Paper 36
`Trials@uspto.gov
`Entered: January 4, 2019
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MULTI PACKAGING SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPI CARD GROUP – MINNESOTA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Determining That Claims 1–30 Are Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`Trials@uspto.gov
`Entered: January 4, 2019
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MULTI PACKAGING SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPI CARD GROUP – MINNESOTA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Determining That Claims 1–30 Are Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`I. INTRODUCTION
`This is an inter partes review of claims 1–30 of U.S. Patent
`No. 8,419,889 B2 (Ex. 1001, “the ’889 patent”). In our Institution Decision
`(Paper 11, “Dec.”), we instituted review based on the grounds set forth in the
`Petition (Paper 2, “Pet.”). Petitioner bears the burden of proving
`unpatentability by a preponderance of the evidence, a burden that never
`shifts to Patent Owner. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). We have jurisdiction under 35 U.S.C. § 6. We issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a).
`Patent Owner filed a Response (Paper 19, “Resp.”), Petitioner filed a
`Reply (Paper 29, “Reply”), and Patent Owner filed a Sur-Reply (Paper 31,
`“Sur-Reply”). We held a final oral hearing on October 3, 2018. See
`Paper 35 (“Tr.”). Except as otherwise noted, we cite to public versions of
`papers and exhibits filed in this proceeding.
`
`A. Related Proceedings
`According to the parties, Patent Owner asserts claims 1–5, 7, 11, 16–
`18, 22–27 and 30 against Petitioner in a co-pending district court action. See
`Pet. 3 and Paper 5 (both parties, identifying as a related proceeding the
`district court action in CPI Card Group Inc. v. Multi Packaging Solutions,
`Inc., No. 1:16-CV-02536 (D. Colo.) (filed Oct. 11, 2016)).
`
`B. The ’889 Patent (Ex. 1001)
`The ’889 patent is titled “Ultrasecure Card Package.” Ex. 1001, 1:1.
`The invention “relates generally to secure point-of-sale activated cards,”
`including, for example, “debit cards, gift cards, credit cards, telephone cards
`
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`and the like,” and, specifically, to a method of packaging cards for
`“enhanced security.” Id. at 1:12–13, 16–17, 44.
`The ’889 patent describes a method of retaining a card between two
`panels secured together by an adhesive. Id., Abstract. The panels may be
`constructed of paper stock that is clay coated on both sides. “[A] heat
`activated adhesive” may be “applied directly to the clay coated inner
`surfaces” of the paper stock panels. Polyurethane is a suitable heat-
`activatable adhesive for use in the claimed method. “The adhesive is applied
`using known printing techniques” that may involve a “printing roller” or “a
`Gravure press.” Id. at 8:20–36.
`“The heat activated adhesives” may be applied “in the normal printing
`process and allowed to dry to be activated later.” Id. at 8:45–47. “The heat
`activated adhesive can be applied to the entire surface of the panel, and only
`activated selectively by heating only the portions of the panels that are to be
`bonded.” Id. at 8:50–53. The specification describes “embodiments that
`include” an “aperture.” Id. at 7:10–11. The card may have “a data field on
`it” that “is viewable through the aperture.” Id. at 3:56–57.
`
`C. Illustrative Claims
`Claims 1 and 18 are the only independent claims. Claim 1 is
`illustrative and reproduced below:
`1. A method for producing a secure card package
`containing a point-of-sale activatable card, comprising:
`
`providing a first panel and a second panel each
`
`comprising paper stock and having a non-polymeric coated
`inner surface;
`printing a heat-activatable adhesive directly upon the
`non-polymeric coated inner surface of the first panel;
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`
`allowing the heat-activatable adhesive to dry upon the
`non-polymeric coated inner surface of the first panel;
`locating a point-of-sale activatable card between the
`inner surface of the first panel and an inner surface of the
`second panel, after the step of allowing the heat-activatable
`adhesive to dry upon the non-polymeric coated inner surface of
`the first panel; and,
`activating the heat-activatable adhesive, after the locating
`step, by applying heat and pressure only in a region
`substantially surrounding and offset from the point-of-sale
`activatable card to enclose the point-of-sale activatable card
`in a secure space between the first and second panels.
`
`
`Ex. 1001, 8:66–9:19 (emphasis added).
`Claim 18 (the only other independent claim) similarly includes
`the above-emphasized limitation. Claim 18 further specifies that the
`surfaces of the panels are clay coated and the heat-activatable
`adhesive comprises polyurethane. Id. at 10:7–28.
`
`D. Evidence Relied Upon
`The Petition identifies the following references as prior art in the
`grounds of unpatentability:
`(1) US Pat. Pub. No. 2006/0151348 A1, patent application to Rick L.
`Willard, published July 13, 2006 (Ex. 1010, “Willard”);
`(2) US Pat. Pub. No. 2007/0160833 A1, patent application to Kevin
`D. Maak, et al., published July 12, 2007 (Ex. 1011, “Maak”);
`(3) US Pat. Pub. No. 2007/0034543 A1, patent application to Marty
`Jones, published February 15, 2007 (Ex. 1012, “Jones”);
`(4) J. Dormish, Tack Measurement of Heat-Activated Polyurethane
`Adhesives, Adhesives & Sealants Industry Vol. 12, No. 11 (November 2005)
`(Ex. 1013, “ASI”);
`
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`(5) US Pat. Pub. No. 2007/0051652 A1, patent application to
`Christopher R. Tilton, published March 8, 2007 (Ex. 10014, “Tilton”);
`(6) US Pat. No. 6,099,682, issued to Stephen E. Krampe, et al., on
`August 8, 2000 (Ex. 1045, “Krampe”);
`(7) US Pat. No. 5,605,230, issued to Michael A. Marino, Jr. on
`February 25, 1997 (Ex. 1044, “Marino”);
`(8) US Pat. No. 5,760,381, issued to Rebecca Stich, et al., on June 2,
`1998 (Ex. 1020, “Stich”).
`Petitioner relies on the Declaration of Paul Singh, Ph. D. Ex. 1002.
`Patent Owner relies on the corrected Declaration of Robert Kimmel, Sc. D.
`Ex. 2012. As an initial matter, based on the information reflected in their
`curricula vitae, we determine that both Dr. Singh and Dr. Kimmel are
`qualified to opine from the perspective of a person of ordinary skill in the art
`at the time of the invention. See Ex. 1002, Appendix A (Dr. Singh’s
`curriculum vitae); Ex. 2012, Appendix A (Dr. Kimmel’s curriculum vitae).
`E. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–30 of the ’889
`patent on the following grounds (see Pet. 5 (grounds chart)):
`
`Claim(s)
`1–3, 7, 9, 10, 12,
`14, 16, 22–27, 30
`4, 5, 18
`
`6, 8, 11, 17
`
`13
`
`
`
`
`
`References
`Willard, Maak,
`Jones
`Willard, Maak,
`Jones, ASI
`Willard, Maak,
`Jones, Tilton
`Willard, Maak,
`Jones, Krampe
`
`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`5
`
`
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`
`Claim(s)
`
`15
`
`28, 29
`
`19
`
`20, 21
`
`
`
`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`References
`Willard, Maak,
`Jones, Marino
`Willard, Maak,
`Jones, Stich
`Willard, Maak,
`Jones, ASI, Tilton
`Willard, Maak,
`Jones, ASI, Tilton,
`Marino
`
`II. ANALYSIS
`We organize our analysis into five main sections. First, we resolve
`
`the level of ordinary skill in the art at the time of the invention. Second, we
`address claim construction. Third, we weigh the evidence of obviousness
`against the objective indicia of nonobviousness to determine whether
`Petitioner demonstrates by a preponderance of the evidence that the subject
`matter of independent claim 1 would have been obvious over the combined
`disclosures of Willard, Maak, and Jones. Fourth, we assess the challenge
`asserted against independent claim 18, which adds ASI to the obviousness
`analysis. Lastly, we address the patentability challenges asserted against
`dependent claims 2–17 and 19–30.
`
`A. The Level of Ordinary Skill in the Art
`We consider the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Petitioner submits that an ordinarily skilled artisan would
`typically have had at least a bachelor’s degree in packaging, or a comparable
`field, and about six months of internship or work experience creating,
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`testing, and evaluating paperboard based packaging with adhesives. Pet. 10.
`Alternatively, in Petitioner’s view, the ordinarily skilled artisan would have
`had about four years of relevant industry experience in packaging and,
`further, a familiarity with paper and paperboard packaging, converting, and
`adhesives. “Additional graduate education could substitute for professional
`experience, or significant experience in the relevant field . . . could substitute
`for formal education.” Id. at 10–11 (citing Ex. 1002 ¶¶ 3, 14, 36–39).
`Based on our review of the asserted prior art references, we determine
`that the prior art itself reflects the level of ordinary skill in the art at the time
`of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (prior art itself can reflect appropriate level of ordinary skill in the
`art); see Resp. 14 (Patent Owner, agreeing, in this case, “the prior art itself is
`sufficient to demonstrate the level of ordinary skill in the art at the time of
`the invention”). To the extent that a more specific definition is required, we
`adopt Petitioner’s definition, which is not challenged by Patent Owner
`(Resp. 14) and is comparable to the level of skill reflected in the prior art.
`B. Claim Construction
`In this inter partes review, the Board interprets the claims using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b) (2016)1; Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016). Under that standard, claim terms are given their
`
`
`1 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
`
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`ordinary and customary meaning in view of the specification, as understood
`by a person 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). We resolve
`disputed claim terms only as necessary to our decision. Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’” (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`Neither party advances or requests an express construction of any
`claim term. Pet. 10; Resp. 14. The main dispute between the parties,
`however, is whether the combined teachings of Willard, Maak, and Jones
`would have suggested to an ordinarily skilled artisan the limitation, which
`appears in both challenged independent claims, that requires “applying heat
`and pressure only in a region substantially surrounding and offset from the
`point-of-sale-activatable card to enclose the . . . card in a secure space
`between the first and second panels.” Id. at 9:15–19; 10:24–28 (independent
`claims 1 and 18); see Pet. 28–29 (claim chart, mapping that limitation to
`disclosures in Willard, Maak, and Jones); Resp. 18–34 (leading with a 26-
`page argument that the prior art does not disclose that limitation); Reply 3–
`12 (Petitioner, devoting about half of its final brief to that issue); Sur-
`Reply 1–9 (Patent Owner, devoting nearly all of its final brief to that issue).
`Based on the information presented during trial, we agree with the
`parties that no claim term requires express construction for purposes of this
`Decision. Pet. 10; Resp. 14. To the extent any claim term requires
`discussion, however, including the limitation that pertains to a selective
`
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`application of heat and pressure, we provide it in our analysis below, when
`addressing the merits of the patentability challenges asserted in the Petition.
`
`C. Independent Claim 1
`We next consider whether Petitioner establishes by a preponderance
`of the evidence that the subject matter of independent claim 1 would have
`been obvious at the time of the invention in view of the combined
`disclosures of Willard, Maak, and Jones. See Ex. 1001, 8:66–9:19 (claim 1);
`Pet. 5 (grounds chart). We organize this section into four subparts. First, we
`address whether the five method steps of claim 1 are taught or suggested by
`the combined disclosures of Willard, Maak, and Jones. Second, we consider
`whether Petitioner advances a persuasive, art-based rationale that explains
`why an ordinarily skilled artisan would have been led to combine the
`references in the manner claimed. Third, we assess the objective evidence
`of nonobviousness raised by Patent Owner in the Response. Fourth, we
`weigh the prior art evidence of obviousness against the objective evidence of
`nonobviousness to reach our conclusion on whether claim 1 is patentable.
`
`(a) The Five Method Steps of Claim 1
`Claim 1 recites a method comprising five steps. Ex. 1001, 8:65–9:19.
`
`Petitioner directs us to substantial evidence (organized, for convenience, in a
`claim chart) that maps each method step of claim 1 to disclosures in Willard,
`Maak, and Jones. Pet. 16–29 (claim chart) (and evidence cited therein). We
`address each step of claim 1 in turn below.
`
`(i) Step 1 of Claim 1
`Claim 1 is directed to “[a] method for producing a secure card
`package containing a point-of-sale activatable card” (preamble) that includes
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`“providing a first panel and a second panel each comprising paper stock and
`having a non-polymeric coated inner surface” (first method step of claim 1).
`Ex. 1001, 8:66–9:3.
`Willard discloses a method of manufacturing a wallet card package
`for “phone cards, merchant cards, gift cards, [or] debit cards” that require
`“point-of-sale activation” before they will function. Ex. 1010 ¶ 2; Pet. 16–
`20 (claim chart). Willard’s wallet card package may secure multiple cards
`or a single card. Ex. 1010 ¶ 21; Pet. 17. We reproduce below Figure 9 of
`Willard, which illustrates, in an open position, a wallet card package
`manufactured according to Willard’s process for securing two cards.
`
`
`Ex. 1010, Fig. 9; Pet. 18, 27 (claim chart). Figure 9 is an interior plan view
`of Willard’s wallet card package in an open position. Ex. 1010 ¶ 15.
`
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`Willard’s wallet card package “is manufactured from a conventional
`die cut paperboard blank.” Id. ¶ 32. The front and rear panels of the
`package “can be die cut as separate elements or,” as illustrated in Figure 9,
`they can be adjoined” along an edge. Id. ¶ 33. Willard’s wallet card
`package secures one or more point-of-sale activatable cards between two
`panels of “conventional” paperboard. Pet. 1; Ex. 1010 ¶ 32, claim 7; see
`Pet. 16–18 (claim chart, and evidence cited therein).
`Petitioner points us to persuasive evidence that Maak and Jones both
`describe paperboard panels having “a non-polymeric coated inner surface,”
`as required by the first step of claim 1, and that these panels would have
`been recognized as a material suitable for use in manufacturing Willard’s
`wallet card package. Ex. 1001, 9:2–3. For example, Maak informs that
`“clay-coated cardboards”2 are useful in various commercial applications,
`including product packaging. Pet. 20 (quoting, e.g., Ex. 1011 ¶¶ 16, 171;
`citing, e.g., Ex. 1011 ¶ 2). Jones, further, discloses a package for a
`consumer product that is constructed from a “top panel” and a “bottom
`panel” of “cardboard” or “paperboard” having “clay-coated” inner and outer
`surfaces.3 Pet. 18–20 (quoting Ex. 1012 ¶¶ 11, 15, 25, 32).
`
`
`2 It is undisputed that clay is “a non-polymeric” coating within the meaning
`of claim 1. Pet. 52 (“clay . . . is a well-known type of ‘non-polymeric’
`coating”) (citing Ex. 1001, 9:20–22 (claim 2, which specifies “clay” as the
`non-polymeric coating)); Ex. 1002 ¶ 42 (Dr. Singh, explaining the well-
`known benefits of using clay-coated paperboard in packaging applications);
`Resp. 36 (“Patent Owner agrees that clay is a nonpolymeric coating.”).
`
` Jones relates to a “blister pack or blister card” used to contain items such as
`pills, candy, or other consumer products. Ex. 1012 ¶ 3. We find that blister
`card packaging is within the packaging art or, alternatively, is analogous to
`11
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`Petitioner persuasively maps the first method step of claim 1 to
`disclosures in Willard, Jones, and Maak. Pet. 16–20 (claim chart, pertaining
`to first step of claim 1, and evidence cited therein).
`
`(ii) Step 2 of Claim 1
`Claim 1 requires, as a second step, “printing a heat-activatable
`adhesive directly upon the non-polymeric coated inner surface of the first
`panel.” Ex. 1001, 9:4–5. Both Maak and Jones disclose or suggest printing
`an adhesive on a non-polymeric coated panel—specifically, a clay coated
`panel. See Pet. 2, 12–13; Ex. 1011, Abstract, ¶¶ 2, 10, 12, 16, 18, 19, 22–23,
`167–168, 171 (disclosures in Maak teaching the application of
`“polyurethane polyvinyl chloride” adhesives on “clay-coated cardboard” by
`“a roll coater or a gravure coater” printing technique); Ex. 1012, Abstract,
`¶¶ 25, 32, 34, 36, Fig. 1 (disclosures in Jones that teach sandwiching and
`protecting an item between top and bottom panels of paperboard that are
`clay-coated on both sides and sealing the panels together “by any means
`known in the art, including” by known “heating processes”).
`Maak expressly discloses the use of a selectively heat-activatable
`aqueous dispersion “for forming an adhesive bond” that is useful in
`
`
`paper-to-paper packaging, because both packaging methods serve the same
`or similar functions; that is, providing a tamper resistant package that
`permits a consumer to easily withdraw an item (compare Ex. 1001, 1:12–15,
`6:22–23, with Ex. 1012 ¶¶ 5, 8)), and both packaging methods use the same
`or similar techniques and materials. Pet. 44 (citing Ex. 1002 ¶¶ 31–35). It
`follows that an ordinarily skilled artisan would have looked to Jones when
`seeking to improve the wallet card packaging method of Willard. See Pet. 6
`(pointing out that, during patent prosecution, Patent Owner submitted prior
`art that included blister packaging of products).
`
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`“packaging.” Ex. 1011, Abstract, ¶ 2; see Pet. 12 (discussing Maak’s
`disclosure) (citing Ex. 1011, Abstract, ¶¶ 10–12, 19). Maak discloses
`applying heat-activatable adhesive on clay-coated cardboard having “a non-
`polymeric inner surface” as specified in claim 1. Id. Maak discloses
`printing on the cardboard an adhesive that comprises polyurethane.
`Ex. 1011 ¶¶ 22–23 (Maak, explaining that the adhesive may comprise
`“polyurethane polyvinyl chloride”); Pet. 53.
`Relevant also to the printing step, Maak applies the adhesive on a
`substrate (such as “clay-coated cardboard”) “with a roll coater or a gravure
`coater.” Ex. 1011 ¶ 171; Pet. 12, 21–22. Those specific printing techniques
`are discussed and claimed in the ’889 patent. Ex. 1001, 4:5–8, 9:4–46
`(the ’889 patent, including claim 9, which specifies that the printing step of
`the invention “is completed utilizing at least one of a printing roller, a flood
`coater, a gravure press, and an anilox roller plate”). Maak further identifies
`conventional techniques of printing a heat-activatable adhesive on a clay-
`coated surface of cardboard. Pet. 21–22 (claim chart, citing Ex. 1011 ¶¶ 10,
`16, 18, 167, and 171). Willard secures the two panels together with “a heat-
`activated adhesive” that is “pre-applied” using “conventional techniques.”
`Pet. 1, Ex. 1010 ¶¶ 35–36; see Pet. 20–21 (including citations to Willard).
`Jones similarly seals panels together “by any known means” and refers to
`“gluing and heating processes known to those skilled in the art.” Pet. 22
`(quoting Ex. 1012 ¶ 34).
`Patent Owner responds with the argument that Maak is concerned
`only with “coating” a substrate with adhesive—for example, “coating with a
`roll coater or a gravure coater.” Resp. 41 (quoting Ex. 1011 ¶ 171). By way
`of support, Patent Owner directs us to cross-examination testimony of
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`Dr. Singh, which, in Patent Owner’s view, demonstrates a distinction
`between Maak’s “coating” technique and the step of “printing” an adhesive
`as required by the challenged patent claims. Id. at 41–43. After considering
`the extrinsic evidence upon which Patent Owner relies (namely, Dr. Singh’s
`isolated statements during cross-examination), and the strong intrinsic
`evidence of record upon which Petitioner relies, we determine that Petitioner
`persuasively shows that coating an adhesive “with a roll coater or gravure
`coater” (Ex. 1011 ¶ 171) represents a “printing technique” within the scope
`of the ’889 patent claims. Pet. 12 (quoting Ex. 1001, 8:34–38 (the ’889
`patent specification, identifying those same coating methods as printing
`techniques suitable for use in the claimed invention)); see Reply 22–23 (and
`evidence cited therein, showing persuasively that Maak’s coating techniques
`would have been suitable for use in printing adhesives as claimed in the ’889
`patent (citing Ex. 2011, 304:4–24 (Dr. Singh’s deposition testimony)).
`Petitioner thus persuasively maps the second method step of claim 1
`to disclosures in Willard, Jones, and Maak. Pet. 20–22 (claim chart
`pertaining to second step of claim 1, and evidence cited therein).
`
`(iii) Step 3 of Claim 1
`The third step of claim 1 requires “allowing the heat-activatable
`adhesive to dry upon the non-polymeric coated inner surface of the first
`panel.” Ex. 1001, 9:6–7. Willard makes plain that any “desired printed
`information” may be applied to the panels either before or after the die
`cutting process. Ex. 1010 ¶ 32; Pet. 20. In Willard, “[a] layer of adhesive or
`cement is then applied to either or both of the interiors front 513 and rear
`514 panels using conventional techniques and apparatus.” Ex. 1010 ¶ 35;
`Pet. 20–21.
`
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`Those conventional techniques would have included printing a heat-
`activatable adhesive onto the surface of a panel and allowing the adhesive to
`dry. For example, Maak discloses the application of a heat-activatable
`“aqueous dispersion” directly upon a clay-coated cardboard surface “to form
`a selectively activatable coating.” Ex. 1011 ¶¶ 10, 16, 18; Pet. 21. Maak
`further discloses “letting the [adhesive] precursor solution dry” on a “clay
`coated cardboard” substrate. Ex. 1011 ¶ 167; see id. ¶¶ 18, 168, 171
`(disclosing further information about drying the adhesive on the clay-coated
`cardboard prior to shipping or storage and before activation); Pet. 23.
`Maak explains the advantage that, by drying the adhesive on the clay-
`coated cardboard, “[t]he resultant coated substrate may then be shipped to
`another location for activation, or may be stored for later use.” Ex. 1011
`¶ 168; Pet. 23. Maak’s process, thereby, “provides a source of ‘on-demand’
`adhesives” for use in packaging. Ex. 1011 ¶ 168, Pet. 23. Maak discloses
`shipping the “unactivated” and “potentially dry” adhesive coated substrate to
`allow for subsequent activation by means of the “application of heat” or
`“pressure . . . at a later time” and “at the specific substrate location where
`bonding is desired.” Ex. 1011 ¶ 18; Pet. 24–28; see Ex. 1001, 9:8–15
`(claim 1 limitations pertaining to these steps).
`Petitioner persuasively maps the third method step of claim 1 to
`disclosures in Willard and Maak. Pet. 23– 24 (claim chart pertaining to third
`step of claim 1, and evidence cited therein).
`
`(iv) Step 4 of Claim 1
`The method of claim 1 also requires “locating” the card “between the
`inner surface of the first panel and an inner surface of the second panel.”
`Ex. 1001, 9:8–10. Willard discloses and illustrates “front 512” and
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`Patent 8,419,889 B2
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`“rear 514” panels “that close about and secure debit card 516.” Ex. 1010
`¶ 22, Fig. 9; Pet. 27. Willard expressly states that “the debit card” is
`“disposed between said front panel and said rear panel.” Pet. 24 (quoting
`Ex. 1010, claim 7). Jones does not specifically enclose a card, but shows
`that it was known in the art to dispose a consumer product “between the
`front panel [] and the back panel” in a package. Id. at 27–28 (quoting
`Ex. 1012 ¶ 34); see supra 11–12 n.3 (for reasons why an ordinarily skilled
`artisan would have looked to Jones’s disclosure when modifying Willard’s
`method of manufacturing a wallet card package).
`Petitioner persuasively maps the fourth step of claim 1 to disclosures
`in Willard and Jones. Pet. 24–28 (claim chart pertaining to third step of
`claim 1, and evidence cited therein).
`
`(v) Step 5 of Claim 1
`The fifth step of claim 1 requires “activating the heat-activatable
`adhesive” selectively; that is, “only in a region substantially surrounding and
`offset from the” card in order to “enclose the . . . card in a secure space
`between the first and second panels.” Ex. 1001, 9:13–19. As explained
`above, although neither party advances or requests an express claim
`construction for any claim term, the central dispute in this case is whether
`this fifth step of claim 1 would have been obvious to a person of ordinary
`skill in the art at the time of the invention. See supra at 8 (citing Pet. 10, 28–
`29; Resp. 14, 18–34; Reply 3–12; Sur-Reply 1–9). The meaning and scope
`of this disputed limitation requires some discussion.
`The specification of the ’889 patent explains the limitation at issue as
`follows:
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`Patent 8,419,889 B2
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`
`The heat activated adhesive can be applied to the entire surface
`of the panel, and only activated selectively by heating only the
`portions of the panels that are to be bonded. With glues [by
`comparison], care must be taken to avoid allowing the glue to
`contact the package contents and adhere to them. This fact,
`combined with the . . . ease of controlled application of the heat
`activated adhesives provide for more efficient production of
`packages and lower reject rates.
`Ex. 1001, 8:50–58.
`In our view, the fifth step of claim 1 recognizes the benefit of sealing
`packaging material around an item without activating adhesive directly on
`top of the item itself. Counsel for Patent Owner confirmed that reasonable
`view of the disputed claim limitation during the final oral hearing. See., e.g.,
`Tr. 55:16–19 (Patent Owner’s counsel, explaining that the adhesive is “not
`going to be right on the card, it’s going to be offset from the card a little bit
`and it’s substantially surrounding the card”). Claim 1 does not require a
`“hermetically sealed” package (id. at 54:3), but rather, by its express terms,
`employs a selective activation step to create “a secure space” that will
`“enclose” the card. Ex. 1001, 9:13–19; see Tr. 61:24–63:16 (Patent Owner’s
`counsel, explaining that the claims require sealing two panels together in a
`manner that secures a card and prevents tampering). For reasons that follow,
`we find that Petitioner demonstrates by a preponderance of the evidence that
`a person of ordinary skill in the packaging art would have recognized
`benefits and advantages of sealing two panels together to secure an item
`within an interior space formed between the panels—without activating
`adhesive on the item itself.
`Willard teaches, “[w]hen a heat-activated adhesive is used, the two
`panels are folded and then sealed together by selectively applying heat and
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`pressure to the panels.” Pet. 28 (claim chart, quoting Ex. 1010 ¶ 36).
`Willard further states that “front 512 and rear 514 panels” are designed to
`“close about and secure the debit card 516.” Id. (quoting Ex. 1010 ¶ 22).
`Willard informs that “the secured card 505B stays within the package 500.”
`Id. (quoting Ex. 1010 ¶ 39).
`Willard’s disclosure would have informed an ordinarily skilled artisan
`to seal the open edges of two “separate” panels to secure an item in a space
`between the two panels. Ex. ¶¶ 31, 38 (explaining that the front and rear
`panels “can be separate, unconnected pieces” that are “sealed together by
`selectively applying heat and pressure to the panels”); Pet. 24, 27 (claim
`chart, citing those two paragraphs). Patent Owner’s counterargument—that
`Willard uses adhesive “solely to hold portions of the panels in a folded
`position” (Resp. 22–23)—relates to an embodiment wherein two panels are
`adjoined along one edge, and ignores Willard’s disclosure of forming a
`package from two panels that are “separate elements” sealed together around
`a wallet card. Ex. 1010 ¶¶ 31–32, 36. Patent Owner’s own witness
`acknowledged that Willard’s front and rear panels “can be separate
`unconnected pieces.” Reply 7; Ex. 1010 ¶ 31; Ex. 1051, 109:10–110:10
`(Dr. Kimmel’s cross-examination testimony).
`An ordinarily skilled artisan would have been aware further of Maak’s
`recommendation to selectively apply heat to a heat-activatable adhesive “at
`the specific substrate location where bonding is desired” and “only in the
`locations where sufficient heat” is applied to achieve a bond. Pet. 28–29
`(quoting Ex. 1011 ¶¶ 18); Reply 10 (citing Ex. 1011 ¶ 18). The ordinarily
`skilled artisan also would have been aware of Jones’s teaching that top and
`bottom panels of packaging material “may be sealed together along the outer
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`perimeter to form an interior pocket” for containing an item, by employing
`“any means known in the art, including . . . heating processes known to
`those skilled in the art.” Pet. 29 (quoting Ex. 1012 ¶¶ 34, 36).
`“Knowing that two panels can ‘close about and secure the debit card,’
`and that ‘heat and pressure’” are “selectively” applied “to accomplish that
`result” in Willard, the ordinarily skilled artisan would have been prompted
`“to apply heat and pressure only in a region substantially around and offset
`from the card” when sealing two panels together to create a secure package
`that entraps the card. Reply 7; Ex. 1002 ¶¶ 110, 113–117; Ex. 2011,
`247:10–11, 250:11–260:4; Ex. 2010); see Ex. 1010 ¶ 38 (Willard, explaining
`that, “[i]n the completed package,” the two panels “entrap” the cards sought
`to be secured). Modifying Willard’s process to apply “heat and pressure all
`around the edge of the package” when two separate panels are employed to
`entrap a card would have required no more than an exercise of ordinary skill
`and creativity in the packaging art. Reply 2 (citing Ex. 2011, 247:10–
`248:24, 250:11–260:4; Ex. 2010; Ex. 1002 ¶¶ 110, 114–116).
`Petitioner directs us to substantial evidence that the combined
`teachings of Willard, Maak, and Jones would have suggested selectively
`applying heat to Willard’s two separate panel elements to form a bond “only
`in a region substantially surrounding and offset from the” card (Ex. 1001,
`9:13–19) in order to “entrap” the card in an interior pocket between the clay-
`coated interior of two panels. Ex. 1
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