Paper: 29
`Trials@uspto.gov
`571-272-7822 Entered: September 28, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MINIATURE PRECISION COMPONENTS, INC.,
`Petitioner,
`
`v.
`
`EAGLE INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01403
`Patent 8,205,592 B2
`____________
`
`
`
`Before MICHAEL W. KIM, JAMES A. WORTH, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: September 28, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MINIATURE PRECISION COMPONENTS, INC.,
`Petitioner,
`
`v.
`
`EAGLE INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01403
`Patent 8,205,592 B2
`____________
`
`
`
`Before MICHAEL W. KIM, JAMES A. WORTH, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
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`IPR2017-01403
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`I. INTRODUCTION
`Miniature Precision Components, Inc. (“Petitioner”) filed a Petition
`for inter partes review of claims 1–19 of U.S. Patent No. 8,205,592 B2
`(Ex. 1002, “the ’592 patent”). Paper 1 (“Pet.”), 1. Eagle Industries, Inc.
`(“Patent Owner”) did not file a Preliminary Response. Upon consideration
`of the Petition, we instituted an inter partes review pursuant to 35 U.S.C.
`§ 314, as to claims 1–19. Paper 8 (“Inst. Dec.”). More specifically, we
`instituted review to decide whether claims 1–12 are unpatentable as
`anticipated by Polytec1; and (2) whether claims 1–19 are unpatentable as
`obvious over Polytec and Burr.2
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 11, “PO Resp.”). On May 4, 2018, pursuant to the
`Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348
`(2018), we issued an Order instituting on all grounds mentioned in the
`Petition, including whether claims 1–19 are unpatentable as obvious based
`on Polytec alone. Paper 15. We granted Patent Owner’s request to file a
`Supplemental Response to address this additional ground (Paper 16), and
`Patent Owner filed a Supplemental Response on June 1, 2018 (Paper 19,
`“PO Supp. Resp.”). Petitioner filed a Reply (Paper 21, “Reply”). On
`September 7, 2018, we held an oral hearing. Paper 28 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has demonstrated,
`
`
`1 WO 2008/055806 A1 (published May 15, 2008) (Ex. 1006). We will cite
`to an English translation of Polytec provided by Petitioner. See Ex. 1007.
`2 U.S. Patent No. 3,487,134 (issued Feb. 8, 1965) (Ex. 1008).
`2
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`by a preponderance of the evidence, that claims 1–19 of the ’592 patent are
`unpatentable.
`
`A. Related Matters
`Petitioner and Patent Owner state that there are no pending related
`matters. Pet. v; Paper 5, 1.
`
`B. The ’592 Patent
`The ’592 patent discloses a noise abatement “engine cover and
`method of making the same with a textured surface.” Ex. 1002, Abstract.
`The noise abatement cover includes a “textured, in-mold coated, high quality
`outer appearance with a core of medium density polyurethane.” Id.
`According to the Background section of the ’592 patent, plastic injection
`molded covers already in use as engine covers provide improved aesthetics,
`but inferior sound absorption. Id. at 1:18–19. In addition, foam products
`may provide improved sound absorption, but not a quality surface
`appearance. Id. at 1:26–27. The ’592 patent also states that designs prior to
`the ’592 patent “contain multiple parts or components for equivalent
`appearance and noise abatement performance.” Id. at 2:3–4. The disclosed
`invention purportedly provides both improved appearance and noise
`abatement, and employs a “preferred single piece construction.” Id. at
`2:8–13.
`
`Figure 1 of the ’592 patent is a top view of a noise abatement engine
`cover, and is reproduced below:
`
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`As illustrated above, Figure 1 shows engine cover 10 including textured
`outer surface 12 with embedded coating 14. Id. at 3:7–8. Outer surface 12
`“can receive its texture from [a] grained aluminum tool that forms part of the
`cavity during the molding process.” Id. at 3:11–13. Embedded coating 14
`“can be an in-mold coating, such as urethane-based paint.” Id. at 3:13–15.
`Apertures 18, 20, 22 and attachment feature 36 help secure engine cover 10
`to the engine. Id. at 3:25–29. Engine cover 10 includes a core of medium
`density foam, such as polyurethane. Id. at 3:21–22.
`Of the challenged claims, claims 1, 9, and 13 are independent. Claim
`1 is illustrative, and is reproduced below:
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`1. An exterior engine cover adapted to be used as an external
`cover of an engine comprising:
`a core of the exterior engine cover being medium density
`polyurethane; and
`a textured outer surface of the exterior engine cover with an
`embedded protective coating that is denser than the core
`wherein the outer surface exposed to the environment has a
`visible outer surface when installed.
`Ex. 1002, 4:21–28.
`C. Instituted Grounds of Unpatentability
`Petitioner challenges claims 1–19 based on the following grounds
`(Pet. 3, 11, 49):
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Polytec
`
`§ 102(b)3
`
`1–12
`
`Polytec and Burr
`
`§ 103(a)
`
`1–19
`
`Polytec
`
`§ 103(a)
`
`1–19
`
`II. ANALYSIS
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
`effect on March 18, 2013. Because the application from which the ’592
`patent issued was filed before that date, any citations to 35 U.S.C. §§ 102
`and 103 are to their pre-AIA version.
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`A prior art document may anticipate a claim if it describes every
`element of the claimed invention, either expressly or inherently. Husky
`Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236, 1248
`(Fed. Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. 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 ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted).
`Petitioner relies on the testimony of Dr. Robert Wagoner, who
`testifies that a person with ordinary skill in the art “is an engineer with a
`bachelor’s of science degree in materials, mechanical, or industrial
`engineering and experience with the manufacture of automotive parts
`including injection molding of polyurethane parts.” Pet. 6–7 (citing
`Ex. 1001 ¶ 55); see also id. at ¶¶ 54, 56–58 (further expert testimony
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`concerning level of ordinary skill in the art). Patent Owner argues that the
`’592 patent “relies heavily on an understanding of polymer chemistry” and
`“discloses a polymer molded foam part,” and, thus, “a background and
`training in polymer chemistry is required to understand this technology.”
`PO Resp. 12. Patent Owner contends that “a proper PHOSITA is one that
`has an advanced degree (masters or higher) in chemistry or chemical
`engineering, with a background in polymer chemistry, and who has
`experience with the manufacture of foam parts, especially those that use
`polyurethane foams.” Id. at 12–13. Petitioner contends that Patent Owner
`failed to provide any evidence that any of the inventors had an advanced
`degree, and Patent Owner’s expert Dr. Hermann testified that it would not
`surprise him if they “only had bachelor degrees so long as they had
`significant experience working in the field.” Reply 11 (citing Ex. 1012,
`61:13–20).
`Based on our review of the record, we adopt Petitioner’s definition of
`the level of ordinary skill in the art. Unlike Petitioner, Patent Owner does
`not support its proposed definition with any citation to expert testimony, and
`the ’592 patent’s mere reference to a polymer molded part does not
`adequately support the notion that one of ordinary skill in the art must have
`an advanced degree in chemistry or chemical engineering in order to
`understand the claimed technology. Accordingly, we apply the following
`level of ordinary skill in the art at the time of the invention in this
`proceeding: an engineer with a bachelor’s of science degree in materials,
`mechanical, or industrial engineering, and experience with the manufacture
`of automotive parts including injection molding of polyurethane parts.
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`C. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear.4 37 C.F.R. § 42.100(b).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only terms which are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In our Institution Decision, we construed “medium density
`polyurethane” to at least include polyurethane foam having a density in the
`range of 5–13 PCF (80–208 kg/m3). Inst. Dec. 6. Neither party disputes that
`construction, and we continue to use that construction, where applicable, in
`this Decision. The parties dispute the construction of “textured” and
`“embedded,” which we address in turn below.
`1. Textured
`Independent claims 1 and 9 require a cover having a “textured outer
`surface.” Petitioner contends that “textured” means “visual or tactile surface
`characteristics.” Pet. 10 (emphasis omitted). Relying on its expert, Dr.
`Wagoner, Petitioner asserts that the specification does not “limit the
`appearance of the engine cover outer surface to a particular type of texture,
`
`
`4 The outcome of this case would be the same using the claim construction
`approach articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc).
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`i.e., rough, smooth, or patterned,” and instead uses the term broadly to refer
`to “any surface appearance.” Pet. 8 (citing Ex. 1001 ¶¶ 161–165).
`According to Petitioner, Figure 1 of the ’592 patent discloses a smooth
`surface, and that the contour lines “simply depict a shape of the engine cover
`and not a particular surface characteristic.” Id. at 9; Reply 4. Petitioner also
`asserts that the prosecution history distinguishes the claimed textured
`appearance from the prior art, without specifying a particular type of texture.
`Pet. at 8–9.
`In our Institution Decision, we adopted Petitioner’s proposed claim
`construction, which was unrebutted at that time. Inst. Dec. 7. We noted,
`however, that “Petitioner does not acknowledge portions of the specification
`suggesting a narrower scope of ‘textured’ that may require a specific surface
`characteristic other than a smooth texture, such as ‘grained.’” Id. (citing Ex.
`1002, 3:11–13, 3:40–43.
`Patent Owner proposes the following construction for “texture”:
`“having a tactile property that is not smooth.” PO Resp. 5. According to
`Patent Owner, that construction comports with the specification, which
`describes an outer surface made from molding in a “grained aluminum tool.”
`Id. (citing Ex. 1002, 3:11–13, 3:40–43; Ex. 2002 ¶ 29). Patent Owner
`contends that a “‘grained aluminum tool’ is a polymer molding tool that
`includes raised, tactile designs on one or more of the molding surfaces.” Id.
`(citing Ex. 2002 ¶¶ 30–31). Patent Owner asserts that the raised, tactile
`surface formed by the grained tool supports its construction, which excludes
`smooth surfaces. Id. at 5–6. Patent Owner also contends that the
`prosecution history supports its construction because the Examiner equated
`textured surfaces with those produced in the prior art using methods that
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`would produce surfaces with raised, tactile properties. Id. at 6. Patent
`Owner also points out alleged problems with Petitioner’s proposed
`construction. Id. at 6–9.
`In its Reply, Petitioner argues that the specification’s description of a
`part made from a “grained” aluminum tool amounts to a mere preference
`that does not limit the scope of “textured.” Reply 3–4. Petitioner also
`repeats its allegation that Figure 1 of the ’592 patent depicts a smooth
`surface, and further argues that the prosecution history also shows examples
`of smooth surfaces when addressing the “textured” limitation. Id. at 4–5.
`Based on our review of the parties’ arguments and the record, we
`construe “textured” to mean having a tactile property that is not smooth, as
`proposed by Patent Owner. The claim suggests that “textured” in the phrase
`“textured outer surface” means something, and limits the claim in some
`manner. Petitioner’s construction, however, would seemingly apply to every
`surface of every kind because it applies to tactile surfaces as well as smooth
`surfaces. In addition, Petitioner’s construction applies to mere visual
`characteristics as well, without any meaningful limitation. The claim
`language, and basic claim construction canons, counsel against such an
`approach. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
`2006) (“Claims are interpreted with an eye toward giving effect to all terms
`in the claim.”).
`The specification also supports Patent Owner’s construction.
`Although the specification uses some permissive language such as “can” and
`“[p]referably,” the specification as a whole does not treat the textured
`surface created by a “grained aluminum tool” as encompassing smooth
`surfaces, as Petitioner proposes. Ex. 1002, 3:11–13, 3:40–41. Instead, the
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`specification as whole suggests that a textured surface has some tactile
`property, and using a grained aluminum tool is the preferred way to create
`such a tactile surface:
`As shown in FIG. 1, an engine cover 10 includes a textured
`outer surface 12 with an embedded coating 14 and an inner
`surface 16 that faces the engine. . . .
`The outer surface 12 can receive its texture from grained
`aluminum tool that forms part of the cavity during the molding
`process.
`. . .
`The method of making the engine cover 10 with an
`appealing outer surface includes several steps. Preferably, the
`cavity within which the molded cover is formed is preferably a
`grained aluminum tool with a[t] least one grained side to produce
`a textured surface of the engine cover 10.
`Ex. 1002, 3:7–43. Importantly, no other process for making the textured
`outer surface appears in the specification, and the specification never
`suggests that a smooth texture may be produced.
`Petitioner argues that Figure 1 depicts a cover with a smooth coating
`because the lines shown in the Figure do not depict a raised, tactile surface.
`See Pet. 9. However, as shown in the quote above, the specification
`describes the surface shown in Figure 1 as a “textured outer surface 12”
`formed using a grained aluminum tool. See Ex. 1002, 3:7–13. Petitioner
`never argues that a surface formed with a grained aluminum tool lacks a
`raised, tactile surface quality. Accordingly, whether claim 1 adequately
`depicts the raised, tactile quality or the surface or not, the figure, as
`described by the specification, does not depict a smooth surface created
`using some undisclosed process. Reading the relevant portions of the
`specification as a whole, we view the permissive “preferably” language in
`
`11
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`the specification as merely indicating that the grained tool method of
`creating the textured surface is not the only way to produce a textured
`surface. The permissive language does not suggest, however, that “textured
`outer surface” in the claims can be smooth, and covers any surface of any
`kind, which would be the effect of adopting Petitioner’s proposed
`construction.
`
`The prosecution history does not define the term “textured,” but the
`Examiner’s statement that textured surfaces can be produced from prior art
`methods that introduce raised tactile properties generally supports Patent
`Owner’s construction. PO Resp. 6. Petitioner correctly points out that this
`example, standing alone, does not necessarily limit the term, but it
`undermines Petitioner’s position that the prosecution history clearly supports
`a broader meaning that encompasses smooth surfaces. Reply 6 n.4.
`
`Based on the foregoing, we construe “textured” to mean having a
`tactile property that is not smooth.
`2. Embedded
`Independent claims 1 and 9 require a surface with an “embedded
`protective coating.” Although Petitioner proposed a construction for the
`term “embedded” in the Petition, we did not view construction of that term
`as necessary at the time of our Institution Decision. See Inst. Dec. 7.
`Petitioner contends that “embedded” means “incorporated and firmly
`affixed.” Pet. 10 (emphasis omitted). Petitioner relies on the specification’s
`description of embedded coating 14, which the Petitioner argues as
`consistent with the ordinary meaning of “embedded,” which is “to
`incorporate or contain as an essential part or characteristic.” Pet. 10 (citing
`Ex. 1001 ¶ 168; Ex. 1002, 2:27–29, 2:33–35; 3:49–53; Ex. 1010).
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`Patent Owner argues that “embedded” means “chemically bonded so
`as to form a single material” in the context of the ’592 patent. PO Resp. 9.
`Patent Owner relies on the specification’s description of the embedded
`coating created by applying a urethane-based paint in a thin layer. Id. at 9–
`10 (citing Ex. 1002, 3:49–52). According to Patent Owner, because the
`dictionary definition for “embed” is “to make something an integral part of,”
`“‘embedded’ in the claims refers to how the protective coating is integrated
`into the cover.” Id. at 10 (quoting Ex. 1010, def. 3). Patent Owner contends
`that the distinction the specification describes, when discussing the prior art,
`is that the claimed embedded coating forms a single layer product, or “an
`integral part.” Id. (citing 1002, 2:13–15). From these teachings, Patent
`Owner contends that the single piece, integral part must be formed by a
`chemical bond because the specification discloses a molding process
`involving a urethane-based paint coating with medium density polyurethane.
`Id. at 10–11.
`In its Reply, Petitioner agrees with Patent Owner that the specification
`indicates that applying the embedded protective coating results in a “‘single
`piece construction,’ i.e., an ‘integral part.’” Reply 8 (quoting Ex. 1002,
`2:10–15). Petitioner disagrees with Patent Owner’s assertion that any of the
`intrinsic evidence supports a construction requiring a chemical bond or a
`single layer of material. Id. at 8–10.
`We agree with Petitioner that nothing in the specification or
`prosecution history supports the aspect of Patent Owner’s construction that
`requires a chemical bond. Instead, as the both parties acknowledge, the
`specification emphasizes that the embedded coating creates a coating that is
`an integral component of the engine cover, resulting in a cover that forms a
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`“single piece.” See Ex. 1002, 2:10–15, 3:9–10, 4:2–3; see also Ex. 1010
`(Patent Owner’s proffered dictionary definition for “embed”: “to incorporate
`or contain as an essential part or characteristic”). We discern no support for
`Patent Owner’s proposed construction that further requires a chemical bond
`with the underlying foam of the cover. Moreover, at oral argument, counsel
`for Patent Owner agreed with Petitioner’s proposed construction, as
`Petitioner portrayed its meaning in the Reply. See Tr. Tran. 24:22–25:4.
`Based on the foregoing, we construe “embedded” to mean
`incorporated and firmly affixed.
`
`D. Anticipation Based on Polytec
`Relying on the Declaration of Dr. Robert H. Wagoner (Ex. 1001,
`“Wagoner Declaration”), Petitioner alleges that Polytec anticipates claims 1–
`12 under 35 U.S.C. § 102(b). Pet. 12–48. Patent Owner, relying on the
`Declaration of Dr. Marc Herrmann (Ex. 2002, “Herrmann Declaration”),
`argues that Polytec does not anticipate because it does not disclose the
`“embedded” or “textured” limitations. PO Resp. 13–21.
`1. Overview of Polytec
`Polytec discloses an engine cover that includes a foam body that
`absorbs sound, and a surface element. Ex. 1007, 3:11–17. The foam body
`consists of polyurethane having a constant density. Id. at 1:25–26, 4:17,
`4:25–26. The surface element, also referred to as a “design surface,” “can
`be optically enhanced, for instance by a back-foamed thermoformed film,
`possibly having an integrated emblem, or by surface-treating the foam body,
`for instance using InMoldCoating (IMC) or PU [i.e., polyurethane] spray
`skin or a PU cast skin.” Id. at 3:5–9.
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`Figure 2 of Polytec shows a section of an engine cover, and is
`reproduced below:
`
`
`As shown above, Figure 2 discloses a section view through Polytec’s engine
`cover. Id. at 4:25. The engine cover includes foam body 1, surface element
`2, emblem 3, design surface 4, and attachment 5. Id. at 4:26–5:1. Design
`surface 4, shown in Figure 2, includes “either a spray skin or a cast skin.”
`Id. at 4:27–28. Figure 3 discloses design surface 6 “dyed using IMC.” See
`id. at 5:4–5, Fig. 3. Other figures disclose various methods of mounting the
`engine cover to the engine, including the use of mounting elements 9, 11 or
`support structure 13 that supports the stability of foam body 1. See id. at
`5:16–6:20, Figs. 5–8. According to Polytec, the invention addresses
`acoustic and design requirements “by forming the entire design surface as a
`foam body also forming the sound absorber, and not as usual, as a plastic
`part.” Id. at 3:4–5.
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`2. Discussion
`Petitioner employs its own construction of the “textured” limitation in
`its anticipation ground. See Pet. 15. As noted above, however, we reject
`Petitioner’s broad construction of “textured,” and instead adopt Patent
`Owner’s construction—“having a tactile property that is not smooth.”
`Petitioner sets forth an alternative obviousness argument in the event that we
`did not adopt its construction of textured, but did not set forth an alternative
`anticipation argument in the event that we did not adopt its construction.
`See id. at 15, 17.
`In its Reply, Petitioner contends that even if we adopt Patent Owner’s
`construction for “textured,” that Polytec “inherently teaches a texture”
`because every surface, “even a visually smooth surface has ‘minimal
`roughness.’” Reply 15 (quoting deposition of Patent Owner’s expert at Ex.
`1012, 33:7–24, 34:6-10). Because Petitioner never raised this inherency
`argument in the Petition, we deem the argument waived. Petitioner was well
`aware that we may not adopt its broad construction for “textured,” and set
`forth an obviousness argument in light of that possibility (see infra p. 37),
`but chose not to set forth an inherency argument. See Pet. 15, 18.
`Moreover, Petitioner’s inherency argument, like its claim construction
`argument, would effectively read “textured” out of the claim by covering
`virtually all surfaces, even smooth surfaces, because all surfaces contain
`some inherent roughness. Accordingly, we view the inherency argument as
`not only waived, but also unconvincing.
`Based on the foregoing, Petitioner has not established that Polytec
`discloses the “textured” limitation in independent claims 1 and 9, and has
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`therefore not established that Polytec anticipates those claims, or claims 2–8
`and 10–12 that ultimately depend from claims 1 and 9.
`
`E. Obviousness Based on Polytec and Burr
`Petitioner, relying in part on the Wagoner Declaration, alleges that
`Polytec and Burr render claims 1–19 obvious under 35 U.S.C. § 103(a). Pet.
`12–69. Patent Owner, relying on the Declaration of Dr. Herrmann, argues
`that neither Polytec nor Burr discloses the “embedded” limitation, and
`therefore none of the claims would have been obvious over Polytec and
`Burr. PO Resp. 13–21.5
`1. Overview of Burr
`Burr, titled “Method for Manufacturing a Textured Surfaced
`Composite Foamed Article and the Mold Therefor,” discloses a method for
`making foamed articles having a skin formed with an embossed design.
`Ex. 1008, 1:3–5, 1:16–18. The embossed film on the foam produces an
`article with an integral connection between the foam and film. Id. at
`1:36–38. To make the article, Burr discloses cavity 5 having “design 6
`etched or embossed on the surface of the cavity.” Id. at 1:72–2:2. For metal
`cavities, Burr discloses the use of a mold-releasing agent over the mold
`
`
`5 In the Institution Decision, we interpreted Petitioner’s ground as based on
`Polytec and Burr for claims 1–19 based on the text of the Petition, even
`though the headings in Petitioner’s argument for claims 1–12 suggested an
`argument based on Polytec alone. Inst. Dec. 5 n.1, 15 n.5; Pet. 11, 15.
`Patent Owner does not challenge that characterization of Petitioner’s
`challenge to claims 1–12 or argue that Petitioner should be limited to an
`obviousness challenge based on Polytec alone. See PO Resp. 13–21; see
`also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2138–39 (upholding
`Board decision to include prior art references in ground at institution, based
`on Board discretion).
`
`17
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`surface prior to adding liquid polyurethane to the mold. Id. at 2:2–5. Burr
`identifies polyethylenes, waxes, and silicones as preferred releasing agents.
`Id. at 2:5–7. Burr describes various processes for producing skin or film 21,
`including laying down three spray coats that include a layer of polyurethane
`and a second layer of paint. Id. at 6:47–54.
`By employing the methods Burr discloses, “it is possible to get non-
`specular films having a paint finish or appearance referred to as satin,
`eggshell, flat, velvet or suede.” Id. at 6:65–67. Burr identifies automobile
`crash pads, seat cushions, and arm rests as possible articles suitable for
`manufacture using the methods disclosed by Burr. Id. at 1:27–28, 5:56,
`6:58.
`
`2. Analysis of Independent Claim 1
`i. The “Embedded” Limitation
`Patent Owner’s only argument against the obviousness of claim 1 over
`Polytec and Burr rests on the alleged failure of Polytec to disclose the
`“embedded” limitation, and we begin our analysis there. See PO Resp. 13–
`19. As noted above, we adopt Petitioner’s construction of “embedded” to
`mean “incorporated and firmly affixed.”
`Petitioner, relying on its proposed construction and the Wagoner
`Declaration, argues that Polytec discloses the “embedded protective
`coating.” Pet. 16. First, Petitioner notes that he ’592 patent describes “one
`example of an embedded protective coating as an in-mold coating (IMC),
`such as a urethane-based paint. Id. (citing Ex. 1002, 3:13–14, 3:49–53).
`Petitioner also notes the ’592 patent teaches the “coating may also be a
`urethane spray skin.” Id. (citing Ex. 1002, 3:53–56). Petitioner then argues
`that Polytec discloses the same options for creating an embedded design
`
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`surface on a foam body, including “a back-foamed thermoformed film, an
`IMC, a PU spray skin, or a PU cast skin.” Id. (citing Ex. 1001 ¶¶ 197–200;
`Ex. 1007, 3:5–9). According to Petitioner, Polytec, like the ’592 patent,
`describes an IMC that can be a urethane-based paint. Id. (citing Ex. 1007,
`3:5–9, 5:4–5, 7:23). Petitioner also asserts that Polytec describes its design
`surfaces as “integral to the cover” because it describes an “integrated
`emblem” and “integral skin.” Id. (citing Ex. 1007, 3:28–31) (emphasis
`omitted).
`Patent Owner argues that Polytec’s disclosed methods of forming the
`design surface result in a “multi-layer cover,” and that such a cover results in
`a “multi-piece” construction. PO Resp. 14 (citing Ex. 1007, 1:14–16, 3:11–
`12, claim 1). Patent Owner, relying on the Herrmann Declaration, then
`summarizes how Polytec’s disclosed methods allegedly work, and contends
`that none of them result in a chemical bond between the layers. Id. at 15–16
`(citing Ex. 2002 ¶¶ 63–65). Responding to Petitioner’s assertions, Patent
`Owner argues that the ’592 patent and Polytec do not disclose the same
`options for creating an embedded design surface, because the ’592 patent’s
`method results in a “single piece of material,” and Polytec’s methods result
`in a “multi-layer” product that does not have an embedded coating. Id. at
`17. Patent Owner also argues that Petitioner fails to provide evidence to
`support its position, even if we adopt Petitioner’s construction. Id. at 17–19.
`More specifically, Patent Owner contends that Petitioner does not
`adequately support its position that Polytec’s methods result in an
`“incorporated and firmly affixed” coating. Id. at 18. Patent Owner also
`argues that Petitioner’s positions lack citation to convincing evidence in
`Polytec. Id. at 19.
`
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`
`In its Reply, Petitioner contends that, under its construction, the claim
`“simply requires that the coating is incorporated into or is an integral part of
`the engine cover, as distinguished from the two-piece engine covers
`described in the ‘Background’ of the ’592 Patent.” Reply 17. Petitioner
`again focuses on the similarity of the methods used in the ’592 patent and
`Polytec, and argues that Polytec stresses, like the ’592 patent, how its design
`distinguishes over a cover with a separate plastic part. Id. at 17–18 (citing
`Ex. 1007, 3:4–9, 3:28–31). Petitioner also argues that even using Patent
`Owner’s construction, Polytec discloses the limitation or, in the alternative,
`Burr does so. Id. at 18–20.
`Based on our review of the record, and applying Petitioner’s proposed
`construction that we adopted above, we find that Petitioner establishes
`adequately that Polytec discloses an embedded coating. First, as Petitioner
`notes, both the ’592 patent and Polytec use similar terminology when
`describing how the respective coatings are made. Pet. 16; Reply 17–18. In
`particular, both the ’592 patent and Polytec disclose use of an in-mold
`coating (“IMC”) or a urethane-based spray skin to create the respective
`coatings. Ex. 1002, 3:13–16 (“The coating 14 can be an in-mold coating,
`such as urethane-based paint.”), 3:53–54 (“Another option for top coating is
`a urethane spray skin.”); Ex. 1007, 3:5–8 (“The design surface can be
`optically enhanced . . . by surface-treating the foam body, for instance using
`InMoldCoating (IMC) or PU [i.e., polyurethane] spray skin.”), 7:23 (“an
`IMC coat of paint”); Ex. 1001 ¶ 198. In addition, both the ’592 and Polytec
`disclose coating polyurethane foam. Ex. 1002, 3:21–22; Ex. 1007, 1:26–27.
`These similarities strongly suggest that Polytec discloses a coating made
`with the same process as the claimed “embedded protective coating,” and
`
`20
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`that Polytec disc
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