Paper No. 40
`Trials@uspto.gov
`Entered: February 25, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CASCADES CANADA ULC,
`Petitioner,
`v.
`ESSITY PROFESSIONAL HYGIENE NORTH AMERICA LLC,1
`Patent Owner.
`
`Case IPR2017-02198
`Patent 8,273,443 B2
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 After institution, Patent Owner changed its name from SCA Tissue North
`America, LLC, the originally named Patent Owner, to Essity Professional
`Hygiene North America LLC. Paper 10.
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`IPR2017-02198
`Patent 8,273,443 B2
`
`INTRODUCTION
`I.
`Cascades Canada ULC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–15 of U.S. Patent
`No. 8,273,443 B2 (Ex. 1001, “the ’443 patent”). Essity Professional
`Hygiene North America LLC (“Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 6. Upon consideration of the Petition, the
`Preliminary Response, and the parties’ evidence, we determined that
`Petitioner had demonstrated a reasonable likelihood that it would prevail
`with respect to claims 1–15 of the ’443 patent. Paper 7, 28–29 (“Dec. on
`Inst.”). Thus, we instituted review with respect to those claims. We did not,
`however, institute review on all asserted grounds of unpatentability set forth
`in the Petition. Dec. on Inst. 5, 28–29.
`On April 27, 2018, pursuant to the Supreme Court’s decision in SAS
`Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018), we modified the
`institution decision to institute review of all challenged claims on all
`challenged grounds. Paper 12, 2.
`Following institution of trial, Patent Owner filed a Patent Owner
`Response2 (Paper 17, “PO Resp.”), Petitioner filed a Reply (Paper 26, “Pet.
`Reply”), and Patent Owner filed a Sur-Reply (Paper 30, “PO Sur-Reply”).
`Petitioner also filed a motion to exclude evidence (Paper 32, “MTE”). In
`support of their respective positions, Petitioner relies on the testimony of
`
`
`2 Although Patent Owner’s papers indicate that they were filed by “Essity
`Hygiene and Health AB,” Patent Owner confirmed at oral argument that
`Essity Professional Hygiene North America LLC is the owner of the ’443
`patent. Paper 39, 3:11–4:7. Thus, we understand the identification of
`“Essity Hygiene and Health AB” to be a typographical error.
`
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`IPR2017-02198
`Patent 8,273,443 B2
`Mate Mrvica (Ex. 1002), and Patent Owner relies on the testimony of Paul
`Carlson (Ex. 2007) and T. Kim Parnell, Ph.D. (Ex. 2008).
`An oral hearing was held on December 14, 2018, and a transcript of
`the hearing is included in the record (Paper 39, “Tr.”).
`
`A. Related Proceeding
`The parties indicate that the ’443 patent is at issue in SCA Hygiene
`Products Aktiebolag v. Cascades Canada ULC, Case No. 3:17-cv-00282-
`wmc (W.D. Wis.). Pet. 1; Paper 4, 1.
`
`B. The ’443 Patent
`The ’443 patent “relates to a stack of interfolded absorbent sheet
`products,” and preferably “to a stack of interfolded paper napkins bearing a
`predetermined pattern imparted by embossing or by formation by the
`Through-Air Drying” technique. Ex. 1001, 1:14–18.
`The folded absorbent sheet products of the ’443 patent are “preferably
`single ply paper napkins having a basis weight from about 10 to 20 lb per
`unfolded sheet.” Id. at 2:1–3. The ’443 patent explains that these paper
`napkins may be embossed “by conventional embossing rollers” and that the
`embossing may “take the form of a logo of the restaurant in which the
`napkins will be used.” Id. at 3:54–55, 3:65–4:10.
`The ’443 patent contemplates four-panel, six-panel, and eight-panel
`napkins. Id. at 2:27–31. In a four-panel napkin, the sheet has “two folds
`each bisecting the napkin” that are “perpendicular to one another.” Id.
`at 2:22–24. “[I]n a six panel napkin, the initial sheet comprises one fold in
`the longitudinal direction of the sheet and two folds in the transverse
`direction, such that the resulting folded sheet comprises six equally sized
`panels.” Id. at 2:31–35. The eight-panel napkin has a structure similar to
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`IPR2017-02198
`Patent 8,273,443 B2
`the six-panel napkin, “but with three parallel folds in the transverse
`direction.” Id. at 2:35–36.
`Figures 2(a) and 2(b) of the ’443 patent show the interfolding
`relationship of the six panel napkin embodiment:
`
`
`
`Figure 2(a) is a schematic representation of the interfold configuration of a
`stack of folded absorbent sheet products. Id. at 3:8–10. Figure 2(b) is a
`schematic cross-sectional view of the napkin stack shown in Figure 2(a). Id.
`at 3:11–12. As shown in Figures 2(a) and 2(b), “the uppermost napkin has
`its four lower panels sandwiched between two adjacent panels of the next
`lower napkin in the stack, whose lower four panels are in turn sandwiched
`between the lowermost two panels of the top napkin, and the uppermost two
`panels of the third napkin.” Id. at 4:50–55.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–15 of the ’443 patent. Pet. 7.
`Claims 1, 5, and 10 are independent. Claim 1 is illustrative of the
`challenged claims and is reproduced below:
`1. A stack of interfolded absorbent sheet products,
`comprising a plurality of absorbent sheets each bearing an
`embossed surface relief of a predetermined pattern or design,
`wherein each of said absorbent sheets is a rectangular
`paper napkin,
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`IPR2017-02198
`Patent 8,273,443 B2
`wherein each of said absorbent sheets is entirely
`detached from all other absorbent sheets within said stack,
`wherein each of said absorbent sheets has one fold along
`and coextensive with a longitudinal direction and two folds
`along and coextensive with a transverse direction, said two
`folds being parallel to one another and perpendicular to said
`one fold,
`wherein each of said napkins comprises at least two
`panels sandwiched between adjacent panels of another of said
`paper napkins,
`wherein said adjacent panels comprise an upper panel
`positioned above said at least two panels and a lower panel
`positioned below said at least two panels, and
`wherein each of said napkins within said stack
`comprises an uppermost panel whose length and width are
`approximately equal to an overall length and width of each of
`said napkins, respectively, and a lowermost panel whose length
`and width are approximately equal to an overall length and
`width of each of said napkins, respectively.
`Ex. 1001, 6:34–57.
`
`D. Instituted Grounds of Unpatentability
`We instituted trial to determine whether claims 1–15 of the ’443
`patent are unpatentable based on the following grounds (Dec. on Inst. 5, 28–
`29; Paper 12, 2):
`References
`Teall3 and ASTM-D45604
`
`Claim(s) Challenged
`1–15
`
`Basis
`§ 103
`
`§ 103
`
`2, 7, and 11
`
`Teall, ASTM-D4560, and Wheeler5
`
`3 US 1,290,801, issued Jan. 7, 1919 (Ex. 1015).
`4 ASTM-D4560, Standard Specification for Paper Napkins for Industrial and
`Institutional Use, American Society for Testing and Materials, dated
`December 1992 (Ex. 1018).
`5 US 1,430,709, issued October 3, 1922 (Ex. 1022).
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`IPR2017-02198
`Patent 8,273,443 B2
`
`References
`Teall and Heath6
`
`Teall, Heath, and Wheeler
`
`Grosriez7 and ASTM-D4560
`
`Grosriez, ASTM-D4560, and Wheeler
`
`Winter8 and ASTM-D4560
`
`Winter, ASTM-D4560, and Wheeler
`
`Winter and Heath
`
`Winter, Heath, and Wheeler
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claim(s) Challenged
`1–15
`
`2, 7, and 11
`
`1–15
`
`2, 7, and 11
`
`1–15
`
`2
`
`1–15
`
`2
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2017).9
`Petitioner provides a proposed construction for the term
`“approximately equal.” Pet. 34–35. Patent Owner provides proposed
`constructions for the terms “has” or “having,” “approximately equal,” and
`
`
`6 US 6,699,360 B2, issued March 2, 2004 (Ex. 1021).
`7 US 6,602,575 B2, issued August 5, 2003 (Ex. 1016).
`8 US 2,050,030, issued August 4, 1936 (Ex. 1017).
`9 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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`Patent 8,273,443 B2
`“an embossed surface relief of a predetermined pattern or design.” PO
`Resp. 11–13. Upon review of the parties’ arguments and the prior art of
`record, we determine that no claim terms require construction for purposes
`of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”)).
`
`B. Principles of Law
`A patent 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 the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See 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) if in the record, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Level of Ordinary Skill in the Art and Mr. Mrvica’s Testimony
`1. The Level of Ordinary Skill in the Art
`Petitioner contends a person of ordinary skill in the art at the time of
`the invention 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.”
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`Patent 8,273,443 B2
`Pet. 34 (citing Ex. 1002 ¶ 34). Alternatively, Petitioner contends an ordinary
`artisan could have “no formal education but at least five years of experience
`in the design and/or manufacture of folded napkin products.” Id.
`Patent Owner does not discuss the level of skill in the art in its Patent
`Owner Response, but Mr. Carlson testifies that “one skilled in the art at the
`time of the invention . . . 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 alternatively, the equivalent of an associate’s degree and “at
`least one year of experience in the design and/or manufacture of folded
`napkin products.” Ex. 2007 ¶ 30.
`We agree with the parties that a person of ordinary skill in the art
`would have had an engineering background and experience in the design
`and/or manufacture of folded napkin products. Ex. 1002 ¶ 34; Ex. 2007
`¶ 30. This conclusion is both undisputed and supported by the disclosures of
`the ’443 patent and the prior art references. We need not parse the necessary
`amount of education or experience that an ordinarily skilled artisan would
`have possessed, however, as neither party asserts that this determination
`would have any effect on the arguments or analysis in this case. See
`Ex. 2007 ¶¶ 31 (“However, I do not believe that my opinions would be
`different even if the level of skill in the art were as offered by Mr. Mrvica.”),
`32 n.1 (“Going forward I refer to a ‘POSITA’ as a person of ordinary skill at
`the time of the invention as defined by either Mr. Mrvica or me.”).
`
`2. Mr. Mrvica’s Testimony
`Patent Owner contends Mr. Mrvica’s testimony is entitled to little
`weight as it was “attorney-authored” and is “replete with conclusory
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`Patent 8,273,443 B2
`statements lacking any cited support.” PO Resp. 24 (citing 37 C.F.R.
`§ 42.65(a)).
`During his deposition, Mr. Mrvica testified that several paragraphs of
`his declaration were provided by counsel. Id. at 23, 25–26 (citing Ex. 2009,
`55:4–59:3, 82:17–85:21, 125:22–126:8). Mr. Mrvica later clarified,
`however, that his declaration was a joint effort with an individual “who was
`typing [the declaration] up.” Ex. 2009, 84:17–85:7. Because we do not
`understand such an approach to be uncommon or problematic, we do not
`find that this approach renders Mr. Mrvica’s testimony unreliable.
`Accordingly, we do not disregard Mr. Mrvica’s testimony in view of the
`manner in which it was prepared.
`Patent Owner also asserts that several paragraphs of Mr. Mrvica’s
`declaration contain conclusory and unsupported assertions that are, in some
`cases, repeated verbatim in the Petition. PO Resp. 23–24. We agree that
`conclusory or unsupported assertions of a declarant are entitled to little or no
`weight. Even if Mr. Mrvica’s 168-paragraph declaration contains some
`conclusory assertions, however, this is not a reason to disregard the entirety
`of his declaration. Thus, we decline to disregard Mr. Mrvica’s testimony as
`a whole, and instead look to the reasoning and support provided by
`Mr. Mrvica for each paragraph relied upon by Petitioner or specifically
`contested by Patent Owner.
`
`D. Asserted Prior Art
`1. Teall
`Teall discloses a machine to fold and interleave paper napkins and
`towels. Ex. 1015, 1:12–14. Teall explains that, during manufacture, the
`napkins, which are made of “crepe paper,” are “ordinarily first folded
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`Patent 8,273,443 B2
`lengthwise” and then folded “transversely at two different points,” resulting
`in a napkin that is divided into three equal portions. Id. at 1:22–25, 1:40–42,
`2:95. After folding, a cutting blade severs the napkins into appropriate
`lengths. Id. at 2:116–122. Each napkin is then advanced by rollers in such a
`manner that the leading edge of each napkin overtakes a preceding napkin
`“to the extent of one-third its length,” at which point two “fingers” within
`the machine tuck this leading edge “within one of the folds of the first
`napkin.” Id. at 1:45–61, 2:122–3:15.
`Figure 4 of Teall (shading added by Petitioner) is reproduced below:
`
`
`
`Figure 4 of Teall depicts the napkins in a partly folded position, with the
`leading edge “a” of each napkin tucked in between leaves B and C of the
`preceding napkin. Id. at 3:1–8, Fig. 4.
`
`2. ASTM-D4560
`ASTM-D4560 is titled “Standard Specification for Paper Napkins for
`Industrial and Institutional Use” and describes the “various sizes and folds of
`paper napkins for purchasers, such as government agencies, school boards,
`and industry.” Ex. 1018, 1.1.
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`Patent 8,273,443 B2
`Table 1 of ASTM-D4560, reproduced below, provides the standard
`dimensions for light weight, standard weight, and heavy weight one-ply
`napkins:
`
`
`
`As set forth in Table 1, one-ply napkins may have a basis weight (in pounds)
`of 11.9 or less (light weight), between 12.0 and 13.9 (standard weight), and
`14.0 or greater (heavy weight). Id. at Table 1.
`ASTM-D4560 instructs that “[d]ispenser napkins must be folded to a
`size that will dispense properly from a particular fixture for which they are
`designed, and the fold should permit the user to remove one napkin at a time
`from the fixture.” Id. at 8.3.1. ASTM-D4560 also instructs that “[n]apkins
`shall be embossed.” Id. at 7.2.
`
`3. Heath
`Heath “is directed to a printed, soft, strong-in-use, bulky, single-ply
`bathroom tissue, facial tissue, and napkin having a low printed sidedness.”
`Ex. 1021, 3:27–30. Heath explains that single-ply napkins and tissues
`generally suffer from “the problem of thinness and therefore unprintability,
`lack of softness, and also ‘sidedness.’” Id. at 3:63–65. Heath discloses,
`however, that printed, soft, strong, and low sidedness tissues or napkins can
`be prepared by, among other things, providing a web having a basis weight
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`of at least 12.5 pounds from each 3000 square foot ream, and optionally
`embossing the one-ply absorbent paper product. Id. at 4:54–5:6. According
`to Heath, embossing improves the aesthetics and softness of one-ply
`products. Id. at 17:55–56 (“Optionally to obtain maximum softness of the
`one-ply tissue, the web is embossed.”), 17:63–67, 19:36–37 (“This
`embossing improves the aesthetics of the tissue and the structure of the
`tissue role.”).
`
`4. Grosriez
`Grosriez is directed to a stack of supple and absorbent sheets and, in
`particular, to a stack of absorbent sheets having a “longitudinal fold line
`forming a longitudinal border and at least one transverse fold line
`perpendicular to the longitudinal fold line.” Ex. 1016, 1:8–12, 4:55–60
`(explaining that the napkins may have two transverse fold lines, forming C-
`fold or Z-fold napkins). Grosriez explains that the sheets “consist of at least
`one ply of supple and absorbent material,” and, when more than one ply is
`used, “they may be connected together, for example by bonding or any
`mechanical means of connection.” Id. at 4:21–24.
`Figures 2 and 3 of Grosriez, reproduced below, depict prior art
`methods of stacking supple sheets:
`
`
`Figure 2 depicts stack 50 having three folded sheets 361, 362, and 363,
`wherein longitudinal borders 281, 282, and 283 of the sheets are superposed,
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`Patent 8,273,443 B2
`as are transverse borders 381, 382, 383. Id. at 5:1–4. Figure 3 depicts an
`unnumbered stack 50 containing “a great many folded sheets 36.” Id. at
`5:5–6. According to Grosriez, stack 50 in Figure 3 is unbalanced with
`respect to axis of stacking V—which is roughly vertical—and “[w]hen this
`imbalance exceeds a limiting value, the stack 50 topples and causes the
`folded sheets 36 to fall off.” Id. at 5:6–10.
`
`To avoid the toppling of the napkin stacks, Grosriez proposes methods
`for balancing the stacks. Id. at 5:11–12. “To do this,” Grosriez instructs that
`“the longitudinal fold line 22 of an upper sheet of the stack must not be
`adjacent to the longitudinal fold line 22 of the previous lower sheet.” Id.
`at 5:13–15. Figures 4, 5, and 6, reproduced below, depict three exemplary
`methods used in Grosriez to balance the stacks.
`
`
`Figure 4 depicts a first exemplary embodiment wherein longitudinal fold
`line 222 is angularly offset by an angle α1 about vertical axis V with respect
`to fold line 221 of lower folded sheet 361, and “longitudinal fold line 223 of
`the upper folded sheet 363 is angularly offset by an angle α2 about the
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`vertical axis V . . . and so on.” Id. at 5:16–25. According to Grosriez, when
`the sum of the angles is equal to 360 degrees, stack 50 is balanced and runs
`no risk of toppling. Id. at 5:30–32.
`Figure 5 shows a second exemplary stacking embodiment wherein
`longitudinal fold line 222 of intermediate sheet 362 is arranged parallel to
`and transversely opposite fold line 221 of lower sheet 361, and wherein
`transverse fold line 302 of the intermediate sheet is parallel to and
`longitudinally opposite transverse fold 301 of lower sheet 361. Id. at 5:39–
`44. According to Grosriez, this type of stack “is balanced.” Id. at 5:44–45.
`Figure 6 depicts a third exemplary stacking embodiment, wherein
`“lower 361 and upper 363 folded sheets are intertwined with the
`intermediate folded sheet 362.” Id. at 5:54–56. According to Grosriez, such
`stacks of intertwined napkins are “balanced.” Id. at 7:17–18 (“This method
`makes it possible to obtain a stack 50 of folded supple sheets 36 which is
`balanced.”). Grosriez further explains that this orientation “makes it
`possible, particularly when the stack 50 is placed in a dispenser, for the
`lower panel 323 of the upper sheet 363 to carry (by virtue of the 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.
`Figure 9(b) of Grosriez is reproduced below:
`
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`Figure 9(b) depicts in cross section the third exemplary embodiment of
`stack 50 wherein folded sheets 36 are intertwined. Id. at 6:22–24. As shown
`in Figure 9(b), stack 50 is balanced with respect to the vertical axis, but due
`to the superposition of longitudinal edges 28 and borders 40, top sheet 36 is
`curved in shape. Id. at 6:14–19. Grosriez explains that this curved shape
`does not “allow the vertical bulk of the stack 50 to be minimized.” Id.
`at 6:20–21.
`
`Figures 13 and 14 of Grosriez are reproduced below:
`
`
`Figure 13 depicts a stack wherein longitudinal borders 28 of the sheets are
`shifted by a distance “x” towards the outside of the stack. Id. at 6:25–30.
`Figure 14 is a longitudinal section of this stack. Id. at 3:63–4:2. As shown
`in Figure 14, top sheet 36 in the stack is curved in shape, which again does
`not allow the top sheet to lie flat. Id. at 6:31–39.
`
`Figures 17 and 18 of Grosriez depict a stack with sheets that have
`been shifted in both the “x” and “y” directions:
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`
`
`Figure 17 shows longitudinal borders 28 shifted by a distance “x.” Id.
`at 6:25–30, 6:48–51. Figure 18 shows the transverse borders shifted by a
`distance “y.” Id. at 6:41–51. According to Grosriez, in this configuration,
`longitudinal borders 28 and transverse borders 38 do not cause any excess
`thickness and, therefore, the height H1 of the stack is minimal. Id. at 6:31–
`51.
`Grosriez proposes two methods for forming the stacks of supple
`
`sheets “according to the invention.” Id. at 6:52–7:21. In the first method,
`two supple webs, which may consist of several thicknesses of supple
`material, are folded longitudinally and then transversely to form supple
`sheets 36. Id. at 6:56–7:14. These sheets are then intertwined to obtain a
`stack that “is balanced.” Id. at 7:17–18. In a “variant” method of forming
`the stacks of the invention, “two successive supple sheets 36 may be
`longitudinally and/or transversely offset with respect to each other so as to
`reduce the height of the stack.” Id. at 7:19–21.
`
`5. Wheeler
`Wheeler discloses an interfolded package in which the sheets are
`interfolded such that the withdrawal of one sheet will position a portion of
`the following sheet “so that it may be grasped readily.” Ex. 1022, 1:10–19.
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`The sheets of Wheeler are “folded twice to form substantially equal leaves
`two of which are on opposite sides of a substantially equal middle leaf.” Id.
`at 1:99–102. Figures 2 and 4, reproduced below, depict interfolding
`embodiments of Wheeler:
`
`
`
`Figure 2 is an edge view of two similarly folded sheets and Figure 4 is an
`enlarged view of a series of interfolded sheets. Id. at 1:45–47, 1:57–60. As
`shown in Figures 2 and 4, the interleaved sheets of Wheeler may be oriented
`oppositely of each proceeding and succeeding sheet, with the middle and
`lower leaves of the first sheet lying between the upper and middle leaves of
`the following sheet. Id. at 2:8–10, 2:25–31.
`
`E. Claims 1–15 over Teall and Heath and Claims 2, 7, and 11 over
`Teall, Heath, and Wheeler
`Petitioner contends the subject matter of claims 1–15 would have been
`obvious over the combined teachings of Teall and Heath, and the subject
`matter of claims 2, 7, and 11 would have further been obvious over the
`combined teachings of Teall, Heath, and Wheeler. Pet. 50–53.
`
`1. Claim 1
`With respect to independent claim 1, Petitioner persuasively identifies
`where Teall discloses (1) a stack of interfolded, absorbent, rectangular paper
`napkins (Pet. 19–20, 40–41 (citing Ex. 1015, 1:12–20, Fig. 4)); (2) napkins
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`that are entirely detached from all other napkins in the stack (id. at 20, 41
`(citing Ex. 1015, 2:116–119)); (3) napkins having two parallel transverse
`folds that are coextensive with a transverse direction and perpendicular to a
`longitudinal fold that is coextensive with a longitudinal direction (id. at 20,
`41 (citing Ex. 1015, 1:20–25, 1:28–45, 2:99–116)); (4) napkins having at
`least two panels sandwiched between adjacent panels of another napkin (id.
`at 20–21, 41–42 (citing Ex. 1015, 1:55–61, 3:12–15, Fig. 4)); and
`(5) napkins having upper and lower panels that “are approximately equal to
`an overall length and width” of each napkin in the stack (id. at 21–22, 42–43
`(citing Ex. 1015, 1:36–42, 2:9–12, 2:99–106, Figs. 1 and 4)).
`Petitioner concedes that Teall does not disclose embossing its napkins,
`but contends that one of ordinary skill in the art would have sought to
`emboss Teall’s napkins to achieve the known benefits of embossing, such as
`improved softness and the ability to provide an economical product. Pet. 37
`(citing Ex. 1021, 3:64–65; Ex. 1024, 7; Ex. 1002 ¶ 119; Ex. 1023;
`Ex. 1038); Pet. Reply 10–12 (citing DyStar Textilfarben GmbH & Co.
`Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)
`(“Because the desire to enhance commercial opportunities by improving a
`product or process is universal—and even common-sensical—we have held
`that there exists in these situations a motivation to combine prior art
`references even absent any hint of suggestion in the references
`themselves.”)). According to Petitioner, embossing of single-ply napkins
`was well known in the art, as confirmed by Heath, and the benefits of
`embossing, such as improved aesthetics and softness, were so well known
`that the ASTM-D4560 industry standard does not just suggest embossing,
`but mandates it. Pet. 37, 50 (citing Ex. 1021, [57], 3:26–28, 5:3–4;
`
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`Ex. 1018, 7.2); Pet. Reply 11 (citing Ex. 1041, 13:14–14:15, 23:8–24:17,
`91:3–7, 95:7–101:6, 103:11–104:8, 126:17–128:5, 147:15–148:9; Ex. 1002
`¶¶ 115, 119, 120; Ex. 2009, 109:18–110:6, 141:18–21).
`The evidence of record confirms Petitioner’s assertion that, prior to
`the earliest possible priority date of the ’443 patent, embossing was well
`known in the art and understood to improve the physical and aesthetic
`qualities of napkins. Pet. 32, 36–37; Ex. 1002 ¶¶ 103, 115, 118–120. For
`example, Heath discloses that embossing “improves the aesthetics” and
`“structure” of single-ply products and allows for maximum softness.
`Ex. 1021, 3:26–29, 5:2–4, 17:55–56, 19:36–37 (“This embossing improves
`the aesthetics of the tissue and the structure of the tissue role.”). Likewise,
`Mr. Mrvica testified that it was understood in the art that embossing would
`increase softness and bulk of absorbent sheet products (Ex. 1002 ¶ 119), and
`Mr. Carlson testified that “[t]he main reasons for embossing napkins are for
`aesthetics and to make the napkin feel softer” (Ex. 2007 ¶ 35). Indeed,
`Mr. Carlson testified on cross examination that traditional dispenser
`napkins10 had “been embossed through [his] whole career.”11 Ex. 1041,
`14:1–15:18, 98:2–101:6; see also Ex. 2007 ¶ 47 (“Most napkins are typically
`embossed, unless the substrate used already has a textured surface, such as a
`TAD or ATMOS material.”).
`Given that embossing was well known in the art and understood to
`improve the physical and aesthetic qualities of napkins, we find Petitioner
`
`
`10 Mr. Carlson clarified that “traditional dispenser napkins” were not
`interleaved. Ex. 1041, 14:16–15:2.
`11 Mr. Carlson testifies that he began working with folded napkin products in
`1984. Ex. 2007 ¶ 8.
`
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`has presented a persuasive, factually supported explanation as to why one of
`ordinary skill in the art would have sought to combine the identified
`elements of Teall and Heath.12 See KSR, 550 U.S. at 418.
`Patent Owner contends the grounds based on Teall and Heath should
`be denied because “Heath was considered and applied during prosecution,
`and the USPTO Examiner expressly recognized the patentability of the
`claims over Heath.” PO Resp. 36–37 (citing Ex. 2011, 2;13 35 U.S.C.
`§ 325(d)). We are not persuaded by this argument. First, Patent Owner
`provides no analysis of the prosecution history to explain what arguments
`were before the Examiner, or any analysis as to why the Examiner ultimately
`allowed the claims. Bald conclusory assertions regarding the prosecution
`history of a patent are insufficient to show that a petition should be denied
`under 35 U.S.C. § 325(d).
`Second, upon an independent review of the prosecution history
`broadly cited by Patent Owner, it appears that the Examiner allowed the
`pending claims “for the reasons set forth by applicant on page 8, paragraph 1
`
`
`12 In its Sur-Reply, Patent Owner contends Mr. Carlson testified that
`interfolding napkins was not common and that embossing does not
`necessarily impart any benefits, including softness. PO Sur-Reply 21–22
`(citing Ex. 1041, 14:19–22, 15:19–16:4, 93:18–22, 113:6–7, 115:1–5).
`Whether interfolding dispenser napkins was common is not relevant because
`Teall discloses interfolding napkins in a stack. Ex. 1015, Fig. 4. Moreover,
`Mr. Carlson conceded during cross-examination that embossing improves
`the aesthetics and hand feel of napkins. Ex. 1041, 109:9–113:14 (testifying
`that embossing is used to improve aesthetics and “hand feel”).
`13 Patent Owner’s original citation is to Exhibit 2010, which is the
`curriculum vitae of Dr. Parnell. We understand this to be a typographical
`error, and presume that Patent Owner intended to cite to Exhibit 2011, which
`is the Notice of Allowance for the ’443 patent.
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`through page 10, third full paragraph of the response filed July 10, 2012.”
`Ex. 2011, 2. Those identified arguments are directed to the failure of a
`reference (Koyama) to disclose “an uppermost panel whose length and width
`are approximately equal to an overall length and width of each of the
`napkins, respectively.” Ex. 3001, 8–10. We are directed to no portion of the
`prosecution history in which the Examiner concluded that embossing of
`napkins would not have been obvious in view of Heath. Thus, we are not
`persuaded that the Examiner “expressly recognized the patentability of the
`claims over Heath,” as asserted by Patent Owner. PO Resp. 36.
`In support of Petitioner’s reasons to combine Teall and Heath,
`Mr. Mrvica testifies:
`I have been told that during prosecution of the ‘443 patent the
`Examiner noted that it would be obvious to one of skill in the
`art to utilize the single-ply embossing of Heath and apply it to
`interleaved stacks of absorbent sheets to increase softness and
`bulk and I agree.
`Ex. 1002 ¶ 119. Patent Owner contends Mr. Mrvica’s testimony is not
`persuasive because it relies on the reasoning of the Examiner during
`prosecution, yet the Examiner ultimately found the claims patentably
`distinguishable over Heath. PO Resp. 38 (citing Ex. 2011, 2).
`
`We are not persuaded by Patent Owner’s argument. First, as noted
`above, we are not persuaded that the Examiner ever found the challenged
`claims “patentably distinguishable over Heath.” Second, the reasoning of
`the Examiner that Mr. Mrvica discussed and adopted in paragraph 119
`(quoted above) is directly supported by the evidence of record, including the
`express disclosures of Heath. Pet. 37; Ex. 1002 ¶¶ 118–119 (citing
`Ex. 1021, 3:63–65) (“One-ply bathroom tissue, facial tissue and napkin,
`generally suffers from the problem of thinness and therefore unprintability,
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`lack of softness, and also ‘sidedness.’”)); Ex. 1021, 17:55–56 (“Optionally
`to obtain maximum softness of the one-ply tissue, the web is embossed.”),
`17:63–18:3, 19:4–7, 19:36–41. Indeed, Mr. Carlson testifies that the “main
`reason” that napkins are embossed is “to make the napkin feel softer.”
`Ex. 2007 ¶¶ 35,