Trials@uspto.gov
`571-272-7822
`
`Paper No. 50
`Entered: May 30, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VF OUTDOOR, LLC,
`Petitioner,
`v.
`COCONA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00190
`Patent 8,945,287 B2
`____________
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`
`INTRODUCTION
`I.
`VF Outdoor, LLC (“Petitioner”) filed a Petition requesting inter partes
`review of claims 27, 28, 30, 32, 33, and 35–39 of U.S. Patent No. 8,945,287
`B2 (Ex. 1001, “the ’611 patent”). Paper 1 (“Pet.”). Cocona, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We
`instituted an inter partes review of claims 27, 28, 30, 32, 33, and 35–39 of
`the ’287 patent on all grounds of unpatentability alleged in the Petition.
`Paper 14 (“Institution Decision” or “Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response.
`Paper 20 (“PO Resp.”). Petitioner filed a Reply. Paper 33 (“Reply”).
`Patent Owner filed a Sur-Reply. Paper 40 (“Sur-Reply”). An oral hearing
`was held on February 28, 2019. A transcript of the hearing is included in the
`record. Paper 49 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has established by a preponderance of
`the evidence that claims 27, 28, 30, 32, 33, and 35–37 of the ’287 patent are
`unpatentable, but Petitioner has not established that claims 38 and 39 of
`the ’287 patent are unpatentable.
`A. Related Proceedings
`The parties represent that Patent Owner filed suit against Petitioner for
`infringement of the ’287 patent in Cocona, Inc. v. Columbia Sportswear Co.,
`Civil Action No. 1:16-cv-2703-CMA (D. Colo. Nov. 2, 2016). Pet. 4;
`Paper 7, 2.
`
`
`
`2
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`B. The ’287 Patent
`The ’287 patent, titled “Active Particle-Enhanced Membrane and
`Methods for Making and Using the Same,” was issued on February 3, 2015.
`Ex. 1001, at [45], [54]. The ’287 patent’s “breathable membrane includes a
`base material solution and active particles;” the “active particles
`incorporated in the membrane may improve or add various desirable
`properties to the membrane, such as for example, the moisture vapor
`transport capability, the odor adsorbance, the anti-static properties, or the
`stealth properties of the membrane.” Id. at [57]. Generally, there is a need
`for a breathable membrane having improved moisture transport properties,
`because a garment made from, e.g., rubber may seem “hot and humid” to the
`wearer because it does not permit moisture to escape from within the
`garment to the outside environment. Id. at 1:43–50. “The membrane can be
`a self-supporting membrane or a coating on a substrate.” Id. at 2:13–15. In
`some embodiments, “the active particles may be encapsulated in at least one
`removable encapsulant in an amount effective to prevent at least a
`substantial portion of the active particles from being deactivated prior to
`removal of the removable encapsulant.” Id. at 2:31–38.
`Illustrative Claim
`C.
`Claim 27 is the only independent claim challenged in the Petition.
`Claims 28, 30, 32, 33, and 35–39 depend directly or indirectly from
`claim 27. Claim 27 is reproduced below:
`27. A water-proof composition comprising:
`a liquid-impermeable breathable cured base material
`comprising a first thickness;
`a plurality of active particles in contact with the liquid-
`impermeable breathable cured base material, the plurality of
`active particles comprising a second thickness; and wherein,
`3
`
`
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`
`the first thickness comprises a thickness at least 2.5 times
`larger than the second thickness but less than an order of
`magnitude larger than the second thickness,
`the active particles improve the moisture vapor transport
`capacity of the composition, and
`a moisture vapor transmission rate of the water-proof
`composition comprises from about 600 g/m2/day to about
`11000 g/m2/day.
`
`Ex. 1001, 12:1–16.
`Instituted Grounds of Unpatentability
`D.
`We instituted an inter partes review of claims 27, 28, 30, 32, 33,
`and 35–39 of the ’287 patent on the following grounds. Dec. 4, 28–29.
`
`Claims Challenged
`Basis
`References
`27, 28, 30, 32, and 36–37
`§ 102(b)
`Dutta1
`27, 28, 30, 32, and 35–39
`§ 103(a)
`Dutta and Haggquist2
`27, 28, 30, 32, 33, and 35–37
`§ 102(b)
`Halley3
`38 and 39
`§ 103(a)
`Halley and Haggquist
`Petitioner relies on the Declarations of Abigail Oelker, Ph.D.
`Ex. 1005; Ex. 1044. Patent Owner relies on the Declarations of Dr. Gregory
`W. Haggquist. Ex. 2001; Ex. 2011.
`
`
`1 PCT Pub. No. WO 1995/33007 A1, published December 7, 1995 (“Dutta”)
`(Ex. 1002).
`2 U.S. Patent Pub. No. 2004/0018359 A1, published January 29, 2004
`(“Haggquist”) (Ex. 1004).
`3 PCT Pub. No. WO 2000/70975 A1, published November 30, 2000
`(“Halley”) (Ex. 1003).
`
`
`
`4
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`
`II. ANALYSIS
`
`A. Claim Construction
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent.” 37 C.F.R.
`§ 42.100(b) (2017).4 Under that standard, claim terms are given their
`ordinary and customary meaning in view of the specification, as would be
`understood by one of ordinary skill in the art at the time of the invention. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any
`special definitions for claim terms must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Only those terms that are 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) (“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)).
`Petitioner presents a “construction of key terms,” including the terms
`“cured base material,” “first thickness,” “active particles,” “second
`thickness,” “order of magnitude,” “composition possesses odor absorbance
`properties at least in part due to the active particles,” and “quick drying
`
`
`4 Our recently changed version of this Rule, which requires that we interpret
`claims in the same manner used in a civil action under 35 U.S.C. § 282(b),
`does not apply here because the Petition was filed before the effective date
`of the new Rule, 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, 51,344 (Oct. 11,
`2018).
`
`
`
`5
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`properties.” Pet. 10–16. In our Institution Decision, we addressed the terms
`“active particles,” “first thickness,” and “second thickness.” Dec. 5–13.
`Patent Owner presents constructions of the terms “active particles” and “first
`and second thickness.” PO Resp. 6–23. Patent Owner does not appear to
`dispute the construction of the other “key terms” identified by Petitioner.
`We discuss the terms “active particles,” “first thickness,” and “second
`thickness” below. On the complete record, we determine that it is not
`necessary to provide an express construction for any other claim term for
`purposes of resolving the controversy. See, e.g., Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only
`be construed ‘to the extent necessary to resolve the controversy.’”) (quoting
`Vivid Techs., 200 F.3d at 803).
`Active Particles
`i.
`Petitioner proposes that we construe the term “active particles” to
`mean “particles capable of causing chemical reactions at their surface or
`capable of physical reactions, including the ability to adsorb, absorb, or trap
`substances.” Pet. 13 (citing Ex. 1005 ¶¶ 97–100). In support of its
`argument, Petitioner points to a portion of the ’287 patent that provides:
`“Surface active particles are active because they have the capacity to cause
`chemical reactions at the surface or physical reactions, such as, adsorb or
`trap substances, including substances that may themselves be a solid, liquid,
`gas or any combination thereof.” Id. at 11 (citing Ex. 1001, 4:4–10).
`Petitioner also relies on Haggquist, which is incorporated into the ’287
`patent in its entirety by reference. Id. at 12; see Ex. 1001, 6:56–60
`(discussing “U.S. patent application publication no. 2004/0018359, which is
`incorporated herein by reference in its entirety”). Haggquist provides that
`
`
`
`6
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`active particles “are active because they have the capacity to adsorb or trap
`substances.” Id. (citing Ex. 1004 ¶ 4).
`Regarding the “absorb” portion of its proposed claim construction,
`Petitioner relies Haggquist’s disclosure that an “encapsulated active particle
`comprising an active particle that is at least partially encapsulated by at least
`one encapsulant that inhibits absorption by said active particle” (Ex. 1004,
`claim 1) and its disclosure that “particles can deactivate before having an
`opportunity to adsorb desirable substances. Premature deactivation can
`include deactivation on account of absorption occurring at an undesirably
`early time whether or not the absorbed substance was deleterious, non-
`deleterious or even the intended target” (id. ¶ 14). Pet. 12.5 Petitioner
`further argues that “the definition of active particles cannot be limited to
`adsorptive particles, since the ’287 Patent discloses other activity in addition
`to adsorption.” Id. at 13 (citing Ex. 1001, 6:4–10; Ex. 1005 ¶ 100).
`In our Institution Decision, we relied on the statement in the ’287
`patent’s specification that “active particles” are particles that “have the
`
`
`5 Patent Owner took steps to correct the portion of this quote that refers to
`“absorption occurring at an undesirably early time” (Ex. 1004 ¶ 14) and one
`other instance of the word “absorbed” in Haggquist, which is incorporated
`by reference into the ’287 patent (Ex. 1001, 6:58–60). Patent Owner applied
`for a Certificate of Correction on August 31, 2018, and obtained a
`Certificate of Correction on Haggquist on October 2, 2018 Ex. 2029;
`Ex. 2030 (making three corrections, including changing “absorption” to
`“adsorption” and “absorbed” to “adsorbed” in U.S. Patent No. 7,247,374 B2,
`which was published as U.S. Patent Application Publication No.
`2004/0018359, Ex. 1004). We do not address the propriety of this course of
`action, other than to say that the removal of the references to “absorption”
`and “absorbed” in Haggquist does not change the language of the
`specification of the ’287 patent on which we rely.
`7
`
`
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`capacity to cause chemical reactions at the surface or physical reactions,
`such as, adsorb or trap substances.” Dec. 9–10 (citing Ex. 1001, 4:4–10).
`We also looked to Haggquist, which is incorporated by reference into
`the ’287 patent specification and states that “active particles” are particles
`that “have the capacity to adsorb or trap substances.” Id. at 10 (citing
`Ex. 1004 ¶ 4). We took our Institution Decision construction directly from
`the specification of the ’287 patent (id. (citing Ex. 1001, 4:6–8)), as this
`appeared to comport most closely with the applicant’s intended
`lexicography. Applying our governing principles of broadest reasonable
`interpretation, we construed “active particles” as “particles that have the
`capacity to cause chemical reactions at the surface or physical reactions,
`such as, adsorb or trap substances.” Id.
`In its Response, Patent Owner proposed that the proper construction
`should be “particles that adsorb or trap substances on their surface.” PO
`Resp. 6. Patent Owner criticized our construction as “unreasonably broad,
`because it encompasses any particle capable of a physical reaction.” Id.
`Patent Owner argues that one of ordinary skill in the art “would not consider
`‘any physical reaction’ to be within the scope of the claims, unless it is
`strictly referring to a physical reaction at the surface of the particle.” Id.
`at 11 (citing Ex. 2005 ¶¶ 30–36, Ex. 2006 ¶ 67). Patent Owner points to the
`specification, arguing that “every embodiment in the Patent speaks to activity
`at the surface,” to urge that “[r]eactions that are not adsorption are not
`within the scope of the claims.” Id. at 13; see also Sur-Reply 3–6.
`Petitioner replies that the ’287 patent “explicitly identifies particles as
`‘active’ that a POSITA would understand act by absorption.” Reply 2
`(citing Ex. 1001, 4:22–27; Pet. 12–13; Ex. 1044 ¶¶ 9–10, 13). Petitioner
`
`
`
`8
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`points to the “active” particles in the patent specification that “impart
`various enhancing properties to membranes – such as moisture vapor
`transport, ultraviolet light protection, chemical protection, and antimicrobial
`protection – by a variety of different mechanisms of activity,” including
`absorption. Id. (citing Ex. 1001, 3:61–4:5, 10:11–18, FIG. 5; Ex. 1044
`¶ 11); id. at 3–4 (citing Ex. 1005 ¶¶ 45, 99; Ex. 1044 ¶¶ 11, 14 (indicating
`that silica gel, identified as an “active particle” in the ’287 patent, is an
`absorbing substance)). Petitioner agrees that the “Board’s construction of
`the term ‘active particles’ aligns with the term’s broadest reasonable
`interpretation in view of the specification.” Id. at 4; see also Tr. 7:6–8.
`On the record now before us, we remain persuaded that the term
`“active particles” means “particles that have the capacity to cause chemical
`reactions at the surface or physical reactions, such as, adsorb or trap
`substances,” as stated essentially verbatim in the specification. Ex. 1001,
`4:6–8; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996) (“The specification acts as a dictionary when it expressly
`defines terms used in the claims or when it defines terms by implication.”).
`The specification states that “active particles” are particles that “have the
`capacity to cause chemical reactions at the surface or physical reactions,
`such as, adsorb or trap substances.” Ex. 1001, 4:4–10. Haggquist, which is
`incorporated by reference into the ’287 patent, states that “active particles”
`are particles that “have the capacity to adsorb or trap substances.” Ex. 1004
`¶ 4. We note that use of the words “such as” in the quoted portion of
`the ’287 patent (Ex. 1001, 4:4–10), into which Haggquist is incorporated,
`has the effect of broadening the description of “active particles” in the ’287
`patent as compared with Haggquist. We have considered the language from
`
`
`
`9
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`Haggquist, including the Certificate of Correction amendments, but we take
`our construction directly from the ’287 patent specification (Ex. 1001, 4:6–
`8), as this appears to comport most closely with the applicant’s intended
`lexicography. See Paulsen, 30 F.3d at 1480. We also agree with Petitioner
`that the ’287 patent covers a broad range of technologies and a wide variety
`of membranes with active particles performing different functions—not only
`moisture vapor transport, but also ultraviolet light protection, chemical
`protection, and antimicrobial protection—by “a variety of different
`mechanisms of activity.” Reply 2 (citing Ex. 1001, 3:61–4:5, 10:11–18,
`FIG. 5; Ex. 1044 ¶11). This supports a finding that the “active particles”
`discussed in the patent act by a variety of different mechanisms, and are not
`merely “particles that adsorb or trap substances on their surface.” See also
`id. at 3 (citing Ex. 1001, 6:13–18 (noting that baking soda, cinoxate, zinc
`oxide, and silica gel act through various absorptive mechanisms); Ex. 2006
`¶ 43 (admitting that silica gel, identified in the ’287 patent as an “active
`particle,” acts by absorption). Applying our governing principles of
`broadest reasonable interpretation, we construe “active particles” as
`“particles that have the capacity to cause chemical reactions at the surface or
`physical reactions, such as, adsorb or trap substances.”
`First Thickness
`ii.
`Petitioner proposes that we construe the term “first thickness” as “the
`thickness of the water-proof composition, which includes the base material
`and the active particles.” Pet. 11. Petitioner relies on the prosecution
`history, in which the applicant stated that support for a certain claim
`amendment “may be found at, for example, Paragraph 0049, which states
`that the Example 1 membrane comprises a thickness of about l mil, or about
`
`
`
`10
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`25.4 microns (the first thickness).” Id. at 10 (citing Ex. 1007, 17). The
`membrane in Example 1, Petitioner argues, includes both the base material
`and the active particles. Id. at 10–11 (citing Ex. 1001, 8:51–61).
`In our Institution Decision, we construed “first thickness” to mean
`“the thickness of a base material,” which base material may include active
`particles. Dec. 12. We noted that the ’287 patent specification does not
`appear to define “first thickness,” outside of using it in the claims, where its
`use following the use of the open-ended term “comprising” indicates that the
`base material may have other properties apart from a thickness, so it would
`be inaccurate to directly equate the two, i.e., to say that “first thickness”
`means “a base material.” Id. at 11. We also noted that the specification and
`the prosecution history demonstrate that the “first thickness” may include
`active particles. Id. at 11–12 (citing Ex. 1001, 8:54–61; Ex. 1007, 17).
`Patent Owner argues that the proper construction of “first thickness”
`is “first layer or membrane.” PO Resp. 15. Patent Owner highlights the
`language of claim 27, which provides for a water-proof composition
`comprising “a liquid-impermeable breathable cured based material
`comprising a first thickness.” Id. at 14 (citing Ex. 1001, claim 27). Patent
`Owner argues that the “cured base material” has a “physical dimension
`referred to as the ‘first thickness’” that one of ordinary skill in the art would
`understand to be a physical dimension of the “cured base material” only and
`not of other claim elements. Id. at 15. Moreover, Patent Owner argues, one
`of ordinary skill in the art would understand that the “cured base material” of
`claim 27 is the layer or membrane (i.e. the “substrate”) on which the “active
`particles” are applied, which does not include the plurality of active
`particles. Id. at 16. Patent Owner faults Petitioner for conflating “the ‘base
`
`
`
`11
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`solution’ that carries the active particles with the ‘base material’ recited by
`claim 27.” Id. at 17. At oral hearing, Patent Owner again equated the
`“cured base material” in claim 27 to the “substrate” in the specification.
`Tr. 61:2–5. Patent Owner differentiated the language of claim 27, which
`discusses a “cured base material,” from the language of claim 1, which is
`directed to a “cured base material solution,” to advance its theory that
`claim 27 is directed to a two-layer embodiment with the substrate being the
`cured base material (and having a first thickness). Id. at 61:2–18; see also
`Sur-Reply 6–11 (discussing Patent Owner’s two-layer embodiment theory).
`Petitioner challenges Patent Owner’s interpretation of “first thickness”
`as a “first layer or membrane” that cannot include any active particles.
`Reply 4. Petitioner notes that the ’287 patent specification does not define
`“first thickness,” but “does describe active particles that are mixed and
`suspended in a solution of base material prior to curing.” Id. at 5. Because
`the “‘cured mixture’ of base material with embedded active particles is
`described as the ‘membrane,’ which may also be a ‘laminate’ or a ‘self-
`supporting membrane’ independent of a substrate,” Petitioner argues that
`Patent Owner’s construction “excludes these preferred embodiments and
`therefore is incorrect.” Id. at 5–6. Petitioner points to a passage in the
`prosecution history of the ’287 patent, in which Patent Owner stated that
`active particles are “used in such a membrane” having a “first thickness”:
`[T]he Example 1 membrane comprises a thickness of about l
`mil, or about 25.4 microns (the first thickness) and … the
`activated carbon used in such a membrane comprises
`Asbury5564™ powdered coconut activated carbon … [with a]
`particle size … [of] about 10 microns (the second thickness).
`Id. at 6 (citing Ex. 1007, 17–18 (emphasis added by Petitioner)). This,
`Petitioner argues, shows that the active particles in Example 1 are “in
`12
`
`
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`contact with” the cured base material comprising a first thickness, because
`they are “used in” the membrane. Id. (citing Ex. 1044 ¶¶ 23, 27). The
`substrate discussed by Patent Owner, Petitioner argues, “is a separate and
`distinct component that may or may not be included in the waterproof
`composition of claim 27,” rather than a “cured base material.” Id. at 7.
`Thus, Petitioner agrees that our initial construction is “reasonable based on
`the claims, specification, and prosecution history of the ’287 patent.” Id.
`at 1.
`
`After considering the record developed during trial, we make the
`following findings. The specification does not appear to define “first
`thickness.” The term “first thickness” is present in independent claims 1, 27,
`40, and 45, which provide for: “a substantially liquid-impermeable cured
`base material solution comprising a first thickness” (Claim 1); “a liquid-
`impermeable breathable cured base material comprising a first thickness”
`(Claim 27); “a base material comprising a first thickness” (Claims 40, 45);
`and dependent claims that further define the dimensions or relative
`dimensions of the first thickness (Claims 51–58). The use of the open-ended
`term “comprising” in the claims indicates that the base material may have
`other properties apart from a thickness. See Dec. 11.
`The specification demonstrates that the base material or base material
`solution having comprising a “first thickness” may include active particles.
`Ex. 1001, Fig. 1 (demonstrating “Mix together active particles and base
`solution” at step 130); 6:65–7:1 (“At step 130, the base material solution and
`the active particles may be mixed together. The active particles may be
`dispersed throughout the base material solution to provide a mixture having
`a uniform consistency.”); 8:54–61 (describing, in Example 1, that the
`
`
`
`13
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`“protected activated carbon was suspended in the polyurethane solution and
`the mixture was applied to a nylon woven fabric”).
`Moreover, the prosecution history of the ’287 patent demonstrates that
`the term “first thickness” encompasses the thickness of a layer comprising a
`mixture of base material and active particles. During prosecution, the
`applicant amended the claims to add the terms “first thickness” and “second
`thickness,” relying on Example 1 as providing support for the amendment.
`Ex. 1007, 2, 12–13, 17–18. The applicant’s remarks demonstrate that, in
`Example 1, the “first thickness” is the thickness of a layer comprising a
`mixture of base material (polyurethane) and active particles (Asbury 5564
`activated carbon) where the mixture is applied to a substrate (nylon woven
`fabric). Id. at 17 (discussing the “Example 1 membrane” as having “a
`thickness of about 1 mil, or about 25.4 microns (the first thickness) and . . .
`the activated carbon used in such a membrane comprises Asbury 5564 . . .
`[with a] particle size . . . [of] about 10 microns (the second thickness)”). We
`note that the first thickness identified here, 25.4 microns, corresponds to one
`mil (Ex. 1044 ¶ 36), which is the only quantification of the term “thickness”
`in the ’287 patent specification outside of the claims. Ex. 1001, 8:54–61
`(“The protected activated carbon was suspended in the polyurethane solution
`. . . resulting in a membrane coated on a substrate, the membrane having a
`thickness of one mil.”).
`We disagree with Patent Owner’s contention that claim 27 discloses a
`“two-layer embodiment” by virtue of its use of the term “cured base material
`comprising a first thickness,” as opposed to claim 1’s alleged “one-layer
`embodiment” by virtue of its reference to “cured base material solution
`comprising a first thickness.” PO Resp. 17–18. We note that the
`
`
`
`14
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`specification interchangeably refers to “base material,” “base material
`solution,” and “base solution,” demonstrating that none of these terms is
`restricted to an embodiment in which the active particles are in a separate
`layer from the base material. Compare Ex. 1001, Fig. 1 (at step 110, using
`“base solution”; at step 130, demonstrating “Mix together active particles
`and base solution”), with id. at 3:37 (“At step 110, a substantially liquid-
`impermeable cured base material solution is provided.”), and id. at 6:65–7:1
`(“At step 130, the base material solution and the active particles may be
`mixed together.”); see also 2:23–25 (“In some embodiments, a breathable
`membrane includes a base material solution and active particles.”); 7:5–7
`(“In other embodiments, the active particles may be mixed with the base
`solution”); 2:59–67 (“the active particles may be incorporated in a way that
`maintains [the properties] generally associated with the base material before
`having the active particles incorporated therein.”); 4:39–43 (“after a process
`that incorporates the particles into a material (e.g., a base material)”); 7:65–
`67 (discussing the “loading of each raw material (e.g., base material,
`activated carbon, and protective substance)”); 10:14–18 (“in the present
`invention, it was found that incorporating active particles, such as for
`example activated carbon, into the base material increased the ability of the
`base materials to absorb IR light”) (emphasis added). Thus, because the
`patent uses these terms essentially interchangeably, Patent Owner’s
`argument that claim 1 and claim 27 disclose fundamentally different
`embodiments with different layer structures is unsupported by the language
`of the specification.
`Moreover, nowhere does the specification equate “cured base
`material” with “substrate.” Reply 6–7. We are not persuaded by Patent
`
`
`
`15
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`Owner’s arguments equating the two, because “substrate” in the ’287 patent
`specification is a different structure to which a membrane made of base
`material and active particles may be applied. Ex. 1001, at [57] (“a
`breathable membrane includes a base material solution and active
`particles . . . [t]he membrane may be applied to a substrate, or may be used
`independent of a substrate”), Fig. 1 (Step 130: “Mix together active
`particles and base solution”; Step 140: “Apply mixture to a substrate”),
`2:13–15 (“The membrane can be a self-supporting membrane or a coating on
`a substrate”). Additionally, the portions of the specification that discuss the
`relationship between the active particles and the base material indicate that
`the active particles may be intermixed with the base material. See, e.g.,
`Ex. 1001, 2:24–25 (the “active particles incorporated in the membrane”);
`2:52–54 (the “encapsulated [active] particles are incorporated into the base
`material solution”); 8:55–57 (the “activated carbon was suspended in the
`polyurethane solution and the mixture was applied to a nylon woven fabric”
`in Example 1); see also Ex. 1004, ¶ 60, Figs. 4, 5 (Haggquist, incorporated
`by reference in its entirety into the ’287 patent, showing that “some of the
`encapsulated [active] particles may be fully contained within the extruded
`material and other particles may extend beyond the outer surface of the base
`material or are exposed to the ambient environment”). Because active
`particles can be mixed with the base material, it is difficult to envision how
`this intermixing leads to a material that requires two different layers.
`Relatedly, the claim language of claim 50 also indicates that a two-
`layer construction is not required by claim 27, because, unlike claim 27,
`claim 50 expressly recites a cured base material solution that is adapted for
`application to a substrate. See also Ex. 1001, 14:9–13 (providing, in
`
`
`
`16
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`claim 50, that the “substantially liquid-impermeable cured base material
`solution, plurality of active particles, and at least one removable encapsulant
`comprise a mixture, the mixture being adapted for application to a substrate
`prior to the substantially liquid-impermeable cured base material solution
`being cured”). If the cured base material of claim 27 were interpreted to be
`the substrate, that interpretation would be inconsistent with the language of
`claim 50, which separately provides for a substrate. Thus, applying our
`governing principles of broadest reasonable interpretation to these portions
`of the specification, particularly to the independent claims, and to the
`prosecution history, we construe “first thickness” to mean “the thickness of a
`base material,” which base material may include active particles.
`Second Thickness
`iii.
`Petitioner proposes that we construe the term “second thickness” as
`“the particle size of the active particles.” Pet. 14. Petitioner relies on the
`prosecution history, in which the applicant stated that support for the
`“second thickness” claim amendment was found in a product data sheet
`indicating that “the particle size for the Asbury 5564TM powdered coconut
`activated carbon comprises about 10 microns (second thickness).” Id. at 13–
`14 (citing Ex. 1007, 17). Accordingly, argues Petitioner, the applicant
`“states that the second thickness is equivalent to the particle size of the
`active particles utilized in this example.” Id. at 14.
`In our Institution Decision, we construed “second thickness” to mean
`“the thickness of a plurality of active particles,” which may be the particle
`size of the active particles. Dec. 13. We noted that the specification does
`not appear to define “second thickness,” outside of using it in the claims,
`where its use following the use of the open-ended term “comprising”
`
`
`
`17
`
`

`

`IPR2018-00190
`Patent 8,945,287 B2
`
`indicates that the active particles may have other properties apart from a
`thickness. Id. We also noted that the applicant, during prosecution, equated
`“the second thickness” with the particle size of the active particles. Id.
`(citing Ex. 1007, 17).
`Patent Owner argues that the proper construction of “second
`thickness” is a “second layer or membrane.” PO Resp. 19. Patent Owner
`points to embodiments of the patent “that disclose placing a layer of active
`particles in contact with a base material (often using a solution or liquid
`suspension of active particles).” Id. (citing Ex. 1004 ¶¶ 67–68, 71–75, 78;
`Ex. 1004, claim 5, claim 11). Patent Owner maintains that the plurality of
`active particles, i.e. the layer with active particles, with or without a solvent,
`“forms a second layer which is the second thickness.” Id. at 19–20.
`Regarding the existing construction of “particle size of active particles,”
`Patent Owner argues that one of ordinary skill in the art would use
`“diameter” instead. Id. at 20 (citing Ex. 2005 ¶ 47). According to Patent
`Owner, one of ordinary skill in the art “does not need an express definition
`of ‘second thickness’ because it is readily apparent that the active particle
`layer has a physical thickness that can be measured.” Id. at 22. Regarding
`the prosecution history, Patent Owner states that the much-discussed
`comments in the prosecution history (Ex. 1007, 17) “were an effort to
`identify support for a claim amendment, and nothing more.” Id. at 21.
`Petitioner contests Patent Owner’s asser