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.
`
`UNI-CHARM CORP. AND
`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00694
`Patent 6,432,075 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.
`
`UNI-CHARM CORP. AND
`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00694
`Patent 6,432,075 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
`
`
`
`
`
`IPR2017-00694
`Patent 6,432,075 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Albaad Massuot Yitzhak, Ltd. and Albaad USA, Inc. (“Petitioner”)
`filed a Petition requesting an inter partes review of claims 1–6 (“the
`challenged claims”) of U.S. Patent No. 6,432,075 B2 (Ex. 1001, “the ’075
`patent”). Paper 2 (“Pet”). Edgewell Personal Care Brands, LLC, an
`exclusive licensee of the ’075 patent, filed a Preliminary Response.
`Paper 10 (“Prelim. Resp.”); see also Paper 9 (Updated Mandatory Notices);
`Ex. 2001, 2–3 (Patent Owner Uni-Charm Corp. representing that Edgewell
`has authority to participate in this proceeding). Accordingly, for purposes of
`this Decision, we treat Edgewell as “Patent Owner.”1
`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 challenging claims
`1–6 of the ’075 patent as unpatentable. Accordingly, we decline to institute
`an inter partes review.
`
`
`1 The caption for this proceeding is amended to reflect Edgewell’s
`appearance and participation in this proceeding. The parties are instructed to
`use the caption appearing on the first page of this Decision in any
`subsequent paper.
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`B. Related Proceeding
`The parties represent that the ’075 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 4, 2.
`C. The ’075 Patent
`The ’075 patent, titled “Applicator for Tampons,” issued August 13,
`2002, from U.S. Patent Application No. 09/708,843, filed November 8,
`2000. Ex. 1001. Figure 1 is reproduced below.
`
`
`Figure 1 depicts a sectional view of the applicator, which includes outer
`cylinder 1 and inner cylinder 2, with tampon 3 fitted within outer cylinder 1.
`Id. at 3:41–46. Outer cylinder 1 includes valves 17. Id. at 4:30–33.
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`Figures 2A and 2B are reproduced below.
`
`
`Figures 2A and 2B are side and end views of outer cylinder 1. Id. at 3:21–
`25. Outer cylinder 1 is injection molded into a cylindrical shape, as shown
`in Figure 2A, with large diameter portion 7 and small diameter portion 8,
`and inflection plane 15 therebetween. Id. at 4:19–25. In this state, valves 17
`have length L and width W, at their root ends. Id. at 4:35–39. “[A] ratio
`L/W between the length L of the valve 17 and the width W of the root end is
`set within a range of 1.0 to 2.0.” Id. at 5:32–34.
`Figure 3 is reproduced below.
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`Figure 3 depicts large diameter portion 7, after a heated die has been pressed
`against the leading end of the large diameter portion, which deforms valves
`17 into curved face portion 7a. Id. at 3:26–27, 4:55–62. As shown in
`Figure 3, “when the outer face of the large diameter portion 7 at the
`inflection point Z has a radius A and the axial length from the inflection
`point Z to the leading end of the outer cylinder 1 is B, a ratio A/B is at most
`0.8.” Id. at 5:20–24.
`D. Illustrative Claim
`Of the challenged claims, claims 1, 5, and 6 are independent.
`Independent claim 1 is illustrative, and is reproduced below:
`1.
`An applicator for a tampon, comprising:
`an outer cylinder including forward and rearward
`ends, a first portion for fitting the tampon therein formed
`on a side of the forward end, and a second portion formed
`on a side of the rearward end and having a smaller
`diameter than that of said first portion,
`a push-out member movably inserted into said
`second portion of said outer cylinder, and
`a plurality of valves provided with the forward end
`of said outer cylinder, each valve being converged to have
`a curved face portion to be diametrically gradually
`reduced and define a leading end,
`wherein a ratio of a radius of an outer face at an
`inflection point of a boundary between a maximum
`diameter portion of said first diameter portion and said
`curved face portion to an axial length of the outer face
`from the inflection point to the leading end of said curved
`face portion is at most 0.8; and
`wherein a ratio of a length of said valves to a width
`of root ends of said valves is 1.0 to 2.0.
`Ex. 1001, 7:24–44 (emphasis added).
`
`
`
`5
`
`
`
`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. 1024).
`Pet. 3–4.
`Reference
`Koch
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`Patent No.
`US D250,663
`
`Balzar
`
`Loyer
`
`Berger
`
`US 5,807,372
`
`US 3,628,533
`
`US 3,895,634
`
`Relevant Dates
`Issued Dec. 26, 1978
`Filed Apr. 25, 1977
`Issued Sept. 15, 1998
`Filed Nov. 14, 1996
`Issued Dec. 21, 1971
`Filed Apr. 20, 1970
`Issued July 22, 1975
`Filed Oct. 18, 1973
`
`Exhibit No.
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`
`
`F. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–6 of the ’075 patent
`based on the following grounds. Pet. 3–4.
`Reference(s)
`Basis
`§ 102(b)
`§ 103(a)
`§ 102(b)
`§ 103(a)
`§ 102(b)
`§ 103(a)
`§ 102(b)
`§ 103(a)
`
`Claim(s) Challenged
`1–5
`6
`1–3, 6
`4, 5
`1–3, 6
`4, 5
`1–3, 6
`4, 5
`
`Koch
`Koch
`Balzar
`Balzar & Koch
`Loyer
`Loyer & Koch
`Berger
`Berger & Koch
`
`
`
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`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).
`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(b) 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).
`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;
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`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. 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). This burden never shifts to Patent Owner. 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, and would have had at least four years of
`experience designing and building prototype tampons and tampon
`applicators.” Pet. 12 (citing Ex. 1024 ¶ 57). In its Preliminary Response,
`Patent Owner does not identify the relevant level of skill in the art. See
`generally Prelim. Resp.
`Based on our review of the ’075 patent, the types of problems and
`solutions described in the ’075 patent and cited prior art, and the testimony
`of Mr. Hull, at this stage of the proceeding, we apply Petitioner’s definition
`for purposes of this Decision. We also note that the applied prior art reflects
`
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`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 Koch
`Petitioner contends claims 1–5 of the ’075 patent are unpatentable
`under 35 U.S.C. § 102(b) in view of Koch. Pet. 23–40. Patent Owner
`disputes Petitioner’s contentions. Prelim. Resp. 12–38. For example, Patent
`Owner argues that Koch’s single figure does not disclose the claimed
`dimensions. Id. at 15–38.
`
`After considering the parties’ arguments and evidence, we determine
`that Petitioner has not demonstrated a reasonable likelihood of prevailing on
`this ground.
`1. Overview of Koch (Ex. 1004)
`Koch is a U.S. design patent titled “Tampon Inserter.” Ex. 1004, [54].
`Koch’s figure is reproduced below.
`
`
`Koch explains that “[t]he single FIGURE is an isometric illustration of a
`tampon inserter in accordance with our new design. The design is
`cylindrical and the side not shown is a mirror image of the side shown.” Id.
`at Description.
`
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`2. Analysis of Cited Art
`Independent claims 1 and 5 recite that the ratio of a radius to an axial
`length of the outer curved face of the applicator is at most 0.8, and that a
`ratio of valve length to width is 1.0 to 2.0. Ex. 1001, 7:37–44, 8:23–28.
`Petitioner contends that Koch’s figure depicts the claimed ratios, as
`determined “[b]ased on a measurement of the dimensions of the drawings in
`Koch, using a ruler.” Pet. 24, 28–31 (citing Ex. 1024 ¶¶ 82–83). To support
`this contention, Mr. Hull states that he measured the relevant dimensions in
`Koch’s figure using a ruler, and that the hand-measured dimensions fall
`within the claimed ratios. Ex. 1024 ¶¶ 82–83.
`Patent Owner disagrees. Prelim. Resp. 12–38. Specifically, Patent
`Owner argues that “Petitioner and its Expert attempt to measure and analyze
`that which is simply not intended for measurement purposes,” namely,
`patent drawings that lack proper scale or supporting discussion in the
`specification. Id. at 16–17.
`We are persuaded by Patent Owner’s argument. We agree that, as a
`general matter, dimensions purportedly reflected in patent drawings are
`unpersuasive, absent a discussion of those dimensions in the written
`description of the patent’s specification. Indeed, as our reviewing court
`instructs, “it 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 if the specification is completely silent on the issue.” See
`Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed.
`Cir. 2000) (emphasis added); see also Nystrom v. TREX Co., 424 F.3d 1136,
`1149 (Fed. Cir. 2005) (concluding it was error to “not properly apply[] the
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`principles set forth in our prior precedents that arguments based on drawings
`not explicitly made to scale in issued patents are unavailing”).
`Petitioner is correct that design patents may serve as prior art for all
`that they reasonably disclose and suggest to a person of ordinary skill in the
`art. Pet. 24; In re Aslanian, 590 F.2d 911, 914 (CCPA 1979); In re Mraz,
`455 F.2d 1069, 1072 (CCPA 1972). However, the cases cited by Petitioner
`do not stand for the proposition that design patent figures alone may be
`relied upon to establish specific, particular, quantitative dimensions. See 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.”). To the contrary, as the cases
`discussed above make clear, specific dimensions inferred from patent
`drawings are unpersuasive if the specification is silent on the issue.
`Hockerson-Halberstadt, 222 F.3d at 956; Nystrom, 424 F.3d at 1149.
`In this case, Koch does not indicate that its sole Figure is drawn to
`scale. See Ex. 1004. To the contrary, Koch indicates that its Figure presents
`an “isometric illustration.” Id. at Description. Further, Koch’s limited
`written description lacks any discussion of the claimed dimensions or ratios.
`See id. As such, we are unpersuaded by Petitioner’s reliance on dimensions
`measured with a ruler from Koch’s Figure. Petitioner does not identify, and
`we do not discern, any other support in Koch for the claimed ratios.
`Thus, for this reason, Petitioner has not established that Koch
`anticipates independent claims 1 and 5, or claims 2–4 which depend from
`claim 1.
`
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`E. Alleged Obviousness over Koch
`Petitioner contends claim 6 of the ’075 patent is unpatentable under
`35 U.S.C. § 103(a) in view of Koch. Pet. 40–41. Specifically, regarding the
`claimed ratios discussed above and also required by claim 6, Petitioner
`incorporates its contentions made with respect to purported anticipation by
`Koch. Id. at 41 (“For claims 6b through 6h, see analysis with respect to
`claims 1b through 1h, respectively.”). As discussed supra, however, we are
`not persuaded by Petitioner’s contentions in that regard. See supra Section
`II.D.2; see also Prelim. Resp. 39.
`Thus, for the same reasons discussed above, Petitioner has not
`established that Koch would have rendered obvious independent claim 6.
`
`F. Alleged Anticipation by Balzar
`
`Petitioner contends claims 1–3 and 6 of the ’075 patent are
`unpatentable under 35 U.S.C. § 102(b) in view of Balzar. Pet. 41–51.
`Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 40–49. For
`example, Patent Owner argues that Balzar does not disclose the claimed
`ratios. Id. at 40–46.
`After considering the parties’ arguments and evidence, we determine
`that Petitioner has not demonstrated a reasonable likelihood of prevailing on
`this ground.
`1. Overview of Balzar (Ex. 1005)
`Balzar is a U.S. Patent titled “Tampon Capable of Being Comfortably
`Withdrawn from a Body Cavity.” Ex. 1005, [54]. Balzar’s Figure 9 is
`reproduced below.
`
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`Figure 9 depicts a side-view of the tampon applicator 66 having inner tube
`70 and outer tube 68. Id. at 2:47–48, 8:50–52. Outer tube 68 includes
`flexible petals 74 separately by narrow slots 76. Id. at 9:26–30. Balzar
`explains that “all of the petals 74 should have approximately the same shape
`and dimension. Each of the petals 74 can have an elongated, approximately
`truncated shape, with a rounded end and each can have a length of about
`7/16 of an inch (about 11.1 mm).” Id. at 9:43–47.
`2. Analysis of Cited Art
`Independent claims 1 and 6 recite that the ratio of a specified radius to
`an axial length of the outer curved face of the applicator is at most 0.8 (“first
`ratio”), and that a ratio of valve length to width is 1.0 to 2.0 (“second ratio”).
`Ex. 1001, 7:37–44, 8:43–51. With respect to the first ratio, Petitioner
`contends that “the length of the petals in Balzar is about 11.1 mm,” which
`Petitioner equates to the claimed “axial length of the outer face from the
`inflection point to the leading end of said curved face portion.”2 Pet. 47
`(citing Ex. 1024 ¶¶ 110–111). With respect to the second ratio, Petitioner
`also relies on Balzar’s petal length of 11.1 mm as the claimed “length of said
`
`
`2 We reproduce the precise language of claim 1, but note that claim 6
`presents substantially similar language.
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`valves.” Id. at 47–48 (citing Ex. 1024 ¶¶ 112–115). Using this value in its
`calculations, Petitioner contends that the claimed first and second ratio are
`disclosed by Balzar. Id.
`Patent Owner disagrees. Prelim. Resp. 40–49. Specifically, Patent
`Owner argues that Petitioner cannot rely on Balzar’s dimension of 11.1 mm
`as both the axial length of the curved outer face, identified as dimension B in
`the ’075 patent, and the valve length, identified as dimension L in the ’075
`patent. Id. at 45.
`We agree with Patent Owner. Balzar explains that “petals 74 can
`have an elongated, approximately truncated shape, with a rounded end and
`each can have a length of about 7/16 of an inch (about 11.1 mm).”
`Ex. 1005, 9:43–47. From this passage, it is unclear whether the length of
`11.1 mm refers to a straight valve length prior to being formed into the
`curved face shown in Figure 9 (akin to L, in the ’075 patent) or an axial
`length of the curved outer face (akin to B, in the ’075 patent).3 Regardless
`of to which claimed dimension Balzar’s 11.1 mm length relates, Petitioner
`has not explained persuasively how this same claimed dimension can satisfy
`two separate and different dimensions recited in the claims, namely, an
`“axial length of the outer face from the inflection point to the leading end of
`said curved face portion” and a “length of said valves.”
`Thus, for this reason, Petitioner has not established that Balzar
`anticipates independent claims 1 and 6, or claims 2 and 3 which depend
`from claim 1.
`
`
`3 Balzar’s reference to a “rounded end” suggests the 11.1 mm length more
`closely relates to an axial length of the curved outer face.
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`G. Alleged Obviousness over Balzar and Koch
`
`Petitioner contends claims 4 and 5 of the ’075 patent are unpatentable
`under 35 U.S.C. § 103(a) in view of Balzar and Koch. Pet. 51–53.
`Specifically, regarding the claimed ratios discussed above and also required
`by claims 4 and 5, Petitioner incorporates its contentions made with respect
`to purported anticipation by Balzar. Id. at 52 (“For claims . . . 5g through 5i,
`see analysis of Balzar with respect to . . . claims 1g and 1h, respectively.”).
`As discussed supra, however, we are not persuaded by Petitioner’s
`contentions in that regard. See supra Sections II.F.2; see also Prelim.
`Resp. 49–51.
`Thus, for the same reasons discussed above, Petitioner has not
`established that Balzar and Koch would have rendered obvious claims 4–5.
`
`H. Alleged Anticipation by Loyer
`
`Petitioner contends claims 1–3 and 6 of the ’075 patent are
`unpatentable under 35 U.S.C. § 102(b) in view of Loyer. Pet. 53–61. Patent
`Owner disputes Petitioner’s contentions. Prelim. Resp. 54–62. For
`example, Patent Owner argues that Loyer does not disclose the claimed
`ratios. Id. at 54–58.
`After considering the parties’ arguments and evidence, we determine
`that Petitioner has not demonstrated a reasonable likelihood of prevailing on
`this ground.
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`1. Overview of Loyer (Ex. 1006)
`Loyer is a U.S. Patent titled “Domed-Tipped Applicator for
`Catamenial Tampons.” Ex. 1006, [54]. Loyer’s Figure 1 is reproduced
`below.
`
`
`Figure 1 depicts a perspective view of tampon applicator 10, including outer
`tubular member 12, inner tubular member 14, and triangular shaped
`segments 20. Id. at 2:8–9, 23–26, 34–40.
`2. Analysis of Cited Art
`Independent claims 1 and 6 recite that the ratio of a specified radius to
`an axial length of the outer curved face of the applicator is at most 0.8, and
`that a ratio of valve length to width is 1.0 to 2.0. Ex. 1001, 7:37–44, 8:43–
`51. Petitioner contends that Figures 2, 3, and 5 of Loyer show dimensions
`that lead to the claimed ratios. Pet. 58–59 (citing Ex. 1024 ¶¶ 140–143 (near
`verbatim)). Neither the Petition nor the Hull Declaration explain how the
`purported dimensions were obtained, although we presume they come from
`measurements taken with a ruler. Id.; Ex. 1024 ¶¶ 140–143; see also id.
`¶¶ 82–83.
`As discussed above with respect to Petitioner’s contentions regarding
`anticipation by Koch, patent drawings are not persuasive to show particular
`quantitative dimensions when the specification is silent as to the relevant
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`dimensions. See supra Section II.D.2. Here, as above, Loyer does not
`indicate that Figures 2, 3, or 5 are drawn to scale, and Loyer’s written
`description lacks any discussion of the claimed ratios. See generally
`Ex. 1006. As such, we are unpersuaded by Petitioner’s reliance on
`dimensions purportedly depicted in Loyer’s Figures. Petitioner does not
`identify, and we do not discern, any other support in Loyer for the claimed
`ratios.
`Thus, for this reason, Petitioner has not established that Loyer
`anticipates independent claims 1 and 6, or claims 2 and 3 which depend
`from claim 1.
`
`I. Alleged Obviousness over Loyer and Koch
`
`Petitioner contends claims 4 and 5 of the ’075 patent are unpatentable
`under 35 U.S.C. § 103(a) in view of Loyer and Koch. Pet. 61–62.
`Specifically, regarding the claimed ratios discussed above and also required
`by claims 4 and 5, Petitioner incorporates its contentions made with respect
`to purported anticipation by Loyer. Id. (“For claims . . . 5g through 5i, see
`Loyer analysis for claims . . . 1g, 1h, respectively.”). As discussed supra,
`however, we are not persuaded by Petitioner’s contentions in that regard.
`See supra Section II.H.2; see also Prelim. Resp. 63–65.
`Thus, for the same reasons discussed above, Petitioner has not
`established that Loyer and Koch would have rendered obvious claims 4–5.
`
`J. Alleged Anticipation by Berger
`
`Petitioner contends claims 1–3 and 6 of the ’075 patent are
`unpatentable under 35 U.S.C. § 102(b) in view of Berger. Pet. 63–68.
`Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 66–72. For
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`example, Patent Owner argues that Berger does not disclose the claimed
`ratios. Id. at 66–70.
`
`After considering the parties’ arguments and evidence, we determine
`that Petitioner has not demonstrated a reasonable likelihood of prevailing on
`this ground.
`1. Overview of Berger (Ex. 1007)
`Berger is a U.S. Patent titled “Tampon Inserter.” Ex. 1007, [54].
`Berger’s Figure 1 is reproduced below.
`
`
`Figure 1 depicts a perspective view of tampon inserter 10, which includes
`plunger 20, front barrel member 14, and triangular segments 30. Id. at 4:45–
`46, 5:9–10, 5:19–31.
`2. Analysis of Cited Art
`Independent claims 1 and 6 recite that a ratio of a specified radius to
`an axial length of the outer curved face of the applicator is at most 0.8 (“first
`ratio”), and that a ratio of valve length to width is 1.0 to 2.0 (“second ratio”).
`Ex. 1001, 7:37–44, 8:43–51. With respect to the first ratio, Petitioner
`contends that Figure 5 of Berger shows dimensions that result in a ratio of
`1.0, and although 1.0 is not the claimed 0.8, a skilled artisan “would have
`understood that the ratio . . . with a pointed, steeple-shaped, frusto-conical or
`
`
`
`18
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`IPR2017-00694
`Patent 6,432,075 B2
`
`parabolic tip would be less than 1.0, and in all likelihood less than 0.8.”4
`Pet. 66 (citing Ex. 1024 ¶ 168 (near verbatim)). With respect to the second
`ratio, Petitioner contends that Berger’s Figure 5 discloses dimensions
`leading to the claimed ratio. Id. at 67 (citing Ex. 1024 ¶¶ 170–171). Neither
`the Petition nor the Hull Declaration explain how the reported measurements
`were obtained, although we presume they come from measurements taken
`with a ruler. Id. at 66–67; Ex. 1024 ¶¶ 168–171; see also id. ¶¶ 82–83.
`As discussed above with respect to Petitioner’s contentions regarding
`anticipation by Koch, patent drawings are not persuasive to show particular
`quantitative dimensions when the specification is silent as to the relevant
`dimensions. See supra Section II.D.2. Here, as above, Berger does not
`indicate that Figure 5 is drawn to scale, and Berger’s written description
`does not disclose the claimed ratios. See Ex. 1007. Indeed, as Patent Owner
`notes, where Berger discloses a relevant dimension, it varies from that relied
`upon by Petitioner. Prelim. Resp. 66–67. Specifically, the Petition contends
`that the diameter of Berger’s front barrel member 14 is “about 22 mm,” and
`Petitioner uses that dimension in calculating the first ratio. Pet. 66 (citing
`Ex. 1024 ¶ 168). However, this dimension is contradicted by the written
`description of Berger, which explains that the front barrel member’s
`“external diameter, at its widest point, [is] about 0.6 inch,” or 15.24 mm.
`Ex. 1007, 7:24–29; Prelim. Resp. 66–67. As such, we are unpersuaded by
`Petitioner’s reliance on dimensions purportedly depicted in Berger’s Figure.
`
`
`4 This ground is deficient for other reasons, as discussed infra, however, we
`also note that Petitioner’s contention in this regard invokes obviousness
`under 35 U.S.C. § 103(a), not anticipation under § 102(b).
`19
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`IPR2017-00694
`Patent 6,432,075 B2
`
`Petitioner does not identify, and we do not discern, any other support in
`Berger for the dimensions reflected in the claimed ratios.
`Thus, for this reason, Petitioner has not established that Berger
`anticipates independent claims 1 and 6, or claims 2 and 3 which depend
`from claim 1.
`
`K. Alleged Obviousness over Berger and Koch
`
`Petitioner contends claims 4 and 5 of the ’075 patent are unpatentable
`under 35 U.S.C. § 103(a) in view of Berger and Koch. Pet. 68–69.
`Specifically, regarding the claimed ratios discussed above and also
`required by claims 4 and 5, Petitioner incorporates its contentions made with
`respect to purported anticipation by Berger. Id. at 69 (“For claims . . . 5g
`through 5i, see Berger analysis for claims . . . 1g, 1h, respectively.”). As
`discussed supra, however, we are not persuaded by Petitioner’s contentions
`in that regard. See supra Section II.J.2; see also Prelim. Resp. 72–75.
`Thus, for the same reasons discussed above, Petitioner has not
`established that Berger and Koch would have rendered obvious claims 4–5.
`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 ’075 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.
`
`
`
`
`
`
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`IPR2017-00694
`Patent 6,432,075 B2
`
`PETITIONER:
`
`David A. Loewenstein
`Guy Yonay
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`dloewenstein@pearlcohen.com
`guyy@pczlaw.com
`
`
`PATENT OWNER:
`
`Daniel J. Burnham
`NIXON PEABODY LLP
`dburnham@nixonpeabody.com
`
`
`
`
`
`
`
`21
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`
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