fails (which it does), the “choice of lengths of cuts and length of the tampon’s taper
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`were at the relevant time an engineering design choice.” Petition at p. 44. This
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`argument fails for several reasons listed below.
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`First, as noted on page 3 of the Petition, Ground 1 is based on 35 U.S.C. §
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`102. Yet, by proposing an alternative argument that is focused on a “design
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`choice,” the Petitioner seems to recast Ground 1 as an obviousness argument and,
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`as such, implicitly admits that Wada does not anticipate the claims under 35 U.S.C.
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`§ 102.
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`Second, the Petitioner’s argument that changing Wada’s dimensions is
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`nothing more than a “design choice” is supported with no facts, no evidence, or no
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`underlying rationale. The Petitioner cites to paragraph 119 of the Expert
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`Declaration for support, but the Expert merely repeats the same unsubstantiated
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`conclusion verbatim and nothing else (i.e., “[a]ssuming for the moment, that the
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`tampon’s tapered tip does not have a ‘length that is less than the first lengths of
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`said plurality of cuts,’ the choice of lengths of cuts and length of the tampon’s
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`taper were an engineering design choice”). That is all the Expert states on this
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`“design choice.” There is nothing stated regarding why a skilled artisan would be
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`motivated to change the geometry of Wada’s tampon 3, which seemingly fits
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`nicely within the internal cavity of Wada’s applicator.
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`Of course, a “design choice” analysis requires much more than a bare
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`statement that it is a “design choice” as the Petitioner asserts here. For example,
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`the MPEP is clear that “[s]imply stating the principle (e.g., ‘art recognized
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`equivalent,’ ‘structural similarity’) without providing an explanation of its
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`applicability to the facts of the case at hand is generally not sufficient to establish a
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`prima facie case of obviousness.” MPEP, § 2144, p. 2100-167. The PTAB has
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`also followed this same line of reasoning in rejecting grounds in an Inter Partes
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`Review. See Kartri Sales Co., Inc. v. Zahner Design Grp., Ltd., IPR2016-01327,
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`Paper 10 at 17 (PTAB Jan. 3, 2017) (admonishing the Petitioner that “[m]erely
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`stating ‘design choice’ when confronted with a missing limitation, without citing
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`any authority or references to establish why the feature in question amounts to a
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`mere design choice, does not carry Petitioner’s burden”); Zepp Labs, Inc. v. Blast
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`Motion, Inc., IPR2016-00672, Paper 8 at 13 (PTAB Aug. 29, 2016) (denying
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`institut