Trials@uspto.gov
`571-272-7822
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` Paper No. 51
` Entered: February 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CASCADES CANADA ULC and
`TARZANA ENTERPRISES, LLC,
`Petitioner,
`
`v.
`
`ESSITY HYGEINE AND HEALTH AB,
`Patent Owner.
`____________
`
`Case IPR2017-01921
`Patent 9,320,372 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN,
`and JON B. TORNQUIST, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
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` Paper No. 51
` Entered: February 1, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CASCADES CANADA ULC and
`TARZANA ENTERPRISES, LLC,
`Petitioner,
`
`v.
`
`ESSITY HYGEINE AND HEALTH AB,
`Patent Owner.
`____________
`
`Case IPR2017-01921
`Patent 9,320,372 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN,
`and JON B. TORNQUIST, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`IPR2017-01921
`Patent 9,320,372 B2
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`
`I. INTRODUCTION
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner
`has shown by a preponderance of the evidence that claims 1–20 of U.S.
`Patent No. 9,320,372 B2 (“the ’372 patent,” Ex. 1028) are unpatentable.
`A.
`Procedural History
`Cascades Canada ULC and Tarzana Enterprises, LLC (collectively,
`“Petitioner”) filed a Petition (“Pet.”) to institute an inter partes review of
`claims 1–20 of the ’372 patent. Paper 1. Essity Hygiene and Health AB1
`(“Patent Owner”) filed a Preliminary Response. Paper 8. Pursuant to 35
`U.S.C. § 314(a), we instituted an inter partes review of claims 1–20 based
`on the following grounds: (1) whether claims 1–3, 6, and 10–18 are
`unpatentable under 35 U.S.C. § 102(b)2 as being anticipated by Hochtritt3;
`(2) whether claims 1–3, 8, 9, 12, and 13 are unpatentable under 35 U.S.C.
`§ 102(b) as being anticipated by Grosriez4; (3) whether claims 1–3 and 6–20
`are unpatentable under 35 U.S.C. § 103(a) as being obvious over Hochtritt;
`and (4) whether claims 1–20 are unpatentable under 35 U.S.C. § 103(a) as
`
`
`1 SCA Hygiene Products AB, the originally-named Patent Owner in this
`proceeding, legally changed its name to Essity Hygiene and Health AB.
`Paper 16, 1.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including §§ 102
`and 103. Because the ’372 patent has an effective filing date prior to the
`effective date of the applicable AIA amendments, we refer herein to the pre-
`AIA versions of §§ 102 and 103.
`3 U.S. Patent App. Pub. No. 2005/0058807 A1, published March 17, 2005
`(Ex. 1015).
`4 U.S. Patent No. 6,602,575 B2, issued August 5, 2003 (Ex. 1021).
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`being obvious over the combined teachings of Hochtritt and Grosriez.5
`Paper 9 (“Dec. on Inst.” or “Institution Decision”), 31–32.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.,” Paper 21), Petitioner filed a Reply (“Pet. Reply,” Paper 32),
`and Patent Owner filed a Sur-Reply (“Sur-Reply,” Paper 47). Petitioner
`relies on the Declaration of Mate Mrvica (“the Mrvica Declaration,”
`Ex. 1002). Patent Owner relies on the Declaration of Paul Carlson (“the
`Carlson Declaration,” Ex. 2004) and the Declaration of T. Kim Parnell, PhD,
`PE (“the Parnell Declaration,” Ex. 2005).
`Petitioner filed a Motion to Exclude the Parnell Declaration, the
`transcript of the deposition of Dr. Parnell (Ex. 1041), certain paragraphs of
`the Carlson Declaration and the related portions of the transcript of his
`deposition (Ex. 1040), and portions of the transcript of the deposition of
`Mr. Mrvica (Ex. 2006). Paper 37. Patent Owner filed an Opposition
`(Paper 40), and Petitioner filed a Reply (Paper 46). Patent Owner filed a
`Motion to Exclude portions of the transcript of the deposition of Mr. Mrvica,
`and portions of Petitioner’s Reply that rely on Mr. Mrvica’s deposition
`testimony. Paper 35. Petitioner filed an Opposition (Paper 43), and Patent
`Owner filed a Reply (Paper 45).
`An oral hearing was held on November 8, 2018, and a transcript is
`included in the record. Paper 50 (“Tr.”).
`
`
`5 We subsequently modified our Institution Decision to include review of
`“all of the challenged claims and all of the grounds presented in the Petition”
`(Paper 17, 2), then, based on a stipulation between the parties, limited this
`proceeding to the grounds as initially instituted (Paper 20, 3).
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`B.
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`Related Proceedings
`The parties indicate that the ’372 patent is being asserted in SCA
`Hygiene Products AB v. Tarzana Enterprises, LLC, Case No. 2:17-cv-4395-
`AB-JPR (C.D. Cal.) and SCA Hygiene Products AB v. Cascades, Inc., Case
`No. 3:17-cv-00282-wmc (W.D. Wis.). Pet. 1–2; Prelim. Resp. 3. Petitioner
`further states that the ’372 patent is being asserted in SCA Hygiene Products
`AB v. Novex Products, Inc., Case No. 1:17-cv-02236-DCN (N.D. Ohio).
`Paper 8, 2.
`The parties also identify IPR2017-01902, filed by Petitioner, as a
`related proceeding. IPR2017-01902 relates to U.S. Patent No. 8,597,761, to
`which the ’372 patent claims priority. Pet. 2; Paper 5, 3.
`C.
`The ’372 Patent
`The ’372 patent, titled “Stack of Interfolded Absorbent Sheet
`Products,” is directed to a plurality of absorbent sheets, each of which is
`folded at least twice about axes that are perpendicular to each other.
`Ex. 1028, at [54], [57]. In particular, the absorbent sheets “comprise a first
`fold that is deliberately offset from a parallel line bisecting the sheet, and a
`second fold that preferably bisects the sheet in the perpendicular direction.”
`Id. at 2:8–11.
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`Figures 1a, 1b, and 1c of the ’372 patent are reproduced below.
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`
`Figure 1a is a perspective view of an individual unfolded napkin according
`to an embodiment of the invention, and Figures 1b and 1c are details
`depicting embossing patterns applied to the obverse (front or principal) side
`and the reverse side of the napkin shown in Figure 1a, respectively. Id.
`at 2:42–48. In Figure 1a, sheet of absorbent material 10 “has been folded
`according to the invention and then unfolded.” Id. at 2:64–66. Prior to
`folding, sheet 10 “preferably has dimensions of approximately 8.5"x11"”
`that may “be varied to suit the particular desired application of the product.”
`Id. at 2:66–3:3. Sheet 10 is first folded along fold 15 (which is parallel to
`the short side of sheet 10 and thus has a length of 8.5"), then folded a second
`time along fold 20 that is perpendicular to fold 15. Id. at 3:4–7. First fold
`15 is deliberately offset from the line parallel to it that would bisect sheet 10,
`in this case by approximately 2", so that length “b” from fold 15 to the far
`short side of sheet 10 is approximately 6.5" and length “c” from fold 15 to
`the near short side of sheet 10 is approximately 4.5". Id. at 3:11–17.
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`Second fold 20 substantially bisects sheet 10, defining length “a” to be
`4.25" in the embodiment of Figure 1a. Id. at 3:31–33. Panel edges 26 and
`27 of length “a” are on the far short side of sheet 10. Id. at 3:33–34. Folds
`15 and 20 define panels 25a, 25b, 25c, and 25d, “wherein panels 25a and
`25b in this embodiment each have dimensions of approximately 6.5"x4.25",
`whereas panels 25c and 25d each have dimensions of approximately
`4.5"x4.25".” Id. at 3:43–47. First fold 15 is unidirectionally peaked, such
`that panels 25a and 25b of unfolded sheet 10 are slightly inclined upward
`from fold 15, as are panels 25c and 25d. Id. at 3:51–55. Second fold 20 is
`oppositely peaked, such that panels 25a and 25b of unfolded sheet 10 are
`slightly inclined upward from portion 22 of fold 20, and panels 25c and 25b
`are slightly inclined downward from portion 21 of fold 20. Id. at 3:56–64.
`When the napkin is fully folded, only the reverse sides of panels 25a and 25b
`are substantially visible, and the unequal sizes of panels 25a and 25b relative
`to panels 25c and 25d are concealed. Id. at 5:38–41, 50–54. The fully-
`folded napkin has dimensions of approximately 6.5"x4.25". Id. at 6:3–4.
`Figures 4a and 4b are reproduced below.
`
`
`Figure 4a is a schematic representation of the interfold configuration of a
`stack of folded napkins according to the embodiment shown in Figure 1a,
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`and Figure 4b is a schematic cross-sectional view of the napkin stack shown
`in Figure 4a. Id. at 2:55–59. As shown in Figure 4a, “the interfolding of
`adjacent sheets is such that any given napkin within the stack receives,
`between a pair of adjacent panels of the given napkin, a pair of adjacent
`panels of each of an upper and a lower napkin within the stack.” Id. at 6:21–
`25. In Figure 4b, the interfolded napkins alternate between napkins 50
`oriented with fold 15 being visible in the plane of the page, and napkins 60
`that are oriented such that edges 26 and 27 are visible in the plane of the
`page. Id. at 6:33–39.
`Claim 1 is the only independent claim, and is reproduced below.
`A stack of interfolded absorbent sheet products,
`1.
`comprising a plurality of absorbent sheets, wherein each sheet
`comprises a first fold that is offset from a line bisecting said sheet
`substantially parallel to said first fold, and an interfolding fold
`intersecting said first fold, wherein said first fold, said
`interfolding fold, and outer edges of each of the absorbent sheets
`define boundaries for four panels, with the panels on opposing
`sides of the first fold having different lengths and contacting each
`other within the stack, and wherein each of said absorbent sheets
`within said stack comprises at least one pair of panels
`sandwiched between a pair of adjacent panels of another of said
`absorbent sheets within said stack.
`Ex. 1028, 7:58–8:2.
`
`A.
`
`II. ANALYSIS
`Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art
`(“PHOSITA”) at the time of the ’372 patent would have had “some post
`high school education in engineering or industrial manufacturing, and at
`least two to three years of experience in the design and/or manufacture of
`folded napkin products, or alternatively, no formal education but at least five
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`years of experience in the design and/or manufacture of folded napkin
`products.” Pet. 29 (citing Ex. 1002 ¶ 35).
`Patent Owner does not dispute Petitioner’s contention in its Response.
`Patent Owner’s declarant Mr. Carlson, however, provides his own
`assessment regarding a person of ordinary skill in the art at the time of
`the ’372 patent. Ex. 2004 ¶ 31. Mr. Carlson opines that a person having
`ordinary skill in the art “would have had a bachelor’s degree in mechanical
`engineering and at least six months of experience in the design and/or
`manufacture of folded napkin products, or equivalent education and
`experience,” or “the equivalent of an associate’s degree or like technical
`training and at least one year of experience in the design and/or manufacture
`of folded napkin products.” Id. Mr. Carlson goes on to state that he “do[es]
`not believe that” his opinions “would be any different” when applying
`Petitioner’s suggested level of skill in the art. Id. ¶¶ 32, 34.
`We agree with the parties that a person having ordinary skill in the art
`would have had an engineering background and experience in the design
`and/or manufacture of folded napkin products, which is consistent with the
`level of ordinary skill in the art at the time of the invention as reflected in the
`prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill
`level are not required “where the prior art itself reflects an appropriate level
`and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v.
`Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our
`determination regarding the patentability of the challenged claims does not
`turn on the differences between Petitioner’s and Mr. Carlson’s definitions,
`and we note that our conclusions would be the same under either assessment.
`
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`B.
`
`Claim Interpretation
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016)6; see Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). 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 those terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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)).
`For the purposes of the Institution Decision, we determined that,
`based on the record at that time, no claim term required express
`construction. Dec. on Inst. 7. We see no reason to modify that
`determination in light of the record developed during trial.
`
`
`6 The Office recently changed the claim construction standard applicable to
`an inter partes review. 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). The rule changing the claim
`construction standard, however, does not apply to this proceeding because
`Petitioner filed its Petition before the effective date of the final rule, i.e.,
`November 13, 2018. Id. at 51,340 (rule effective date and applicability
`date), 51,344 (explaining how the Office will implement the rule).
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`C.
`
`Principles of Law
`To prevail on its challenges to the patentability of the claims, a
`petitioner must establish facts supporting its challenge by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden of persuasion never shifts to the patent owner.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–
`79 (Fed. Cir. 2015) (discussing the burdens of persuasion and production in
`inter partes review).
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). Although the elements must be arranged in the same way as in the
`claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity
`of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed.
`Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103 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 to a person
`having ordinary skill in the art to which the subject matter pertains. KSR
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
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`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. See Graham
`v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`D. Overview of the Prior Art
`1.
`Hochtritt
`Hochtritt relates to a stack of interfolded sheet products that
`“comprises a plurality of absorbent sheets each of which is itself folded at
`least twice about axes that are perpendicular to one another,” wherein
`“[e]ach of the absorbent sheets within the stack comprises at least one pair of
`panels sandwiched between a pair of adjacent panels of another of the
`absorbent sheets in the stack.” Ex. 1015, at [57]. Hochtritt describes an
`embodiment where the absorbent sheets are napkins that have two folds,
`each fold bisecting the napkin and being perpendicular to one another. Id.
`¶ 11. This “quarter-fold” napkin is also considered a “four-panel” napkin
`because the perpendicular folds delineate four regions in the original napkin
`sheet. Id. Hochtritt also describes six-panel and eight-panel napkins, which
`comprise six equally-sized and eight equally-sized panels, respectively. Id.
`¶ 12.
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`Hochtritt Figures 1(a) and 1(b) are reproduced below.
`
`
`Figure 1(a) is a schematic representation of the interfold configuration of a
`stack of folded absorbent sheets according to an embodiment described in
`Hochtritt, and Figure 1(b) is a schematic cross-sectional view of the napkin
`stack shown in Figure 1(a). Id. ¶¶ 17–18. Figures 1(a) and 1(b) depict
`quarter-folded napkins, and show that “the interfolding of adjacent sheets is
`such that any given napkin within the stack receives between a pair of
`adjacent panels of the given napkin, a pair of adjacent panels of each of an
`upper and a lower napkin within the stack.” Id. ¶ 26. In particular,
`Figure 1(b) demonstrates that “each napkin within the stack receives
`between its two inwardly facing adjacent panels a pair of adjacent panels
`from each of two napkins disposed respectively above and below it in the
`stack.” Id. ¶ 35.
`Hochtritt teaches that the quarter-fold napkin in Figures 1(a) and 1(b)
`“is formed from a single ply whose dimensions are preferably 8½"x13",
`such that the folded napkin will have dimensions of about 4¼"x6½",” and
`that “these dimensions can be varied to suit the particular application in
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`question.” Id. ¶ 34. According to Hochtritt, the folds visible in Figures 1(a)
`and 1(b) “are those extending across the long dimension of the napkins,
`whereas the folds not visible are those extending across the short dimension
`of the napkins.” Id.
`2.
`Grosriez
`Grosriez is directed to a stack of folded, supple, and absorbent sheets,
`wherein each napkin in the stack “has a longitudinal fold line forming a
`longitudinal border and at least one transverse fold line perpendicular to the
`longitudinal fold line.” Ex. 1021, 1:7–11, 4:30–32. Grosriez teaches that
`the stack of supple sheets is “characterized in that the longitudinal and
`transverse fold lines of an upper sheet in the stack are not adjacent to the
`respective longitudinal and transverse fold lines of the previous lower
`sheet,” such that “the stack has geometric symmetry and a distribution of the
`weight of the folded supple sheets which allow the stack to remain balanced
`with respect to the axis of stacking, regardless of the number of folded
`supple sheets.” Id. at 2:17–26.
`Figures 1a, 1b, and 1c of Grosriez are reproduced below.
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`Figures 1a, 1b, and 1c depict the two successive foldings of a supple sheet.
`Id. at 3:29–30. In Figure 1a, square supple sheet 20 shows longitudinal first
`fold line 22 that separates symmetrical sections 24 and 26. Id. at 4:33–36.
`In Figure 1b, supple sheet 20 is folded in two along longitudinal fold line 22,
`forming longitudinal border 28. Id. at 4:37–39. Transverse fold line 30
`delimits symmetrical panels 32 and 34. Id. at 4:39–41. In Figure 1c, supple
`sheet 20 is folded into four equal parts by folding along transverse fold
`line 30 to form supple sheet 36 with transverse border 38, longitudinal
`edge 40, and transverse edge 42. Id. at 4:42–47. Each of longitudinal
`edge 40 and transverse edge 42 consists of the superposition of the four
`superposed free edges of supple sheet 20. Id. at 4:47–49. Grosriez also
`teaches an alternative form of folding, where “the longitudinal fold line
`delimits two sections, the transverse dimension one of which differs from
`the transverse dimension of the other.” Id. at 4:50–53.
`Grosriez Figure 6 is reproduced below.
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`
`Figure 6 is a perspective view of an example of a stack of three folded
`supple sheets according to a preferred embodiment described in Grosriez.
`Id. at 3:43–45. Lower folded sheet 361 and upper folded sheet 363 are
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`intertwined with intermediate folded sheet 362, wherein upper panel 341 of
`lower folded sheet 361 and lower panel 323 of upper folded sheet 363 are
`placed between lower panel 322 and upper panel 342 of intermediate folded
`sheet 363. Id. at 5:54–59. According to Grosriez, intertwining the folded
`sheets in this way makes it possible, particularly when the stack is placed in
`a dispenser, “for the lower panel 323 of the upper sheet 363 to carry (by
`virtue of friction forces) the upper panel 342 of the intermediate folded
`sheet 362 out of the opening that allows the folded sheets 36 to be grasped.”
`Id. at 5:60–65.
`E.
`Anticipation by Hochtritt
`Petitioner contends that claims 1–3, 6, and 10–18 of the ’372 patent
`are unpatentable under 35 U.S.C. § 102(b) as being anticipated by Hochtritt.
`Pet. 33–43; Pet. Reply 9–13. Patent Owner disagrees with Petitioner’s
`assertions. PO Resp. 27–36; Sur-Reply 8–12.
`Petitioner contends that Hochtritt discloses all of the elements of
`claim 1. Pet. 34–38. For example, Petitioner contends that Hochtritt
`discloses a “sheet that comprises a first fold that is offset from a line
`bisecting said sheet substantially parallel to said first fold” because
`“Hochtritt broadly discloses napkins with at least two perpendicular folds,
`and one of ordinary skill in the art would recognize that the folds could be
`either bisecting or offset (the only two options).” Id. at 36 (citing Ex. 1002
`¶¶ 74, 117). Petitioner also contends that Hochtritt “expressly recognizes
`that single-fold napkins can either be bisecting or offset folded, and a single
`fold is simply the first fold in a quarter-folded napkin (or six-panel napkin).”
`Id. (internal citation omitted). In particular, Petitioner points to Hochtritt’s
`description of “[p]aper napkins that are single folded only (sometimes also
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`called ‘half-folded’ when the fold bisects the napkin, or ‘off-folded’ when it
`does not)” (Ex. 1015 ¶ 7), and to Hochtritt’s description of “‘one
`embodiment’ wherein the first and second folds bisect the napkin” (id. ¶ 11).
`Pet. 34, 36.
`Patent Owner responds that “[t]he Petition fails to cite any factual
`basis for its assertion that Hochtritt’s discussion of an ‘off-folded’ single-
`fold napkin discloses an offset first-fold for a multi-fold sheet.” PO
`Resp. 31. In that regard, Patent Owner argues that “single-folded napkins
`and multi-folded napkins have fundamentally different structures,” and,
`accordingly, a PHOSITA would “view Hochtritt as disclosing, at most, two
`distinct and different products,” namely, “a prior art single-folded napkin
`that can include a half-folded or off-folded interfolding fold,” and “an
`invention of a multi-fold napkin that only includes two or more equal,
`bisecting folds, with only the multi-fold napkins forming a part of
`Hochtritt’s invention.” Id. at 33 (citing Ex. 2004 ¶ 88; Ex. 2005 ¶¶ 75–76).
`According to Patent Owner, Petitioner is improperly combining “elements
`from prior art in the BACKGROUND section with elements from a
`disclosed invention in the DETAILED DESCRIPTION to cobble together
`elements for an alleged anticipatory teaching.” Id. at 35.
`We agree with Patent Owner that Petitioner’s anticipation argument
`requires combining disclosures from separate products described in
`Hochtritt. Hochtritt states that single-folded napkins having folds that either
`bisect the napkin or do not bisect the napkin were known in the prior art.
`Ex. 1015 ¶ 7. As its invention, Hochtritt discloses interfolded absorbent
`sheet products that are “folded at least twice about axes that are
`perpendicular to one another.” Id. ¶ 8. Hochtritt goes on to describe “one
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`embodiment” where “the folded absorbent sheet products are paper napkins
`each having two folds, the two folds each bisecting the napkin and being
`perpendicular to one another,” and “[o]ther contemplated embodiments” that
`“include six panel and eight panel napkins,” all of which result in paper
`napkins with equally-sized panels. Id. ¶¶ 11–12. Accordingly, Petitioner’s
`anticipation argument with respect to Hochtritt requires combining
`disclosures regarding single-folded napkins with disclosures regarding
`multi-folded napkins having equal-sized panels.
`Combining separate disclosures in this manner is not a permissible
`way to argue anticipation. “[I]t is not enough that the prior art reference . . .
`includes multiple, distinct teachings that the artisan might somehow
`combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371.
`“[U]nless a reference discloses within the four corners of the document not
`only all of the limitations claimed but also all of the limitations arranged or
`combined in the same way as recited in the claim, it cannot be said to prove
`prior invention of the thing claimed and, thus, cannot anticipate under 35
`U.S.C. § 102.” Id. Here, Petitioner argues that a PHOSITA would combine
`Hochtritt’s separate disclosures of single-folded napkins and multi-folded
`napkins to arrive at the invention of the ’372 patent. Because Petitioner fails
`to point us to a portion of Hochtritt that discloses all of the limitations
`arranged or combined in the same way as recited in the challenged claims, or
`any portion of Hochtritt that directly relates the teachings of the separate
`disclosures to each other, Petitioner’s arguments cannot support a case of
`anticipation.
`Accordingly, based on our review of the record, we find that
`Petitioner has not established by a preponderance of the evidence that
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`claim 1, and claims 2, 3, 6, and 10–18 that depend, directly or indirectly,
`therefrom, are anticipated by Hochtritt.
`Anticipation by Grosriez
`F.
`Petitioner contends that claims 1–3, 8, 9, 12, and 13 of the ’372 patent
`are unpatentable under 35 U.S.C. § 102(b) as being anticipated by Grosriez.
`Pet. 44–52; Pet. Reply 13–16. Patent Owner disagrees with Petitioner’s
`assertions. PO Resp. 36–43; Sur-Reply 12–15.
`1.
`Claim 1
`Petitioner contends that Grosriez discloses all of the elements of
`claim 1. Pet. 44–48. For example, Petitioner contends that Grosriez
`discloses “a first fold that is offset from a line bisecting said sheet
`substantially parallel to said first fold, and an interfolding fold intersecting
`said first fold” because it describes the embodiment shown in Figures 1a, 1b,
`and 1c as having a longitudinal fold line that separates two symmetrical
`sections, and a transverse fold line that delimits two additional symmetrical
`sections. Id. at 44–45 (citing Ex. 1021, 4:30–41). Petitioner also points to
`Grosriez’s explanation that, in an alternative form of folding, “the
`longitudinal fold line delimits two sections, the transverse dimension one of
`which differs in dimension from the transverse dimension of the other” as
`describing an offset fold. Id. at 45 (quoting Ex. 1021, 4:50–53).
`Patent Owner responds that “[t]he Petition fails to demonstrate that
`Grosriez discloses that its ‘alternative form of folding’ is employed with
`napkins that are interleaved with one another to form a stack of interfolded
`napkins.” PO Resp. 37. Patent Owner argues that “a PHOSITA would read
`and understand Grosriez as providing no teaching whatsoever for whether
`napkins formed by its ‘alternative form of folding’ should be interleaved or
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`interfolded.” Id. at 38 (citing Ex. 2004 ¶ 96; Ex. 2005 ¶¶ 87–89). In that
`regard, Patent Owner argues that “Grosriez depicts two embodiments of its
`napkins interfolded with one another, while also depicting numerous other
`embodiments of its napkins stacked without interfolding,” and does not
`“describe or depict how its alternatively-folded napkins are intended to be
`stacked.” Id. (citing Ex. 1021, Figs. 2–6, 8, 9a, 9b, and 10–18). Patent
`Owner further argues that “[a] PHOSITA would immediately recognize that
`Grosriez’s ‘alternative form of folding’ exacerbates the problem” of
`“asymmetrical and unbalanced” stacking of the folded napkins, and, “[u]pon
`reading Grosriez in its entirety,” would understand that Grosriez “overcomes
`these problematic characteristics by ensuring that the sheets are stacked,
`without interleaving, in alternating orientations.” Id. at 38–39 (citing
`Ex. 1021, 2:17–26, 6:25–51; Ex. 2004 ¶¶ 95– 96; Ex. 2005 ¶¶ 88–89, 118).
`We agree with Petitioner that Grosriez teaches “a first fold that is
`offset from a line bisecting said sheet substantially parallel to said first fold,
`and an interfolding fold intersecting said first fold” as recited in claim 1.
`Pet. 44–48; Pet. Reply 13–15. In particular, Grosriez teaches “a stack of
`supple and absorbent sheets,” wherein the sheets have “a longitudinal fold
`line forming a longitudinal border and at least one transverse fold line
`perpendicular to the longitudinal fold line.” Ex. 1021, 1:8–12. With
`reference to Figure 1c, Grosriez describes a supple sheet folded into four
`equal parts (id. at 4:43–50), and immediately thereafter states that
`“[a]ccording to an alternative form of folding, not depicted, the longitudinal
`fold line delimits two sections, the transverse dimension one of which differs
`from the transverse dimension of the other” (id. at 4:51–54).
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`Grosriez then explains that “[t]he remainder of the description will
`relate, non-limitingly, to a supple sheet” folded in four (id. at 4:61–62), and
`goes on to teach that the folded sheets “can be intertwined,” such that the
`upper panel of the lower sheet and the lower panel of the upper sheet are
`placed between the lower and upper panels of the intermediate folded sheet
`(id. at 5:54–59, Figures 6, 9b). Because Grosriez teaches that the supple
`sheets can be folded such that the transverse dimension of one section differs
`from the transverse dimension of the other, and that the supple sheets can be
`intertwined when stacked, Grosriez discloses “a first fold that is offset from
`a line bisecting said sheet substantially parallel to said first fold, and an
`interfolding fold that is substantially perpendicular to said first fold,” and
`that “each of said absorbent sheets within said stack comprises at least one
`pair of panels sandwiched between a pair of adjacent panels of another of
`said absorbent sheets within said stack” as recited in claim 1.
`In light of these express disclosures in Grosriez, Patent Owner does
`not provide sufficient objective evidence or analysis to support its
`contentions, namely, that a PHOSITA would not understand Grosriez to
`teach that napkins formed by the alternative form of folding should be
`interleaved or interfolded. PO Resp. 38–39 (citing Ex. 2004 ¶ 96; Ex. 2005
`¶¶ 87–89). Patent Owner’s declarant, Mr. Carlson, testifies that “[w]hen
`napkins are produced with uneven folding due to being offset or off-folded,
`there are several downstream complications that are to be concerned” with
`respect to the manufacturing process used to produce the folded napkins.
`Ex. 2004 ¶ 96. For example, Mr. Carlson testifies that there would be
`“substantial obstacles to overcome regarding the stac
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