Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 11
`Filed: July 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ALBAAD MASSUOT YITZHAK, LTD. AND ALBAAD USA, INC.
`Petitioner,
`
`v.
`
`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00693
`Patent 9,192,522 B2
`_______________
`
`
`Before KEVIN W. CHERRY, JAMES A. WORTH,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571.272.7822
`
`
`Paper No. 11
`Filed: July 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ALBAAD MASSUOT YITZHAK, LTD. AND ALBAAD USA, INC.
`Petitioner,
`
`v.
`
`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00693
`Patent 9,192,522 B2
`_______________
`
`
`Before KEVIN W. CHERRY, JAMES A. WORTH,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2017-00693
`Patent 9,192,522 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Albaad Massuot Yitzhak, Ltd. and Albaad USA, Inc. (“Petitioner”)
`filed a Petition requesting an inter partes review of claims 1, 2, 4, 7–10, 12,
`14–16, 18, 21–23, 25, 27–29, 31, 33–37, and 39 (“the challenged claims”) of
`U.S. Patent No. 9,192,522 B2 (Ex. 1001, “the ’522 patent”). Paper 2
`(“Pet”). Edgewell Personal Care Brands, LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 10 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows that “there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” See also 37 C.F.R § 42.4(a) (delegating authority to the Board).
`Taking into account the arguments presented in the Preliminary Response,
`we conclude that the information presented in the Petition does not establish
`a reasonable likelihood that Petitioner would prevail in showing claims 1, 2,
`4, 7–10, 12, 14–16, 18, 21–23, 25, 27–29, 31, 33–37, and 39 of the ’522
`patent are unpatentable. Accordingly, we decline to institute an inter partes
`review.
`B. Related Proceeding
`The parties represent that the ’522 patent is at issue in district court
`litigation, Edgewell Personal Care Brands, LLC v. Albaad Massuot Yitzhak,
`LTD & Albaad USA, Inc., No. 1:2015-cv-01188-RGA (D. Del.). Pet. 1;
`Paper 5, 2.
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`C. The ’522 Patent
`The ’522 patent, titled “Tampon Assembly Having Shaped Pledget,”
`issued November 24, 2015 from U.S. Patent Application No. 11/713,974,
`filed March 5, 2007. Ex. 1001. Figure 1 is reproduced below.
`
`
`Figure 1 is a side view of tampon assembly 10. Id. at 2:26–27. The tampon
`assembly includes applicator barrel 14 and shaped pledget 12 housed within
`the barrel. Id. at 2:54–58. The barrel’s first end 20 defines tapered insertion
`tip 24, which includes a plurality of petals 26 separated from each other by a
`plurality of slits 28. Id. at 2:63–67.
`
`The ’522 patent explains that pledget 12 includes tip section 40, which
`can be formed by compression or by cutting, and may have a higher density
`or the same density as the rest of the pledget. Id. at 5:44–53.
`D. Illustrative Claim
`Of the challenged claims, claims 1, 9, 15, 22, 27, 34, and 39 are
`independent. Independent claim 1 is illustrative, and is reproduced below:
`1.
`A tampon assembly, comprising:
`a barrel region having a single layer plastic tubular
`wall having an inner surface and an outer surface, said
`barrel region having a first end and a second end, said
`barrel region having a plurality of discrete petals at said
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`Patent No.
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`first end that define a generally tapered shaped insertion
`tip region, said discrete petals being separated from each
`other by a plurality of cuts that form a break of material
`through said tubular wall, each of said plurality of cuts
`having a terminal end adjacent a base region of said
`plurality of discrete petals, each of said plurality of cuts
`extending along said barrel region for a first length
`measured from said first end to said terminal end;
`a tapered pledget having an end region that has
`been compressed to form a tapered insertion tip that has a
`greater density than an adjacent region of said pledget
`prior to said tampon assembly being inserted into a user,
`said tapered tip having a length that is less than said first
`lengths of said plurality of cuts, said tapered tip contacting
`and supporting at least said base regions of said plurality
`of petals adjacent to said terminal ends of said plurality of
`cuts while said tampon assembly is being inserted into said
`body for mitigating against said plurality of petals
`pinching said user.
`Ex. 1001, 6:64–7:21 (emphasis added).
`E. Prior Art Relied Upon
`Petitioner relies upon the following prior art references, as well as the
`Declaration of Raymond J. Hull, Jr. (“Hull Declaration,” Ex. 1036). Pet. 3–
`4.
`Reference
`Voss
`
`Relevant Dates
`Filed Dec. 22, 1965
`Issued Mar. 18, 1969
`Filed Oct. 28, 1970
`Issued Oct. 24, 1972
`Filed Nov. 8, 2000
`Issued Aug. 13, 2002
`
`Exhibit No.
`Ex. 1040
`
`Ex. 1050
`
`Ex. 1056
`
`US 3,699,962
`
`US 6,432,075 B1
`
`Hanke
`
`Wada
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`F. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1, 2, 4, 7–10, 12, 14–
`16, 18, 21–23, 25, 27–29, 31, 33–37, and 39 of the ’522 patent based on the
`following grounds. Pet. 3–4.
`Reference(s)
`
`Wada
`
`Basis
`§ 102(e)
`
`Claim(s) Challenged
`1, 2, 4, 7, 8, 9, 10, 12, 14, 22, 23,
`25, 27, 28, 29, 31, 33, 34, 35, 36,
`37, and 39
`1,1 4, 15, 18, 21, 22, 25, 27, 29,
`31, 33, 34, and 37
`15, 18, and 21
`16
`
`Wada and Routine
`Engineering Principles
`Wada and Hanke
`Wada, Hanke, and Voss
`
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`1 Although the Petition does not include claim 1 in this ground, in its
`identification of claims being challenged, see Pet. 3, claim 1 is at least
`partially analyzed under this ground in the body of the Petition, id. at 78.
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`Based on the record before us, we need not provide express
`constructions for any claim terms to resolve the issues in dispute. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102(e) if a prior art
`reference discloses every limitation of the claimed invention, either
`explicitly or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047
`(Fed. Cir.1995). To establish inherency, the extrinsic evidence “must make
`clear that the missing descriptive matter is necessarily present” in the single
`anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d
`1264, 1268 (Fed. Cir. 1991).
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`“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)(3)). This burden never shifts to Patent
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`Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17.
`Petitioner relies on the testimony of its declarant, Mr. Hull, and
`contends that a person of ordinary skill in the art “would have had at least a
`bachelor’s degree in engineering or science (e.g., biology or chemistry), and
`would have had at least four years of experience designing tampons and
`applicators.” Pet. 21–22 (citing Ex. 1036 ¶ 31). In its Preliminary
`Response, Patent Owner does not identify the relevant level of ordinary skill
`in the art. See generally Prelim. Resp.
`Based on our review of the ’522 patent, the types of problems and
`solutions described in the ’522 patent and cited prior art, and the testimony
`of Mr. Hull, at this stage of the proceeding, we adopt and apply Petitioner’s
`definition for purposes of this Decision. We also note that the applied prior
`art reflects the appropriate level of skill at the time of the claimed invention.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`D. Alleged Anticipation by Wada
`Petitioner contends claims 1, 2, 4, 7, 8, 9, 10, 12, 14, 22, 23, 25, 27,
`28, 29, 31, 33, 34, 35, 36, 37, and 39 of the ’522 patent are unpatentable
`under 35 U.S.C. § 102(e) in view of Wada. Pet. 40–77. For reasons that
`
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`follow, we determine Petitioner has not demonstrated a reasonable
`likelihood of prevailing as to the challenged claims.
`1. Overview of Wada (Ex. 1056)
`Wada is a U.S. patent titled “Applicator for Tampons.” Ex. 1056,
`(54). Wada’s tampon applicator includes outer cylinder 1 and push-out
`member 2. Id. at 3:41–43. The outer cylinder includes “four valves 17 in a
`petal shape.” Id. at 4:31–33, Fig. 2A. Tampon 3 is housed within the outer
`cylinder, and is expelled therefrom by movement of push-out member 2. Id.
`at 3:43–46, 4:9–18. Wada explains that tampon 3 “is formed by compress-
`molding absorptive fibers such as cotton.” Id. at 3:43–46.
`2. Analysis of Cited Art
`Petitioner contends that Wada anticipates claims 1, 2, 4, 7, 8, 9, 10,
`12, 14, 22, 23, 25, 27, 28, 29, 31, 33, 34, 35, 36, 37, and 39 of the ’522
`patent. Pet. 40–77. Patent Owner disputes Petitioner’s contentions. Prelim.
`Resp. 7–23. Patent Owner argues, inter alia, that Wada does not disclose a
`pledget having a tip with greater density than an adjacent region of the
`pledget, and does not disclose that the length of Wada’s tip is less than the
`length of a plurality of cuts. Id. at 8–19.
`
`After considering the parties’ arguments and evidence, we determine
`that Petitioner has not demonstrated a reasonable likelihood of prevailing on
`this ground.
`a. Independent Claims 1 and 9
`Independent claims 1 and 9 recite a tapered pledget having an end
`region that is “compressed to form a tapered insertion tip that has a greater
`density than an adjacent region.” Ex. 1001, 7:10–12, 54–56. Petitioner
`contends that Wada’s tampon 3 is the claimed pledget, which Wada
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`discloses to be “formed by compress-molding absorptive fibers such as
`cotton.” Pet. 43 (citing Ex. 1056, 3:43–45, Fig. 1) (emphasis omitted).
`Petitioner contends that “[w]hen a pledget is shaped to form the taper shown
`in Figure 1, it is ‘compressed’ and inherently ‘has a greater density than an
`adjacent region.’” Id. (citing Ex. 1036 ¶¶ 116–117)2.
`Patent Owner disputes Petitioner’s position. Prelim. Resp. 8–11.
`Specifically, Patent Owner argues that Petitioner’s contentions are
`unsupported by substantive analysis, lack sufficient evidence, and amount to
`no more than “a conclusory statement of inherency.” Id. at 8. Further,
`Patent Owner argues that the ’522 patent demonstrates that compression of a
`pledget’s tip may result in either the same or different densities at the tip
`region. Id. at 9; Ex. 1001, 5:44–51.
`We are persuaded by Patent Owner’s arguments. First, although
`Wada explains that tampon 3 “is formed by compress-molding,” Wada does
`not discuss the resulting density of any portion of the tampon, much less the
`relative densities between the tampon’s tapered insertion tip and any
`adjacent region. See Ex. 1056, 3:43–45. Accordingly, we are not persuaded
`that Wada expressly discloses this limitation.
`Second, we are not persuaded by Petitioner’s contention that Wada
`inherently discloses this limitation. Pet. 43. Petitioner has not shown that
`the tip of Wada’s tampon 3 necessarily possesses a greater density than a
`region adjacent the tip. See Continental Can, 948 F.2d at 1268 (explaining
`that the evidence “must make clear that the missing descriptive matter is
`necessarily present”). To the contrary, both the Petition and the Hull
`
`
`2 The cited portions of the Hull Declaration closely mirror the Petition.
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`Declaration lack persuasive technical reasoning to explain how or why
`“compress-molding” Wada’s tampon would necessarily result in a higher
`density at the tip region, as compared to adjacent regions of the pledget.
`Pet. 43; Ex. 1036 ¶¶ 116–117; see also 37 C.F.R. § 42.65(a) (“Expert
`testimony that does not disclose the underlying facts or data on which the
`opinion is based is entitled to little or no weight.”).
`Furthermore, the record suggests that compression of a tampon does
`not necessarily result in a tip with a greater density than adjacent regions.
`Ex. 1001, 5:45–48. For example, if a tip includes less dense material,
`compression may result in a tip with the same density as the rest of the
`pledget. Id. Because Wada does not specify the starting density or
`distribution of its absorptive fibers, we are not persuaded that compress-
`molding those fibers would necessarily result in a higher density at the tip
`region. Although a higher relative density may result, inherency “may not
`be established by probabilities or possibilities. The mere fact that a certain
`thing may result from a given set of circumstances is not sufficient.”
`Continental Can, 948 F.2d at 1269 (quoting In re Oelrich, 666 F.2d 578, 581
`(CCPA 1981)).
`Thus, for these reasons, Petitioner has not established that Wada
`anticipates independent claims 1 and 9, or claims 2, 3, 7, 8, 10, 12, and 14,
`which depend from claim 1 or 9.
`b. Independent Claims 1, 9, 22, 27, 34, and 39
`
`Independent claims 1, 9, 22, 27, 34, and 39 recite that the tapered tip
`of the pledget has a length less than the lengths of the plurality of cuts
`between the petals of the pledget. Ex. 1001, 6:64–7:21, 7:41–8:5, 9:1–35,
`
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`9:45–10:5, 10:26–60, 11:3–12:10. According to Petitioner, “[t]he tampon’s
`tapered tip is shown to be shorter than the barrel’s insertion tip,” in Wada’s
`Figure 1. Pet. 44 (citing Ex. 1036 ¶ 118 (near verbatim)). Alternatively,
`Petitioner contends that “the choice of lengths of cuts and length of the
`tampon’s taper were at the relevant time an engineering design choice.” Id.
`(citing Ex. 1036 ¶ 119 (near verbatim)).3
`Patent Owner argues that Mr. Hull makes an unsupported conclusion
`that Wada’s Figure 1 depicts the claimed relative lengths, but that Mr. Hull
`does not provide any specific dimensions or references underlying his
`opinion. Prelim. Resp. 13. Furthermore, Patent Owner objects to
`Petitioner’s reliance on dimensions purportedly depicted in Wada’s Figure 1
`because the U.S. Court of Appeals for the Federal Circuit, our reviewing
`court, prohibits such reliance. Id. at 13–14. To the extent they are
`considered, Patent Owner argues that Figure 1 suggests that the tip length is
`longer than the lengths of the cuts. Id. at 15–16.
`We are persuaded by Patent Owner’s arguments. First, we agree with
`Patent Owner that, as a general matter, reliance on the particular dimensions
`of patent drawings is improper, absent a discussion of those dimensions in
`the written description of the patent’s specification. See Hockerson-
`Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)
`(“[I]t is well established that patent drawings do not define the precise
`proportions of the elements and may not be relied on to show particular sizes
`
`
`3 Patent Owner argues, inter alia, that this contention is misplaced in an
`anticipation ground. Prelim. Resp. 12. We agree, and address this
`contention in Section II.E.1.b below.
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`if the specification is completely silent on the issue.”); In re Wright, 569
`F.2d 1124, 1127 (CCPA 1977) (“Absent any written description in the
`specification of quantitative values, arguments based on measurement of a
`drawing are of little value.”); Nystrom v. TREX Co., 424 F.3d 1136, 1149
`(Fed. Cir. 2005) (concluding it was error to “not properly apply[] the
`principles set forth in our prior precedents that arguments based on drawings
`not explicitly made to scale in issued patents are unavailing”). In this case,
`Wada does not indicate that Figure 1 is drawn to scale, and Wada’s
`specification does not describe the length of the tip portion of the tampon or
`the length of the plurality of cuts in the applicator. See generally Ex. 1056.
`Accordingly, we are unpersuaded by Petitioner’s reliance on dimensions
`purportedly depicted in Wada’s Figure 1.
`Furthermore, the Petition fails to identify clearly what it contends to
`be the “tapered tip,” such that its length could be compared to the length of
`the applicator’s cuts to determine whether this claim limitation is met. For
`example, the Petition at page 44 states that the “tapered tip is shown to be
`shorter than the barrel’s insertion tip,” but does not define what portion of
`Wada’s structure is understood to be the “tapered tip.” Pet. 44. The Hull
`Declaration similarly fails to identify the tapered tip with particularity.
`Ex. 1036 ¶ 118.
`Thus, for these reasons, Petitioner has not established that Wada
`anticipates independent claims 1, 9, 22, 27, 34, or 39, or claims 2, 4, 7, 8, 10,
`12, 14, 23, 25, 28, 29, 31, 33, and 35–37, which depend from independent
`claims 1, 9, 22, 27, 34, or 39.
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`c. Summary
`On this record, we determine that Petitioner has not presented
`sufficient evidence to establish a reasonable likelihood it would prevail in
`showing that claims 1, 2, 4, 7, 8, 9, 10, 12, 14, 22, 23, 25, 27, 28, 29, 31, 33,
`34, 35, 36, 37, and 39 are anticipated by Wada.
`E. Alleged Obviousness over Wada and “Common Sense Application
`of Routine Engineering Principles”
`Petitioner contends claims 1, 4, 15, 18, 21, 22, 25, 27, 29, 31, 33, 34,
`and 37 of the ’522 patent are unpatentable under 35 U.S.C. § 103(a) in view
`of Wada and “Routine Engineering Principles.” Pet. 78–81, 85–86. For
`reasons that follow, we determine Petitioner has not demonstrated a
`reasonable likelihood of prevailing as to the challenged claims.
`1. Analysis of Cited Art
`Petitioner contends the teachings of Wada in view of routine
`engineering principles renders obvious every element of claims 1, 4, 15, 18,
`21, 22, 25, 27, 29, 31, 33, 34, and 37 of the ’522 patent. Pet. 78–81, 85–86.
`Patent Owner disagrees. Prelim. Resp. 23–29, 35–36.
`
`After considering the parties’ arguments and evidence, we determine
`that Petitioner has not demonstrated a reasonable likelihood of prevailing on
`this ground.
`a. Independent Claim 1
`Petitioner appears to contend that Wada discloses each limitation of
`claim 1, as discussed supra, however, to the extent Wada does not disclose
`that the tapered tip has a greater density than an adjacent region of the
`pledget, such a limitation would have been obvious. Pet. 78; see supra
`Section II.D.2.a. Petitioner alleges that “compressing the pledget’s tip to
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`form a tapered tip, which had a greater density than adjacent material, was
`well known in the art before 2003.” Pet. 78 (citing Ex. 1036 ¶¶ 95–98, 225).
`Patent Owner contests Petitioner’s position. Prelim. Resp. 25–26.
`Specifically, Patent Owner argues that the cited portions of the Hull
`Declaration fail to even mention density. Id. at 25–26. Patent Owner also
`argues that the Petition provides “no analysis . . . to explain why the skilled
`artisan would be motivated to modify the tip of Wada’s pledget.” Id. at 25.
`We agree with Patent Owner. The Petition states that the claimed
`relative densities were “well known in the art before 2003,” but does not
`provide persuasive evidentiary support for this statement. Pet. 78. Indeed,
`cited paragraphs 95–98 of the Hull Declaration discuss prior art tampons
`having petals or tapered designs, and prior art tampons formed by
`compression, but do not discuss prior art tampons having the claimed
`density. Ex. 1036 ¶¶ 95–98. Cited paragraph 225 asserts that the claimed
`density was known, but provides no support for this statement, instead
`merely citing back to paragraphs 95–98. Id. ¶ 225; see In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (explaining that
`Petitioner cannot satisfy its burden of proving obviousness by employing
`“mere conclusory statements”). “Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight” and, here, we assign Mr. Hull’s testimony no weight. 37 C.F.R.
`§ 42.65(a).
`Thus, for these reasons, Petitioner has not established that Wada and
`routine engineering principles would have rendered obvious independent
`claim 1, or claim 4, which depends from claim 1.
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`b. Independent Claims 15, 22, 27, and 34
`
`Each of independent claims 15, 22, 27, and 34 includes a limitation
`drawn to the respective lengths of the tapered tip and cuts, which limitation
`was discussed in Section II.D.2.b above. In contending that claims 15, 22,
`27, and 34 would have been obvious, Petitioner appears to rely solely on its
`anticipation contentions regarding this limitation. See Pet. 79–81, 85–86.
`As discussed above, we are not persuaded that Wada discloses this
`limitation.
`In the ground asserting anticipation by Wada, see Section II.D.2.b
`above, Petitioner contends that the claimed length is a matter of “design
`choice.” Pet. 44. As we stated above, this contention is properly evaluated
`under 35 U.S.C. § 103(a), not § 102(e).
`Nonetheless, we reject Petitioner’s bald conclusion that it would have
`been an obvious matter of design choice to select the relative lengths
`reflected in the challenged claims. Petitioner provides no persuasive
`evidence to explain why a skilled artisan would have modified Wada’s
`geometry, and the cited portion of the Hull Declaration is equally lacking.
`See Ex. 1036 ¶ 119 (near verbatim). As Patent Owner correctly notes,
`Petitioner’s conclusion is insufficient, without some evidentiary support or
`persuasive technical reasoning, and an articulated rationale as to why the
`modification would have been made. See Prelim. Resp. 17–18.
`Accordingly, Petitioner has not established that Wada renders obvious
`independent claims 15, 22, 27, or 34, or claims 18, 21, 25, 29, 31, 33, and
`37, which depend from claim 15, 22, 27, or 34.
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`
`c. Summary
`On this record, we determine that Petitioner has not presented
`sufficient evidence to establish a reasonable likelihood it would prevail in
`showing that claims 1, 4, 15, 18, 21, 22, 25, 27, 29, 31, 33, 34, and 37 would
`have been obvious over Wada and Routine Engineering Principles.
`
`F. Alleged Obviousness over Wada and Hanke
`
`Petitioner contends claims 15, 18, and 21 of the ’522 patent are
`unpatentable under 35 U.S.C. § 103(a) in view of Wada and Hanke.
`Pet. 82–85. For reasons that follow, we determine Petitioner has not
`demonstrated a reasonable likelihood of prevailing as to the challenged
`claims.
`
`1. Overview of Hanke (Ex. 1050)
`Hanke is a U.S. Patent titled “Tubular Plastic Inserter for Tampons.”
`Ex. 1050. Hanke discloses a tampon applicator with outer tube 13 and inner
`tube 15. Id. at 2:66–68. Hanke explains that the tubes are arranged “quite
`close,” requiring 100–600 grams of dislodging force. Id. at 4:40–48.
`2. Analysis of Cited Art
`Independent claim 15 includes a limitation drawn to the respective
`lengths of the tapered tip and cuts, as discussed in Sections II.D.2.b and
`II.E.1.b above. In contending that claim 15 would have been obvious,
`Petitioner appears to rely solely on its prior contentions regarding Wada
`when treating this limitation. See Pet. 83 (“See claim 1g.”). As discussed
`above, we are not persuaded that Wada discloses this limitation, or renders it
`obvious. See supra Sections II.D.2.b, II.E.1.b. Petitioner’s reliance on
`Hanke does not cure this defect. Pet. 82–85.
`
`
`
`16
`
`
`
`IPR2017-00693
`Patent 9,192,522 B2
`
`
`Accordingly, Petitioner has not established that Wada and Hanke
`render obvious independent claim 15, or claims 18 and 21, which depend
`from claim 15.
`
`G. Alleged Obviousness over Wada, Hanke, and Voss
`
`Petitioner contends claim 16 of the ’522 patent is unpatentable under
`35 U.S.C. § 103(a) in view of Wada, Hanke, and Voss. Pet. 86–88. For
`reasons that follow, we determine Petitioner has not demonstrated a
`reasonable likelihood of prevailing as to the challenged claim.
`1. Overview of Voss (Ex. 1040)
`Voss is a U.S. Patent titled “Hygienic Devices and Methods of
`Making the Same.” Ex. 1040. Voss discloses a “hygienic medium
`applicator tube” in which the closed forward end comprises a plurality of
`shaped segments. Id. at 1:13–16. Voss explains that the tube may be any
`suitable thickness, “so long as the segments are sufficiently resilient and
`flexible, and the remainder of the tube is sufficiently rigid to facilitate its
`use.” Id. at 5:66–69.
`2. Analysis of Cited Art
`Claim 16 depends from claim 15, discussed in Section II.F.2 above.
`As discussed above, we are not persuaded that Wada discloses the claimed
`respective lengths of the tapered tip and cuts, or renders it obvious. See
`supra Sections II.D.2.b, II.E.1.b. Petitioner’s reliance on Hanke and Voss
`does not cure this defect. See Pet. 86–88.
`Accordingly, Petitioner has not established that Wada, Hanke, and
`Voss render obvious claim 16.
`
`
`
`
`17
`
`
`
`IPR2017-00693
`Patent 9,192,522 B2
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine Petitioner has not
`demonstrated a reasonable likelihood it would prevail in establishing the
`unpatentability of the challenged claims of the ’522 patent.
`IV. ORDER
`Upon consideration of the record before us, it is:
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted.
`
`
`
`
`
`
`18
`
`
`
`IPR2017-00693
`Patent 9,192,522 B2
`
`PETITIONER:
`
`David A. Loewenstein
`Guy Yonay
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`dloewenstein@pearlcohen.com
`gyonay@pearlcohen.com
`
`
`PATENT OWNER:
`
`Daniel J. Burnham
`NIXON PEABODY LLP
`dburnham@nixonpeabody.com
`
`
`
`
`19
`
`
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