Trials@uspto.gov
`571-272-7822
`
`Paper No. 14
`Entered: May 31, 2018
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`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822
`
`Paper No. 14
`Entered: May 31, 2018
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
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`INTRODUCTION
`I.
`VF Outdoor, LLC (“Petitioner”) requests an inter partes review of
`claims 27, 28, 30, 32, 33, and 35–39 of U.S. Patent No. 8,945,287 B2
`(“the ’287 patent,” Ex. 1001). Paper 1 (“Pet.”). Cocona, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We
`have authority under 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted unless “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Applying that standard, and upon consideration of the
`information presented in the Petition and the Preliminary Response, we
`institute an inter partes review of claims 27, 28, 30, 32, 33, and 35–39.
`Related Proceedings
`A.
`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.
`
`The ’287 Patent
`B.
`The ’287 patent, titled “Active Particle-Enhanced Membrane and
`Methods for Making and Using the Same,” 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,
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`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 Claims
`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,
`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.
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`Proposed Grounds of Unpatentability
`D.
`Petitioner asserts that claims 27, 28, 30, 32, 33, and 35–39 of the ’287
`patent are unpatentable based upon the following grounds:
`Reference(s)
`Statutory Basis
`Claim(s) Challenged
`Dutta1
`§ 102(b)
`27, 28, 30, 32, and 36–37
`Dutta and Haggquist2
`§ 103(a)
`27, 28, 30, 32, and 35–39
`Halley3
`§ 102(b)
`27, 28, 30, 32, 33, and 35–37
`Halley and Haggquist
`§ 103(a)
`38–39
`
`The Petition is supported by the Declaration of Abigail Oelker, Ph.D.
`
`Ex. 1005. Patent Owner relies on the Declaration of Dr. Gregory W.
`Haggquist. Ex. 2001.
`
`II. ANALYSIS
`We address below whether the Petition meets the threshold showing
`for institution of an inter partes review under 35 U.S.C. § 314(a). We
`consider the grounds of unpatentability in view of the understanding of a
`person of ordinary skill in the art.
`Petitioner asserts that one of ordinary skill in the art
`would have had an advanced degree (Master’s or Ph.D.) or a
`bachelor of science degree in a relevant field combined with
`practical experience in one of the following: (1) chemical
`materials, including polymers and materials that undergo
`sorption; (2) light and its interaction with matter; and (3)
`waterproof, breathable materials and garments. Four-year
`
`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).
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`college degrees in Chemistry, Chemical Engineering, Polymer
`Chemistry, or Physics would be appropriate, or, at a minimum,
`the completion of courses in chemistry, organic chemistry,
`physical chemistry, polymer science, or proto-physical
`chemistry.
`
`
`Pet. 20. Patent Owner does not appear to dispute Petitioner’s definition of
`one of ordinary skill in the art. At this stage of the proceeding, we adopt
`Petitioner’s uncontested definition of one of ordinary skill in the art. The
`level of ordinary skill in the art is further demonstrated by the prior art
`asserted in the Petition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001).
`
`Claim Construction
`A.
`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); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). 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)).
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`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
`properties.” Pet. 10–16. Patent Owner presents constructions of the terms
`“active particles” and “first and second thickness.” Prelim. Resp. 1–19.
`Patent Owner does not appear to dispute the construction of the other “key
`terms” identified by Petitioner.
`Below, we address the terms “active particles,” “first thickness,” and
`“second thickness.” On the present record, we determine that no other claim
`term requires express construction for purposes of this decision.
`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 active particles
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`“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 on one portion of Haggquist that provides for 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” and another portion of Haggquist that provides 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.” Pet. 12 (citing Ex. 1004, claim 1, ¶ 14). 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).
`Patent Owner proposes that we construe the term “active particles” to
`mean “particles that adsorb or trap substances on their surface.” Prelim.
`Resp. 1. Patent Owner first criticizes Petitioner’s proposed construction as
`erroneously encompassing “particles that react by absorption, which is a
`bulk process that is very different from the surface-active process of
`adsorption.” Id. at 2 (citing Ex. 2001 ¶¶ 10–11). According to Patent
`Owner, each reference to “absorption” in Haggquist is an “obvious
`typographical error.” Id. at 6–7 (citing Ex. 2001 ¶¶ 12–13, Ex. 1004 ¶ 4).
`Patent Owner further criticizes Petitioner’s proposed construction as
`stretching “active particles” to “encompass any particle ‘capable of physical
`reactions,’ which includes practically any particle.” Id. at 2.
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`Patent Owner points to numerous instances in the ’287 patent
`specification and in Haggquist that discuss “active particles.” Id. at 2–5.
`The gist of Patent Owner’s arguments, based on these instances, is that
`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” and that active particles “have an adsorptive property”
`because “each particle has a large surface area made up of a multitude of
`pores.” Id. at 3–5 (citing Ex. 1001, 4:4–10, 4:12–21).
`Patent Owner presents the following image to depict the “difference
`between the surface-active process of adsorption (shown on the right) and
`the bulk dissolution process of absorption (shown on the left).” Id. at 6.
`
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`Accordingly, Patent Owner argues that a person of ordinary skill in
`the art would have recognized that “the references to absorption are obvious
`typographical errors because the pores of an active particle are blocked (e.g.,
`deactivated) by adsorption, not by absorption.” Id. at 10.
`We are not directed to any mention of absorption in the specification
`of the ’287 patent. We note Dr. Haggquist’s testimony that the portion of
`Haggquist that mentions absorption can be attributed to a typographical
`error. Ex. 2001 ¶¶ 12–13. Dr. Haggquist is the named inventor of both
`the ’287 patent and the prior art submitted as “Haggquist,” as well as being
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`the co-founder and Chief Technology Officer of Patent Owner. Ex. 1001,
`at [75]; Ex. 1004, at [76]; Ex. 2001 ¶ 3–4. We recognize that, both as the
`named inventor of the ’287 patent and as an officer of Patent Owner,
`Dr. Haggquist may have an interest in upholding the ’287 patent, but we also
`recognize that, as the named inventor of the ’287 patent, he has unique
`insight into whether a typographical error exists in an application he
`submitted. We also are mindful that, in a preliminary proceeding, our
`decision “will take into account a patent owner preliminary response where
`such a response is filed, including any testimonial evidence,” but that “a
`genuine issue of material fact created by such testimonial evidence will be
`viewed in the light most favorable to the petitioner solely for purposes of
`deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).
`Petitioner has not presented any evidence to address whether a typographical
`error existed, nor has Petitioner requested a reply to address the alleged
`typographical error. Weighing these facts, and considering the testimony
`along with the substance of these two references, we believe it is an open
`question as to whether or not the references to “absorption” in Haggquist are
`typographical errors. Even if they are not typographical errors, there is a
`further open question as to whether the references to “absorption” in
`Haggquist modify the definition of “active particles” in the ’287 patent.
`Ex. 1001, 4:4–10. See, e.g., Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713
`F.3d 1090, 1097 (Fed. Cir. 2013) (express definition in patent incorporated
`by reference into the patent-in-suit “does not necessarily reflect how a
`person of ordinary skill in the art would understand the disputed term in the
`context of the [patent-in-suit]”).
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`Although we do not have a complete record before us regarding the
`alleged typographical errors in Haggquist and how they affect the
`construction of “active particles” in the ’287 patent, we anticipate that a full
`record will be developed at trial. Notwithstanding the discussion about
`absorption, 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 specification, states
`that “active particles” are particles that “have the capacity to adsorb or trap
`substances.” Ex. 1004 ¶ 4. We have considered the language from
`Haggquist, but take our construction directly from the specification
`(Ex. 1001, 4:6–8), as this appears to comport most closely with the
`applicant’s intended lexicography. 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
`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).
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`Patent Owner proposes that we construe the term “first thickness” as
`“first layer or membrane.” Prelim. Resp. 14. Patent Owner points to 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 13 (citing Ex. 1001, claim 27).
`Petitioner’s proposed construction, Patent Owner argues, “improperly re-
`writes a number of limitations in the claim,” including re-writing the claim
`to make the “water-proof composition” of the claim preamble the “first
`thickness,” instead of the “cured base material.” Id. at 17. Patent Owner
`disputes that the applicant’s statements in the prosecution history support
`Petitioner’s proposed construction, pointing to a portion of the prosecution
`history in which the applicant stated that “the cured base material solution
`comprises a first thickness.” Id. at 18 (citing Ex. 1007, 17).
`The term “first thickness” is present in independent claims 1, 27, 40,
`and 45. Claim 1 provides for “a substantially liquid-impermeable cured base
`material solution comprising a first thickness.” Claim 27 provides for “a
`liquid-impermeable breathable cured base material comprising a first
`thickness.” Claims 40 and 45 provide for “a base material comprising a first
`thickness.” The term “first thickness” also is present in dependent claims
`51–58, each of which depends directly from an independent claim and each
`of which further defines the dimensions or relative dimensions of the first
`thickness. The specification does not otherwise appear to define “first
`thickness.” The use of the open-ended term “comprising” in the claims
`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.” The specification and the
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`prosecution history demonstrate that the “first thickness” may include active
`particles. Ex. 1001, 8:54–61; Ex. 1007, 17. 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.
`Patent Owner proposes that we construe the term “second thickness”
`as “second layer or membrane.” Prelim. Resp. 14. Patent Owner points to
`the language of claim 27, which provides for a water-proof composition
`comprising “a plurality of active particles in contact with the liquid-
`impermeable breathable cured base material, the plurality of active particles
`comprising a second thickness.” Id. (citing Ex. 1001, claim 27). Patent
`Owner also points to portions of Haggquist discussing certain ways of
`incorporating the principles of Haggquist’s invention into different methods.
`Id. at 15–16.
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`The term “second thickness” is present in independent claims 1, 27,
`40, and 45. Claim 1 provides for “a plurality of active particles in contact
`with the substantially liquid-impermeable cured base material solution,”
`wherein the plurality of active particles “comprise a second thickness.”
`Claim 27 provides for “a plurality of active particles in contact with the
`liquid-impermeable breathable cured base material, the plurality of active
`particles comprising a second thickness.” Claims 40 and 45 provide for “a
`plurality of active particles in contact with the base material, the plurality of
`active particles comprising a second thickness.” The term “second
`thickness” also is present in dependent claims 55–62, each of which depends
`from an independent claim and each of which further defines the dimensions
`of the second thickness. The specification does not otherwise appear to
`define “second thickness.” The use of the open-ended term “comprising” in
`the claims indicates that the active particles may have other properties apart
`from a thickness, so it would be inaccurate to directly equate the two, i.e., to
`say that “second thickness” means “a plurality of active particles.” During
`prosecution, the applicant equated “the second thickness” with the particle
`size of the active particles. Ex. 1007, 17. Applying our governing principles
`of broadest reasonable interpretation to these portions of the specification
`and the prosecution history, we construe “second thickness” to mean “the
`thickness of a plurality of active particles,” which may be the particle size of
`the active particles.
`B. Overview of the Asserted References
`Dutta
`i.
`Dutta, titled “Water Vapor Permeable, Air Impermeable Film and
`Composite Coatings and Laminates,” relates to compositions for “controlled
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`increase in [water vapor transmission rate] of a non-porous polymer film or
`of composites containing it.” Ex. 1002, at [54], [57]. More particularly,
`Dutta’s material “can be in the form of a waterproof, air permeable, water
`vapor permeable non-porous polymer film or sheet made of a polymer resin
`and hydrophilic absorbent particles having absorptive capacity greater than 1
`gram of water per gram of dry (water-free) particles.” Id. at [57]. Dutta
`provides details regarding the size of its absorbent-type particles (id.
`at 9:19–22) and orientation of the absorbent-type particles relative to the
`polymer resin (id. at 10:37–11:14 (partially embedded or dispersed); id.
`at 12:26–27 (layered)). In its Examples, Dutta provides further details
`regarding the composition of its materials, using SOLUCOTE TOP 932 and
`Nalco 1181 in its Example 1A and SOLUCOTE TOP 932 and Sephadex G-
`200-50 in its Example 1B. Id. at 17:31–18:21. Dutta presents a Table
`comparing the properties of the films created in Examples 1A and 1B to
`Comparative Example 1. Id. at 23:1–8.
`Halley
`ii.
`Halley, titled “Coated Membrane,” is directed to “a composite
`material which comprises a substrate and a continuous polymer coating
`applied to the substrate, the polymer containing a particulate solid and being
`imbibed into a face of the porous substrate; and the solid particles being
`distributed non-uniformly through depth of the polymer coating.” Ex. 1003,
`at [54], [57]. Halley provides that the “polymer applied as a continuous
`coating to the substrate” is generally a “water-vapour-permeable hydrophilic
`polymeric material which allows the passage of water vapour therethrough
`without being permeable to liquid water” and that, generally, “the coating
`has a thickness of 5 to 100 microns.” Id. at 2:24–34. The “particulate solid
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`is incorporated into the water-vapour-permeable polymer, generally before
`the polymer coating is applied to the substrate.” Id. at 3:1–3. Halley further
`provides that the particulate solid may be “carbon particles” or “inorganic
`particulate materials, pigments, metal oxides, metal salts, or metal particles.”
`Id. at 3:3–5. The primary particle size is “generally less than 50,000 nm,
`particularly less than 5,000 nm, especially less than 500 nm, more especially
`less than 200 nm and most especially less than 50 nm.” Id. at 3:10–13. The
`“primary particles may cluster together to form aggregates (typically 1 to
`100, 1 to 20, or 1 to 5 microns median particles size).” Id. at 3:14–15.
`iii. Haggquist
`Haggquist, titled “Encapsulated Active Particles and the Methods for
`Making and Using the Same,” relates to “preserving the properties of active
`particles through use of an encapsulant which may be removable.”
`Ex. 1004, at [54], [57]. Haggquist provides that its active particles can
`include, but are not limited to, “activated carbon, graphite, aluminum oxide
`(activated alumina), silica gel, soda ash, aluminum trihydrate, baking soda,
`p-methoxy-2- ethoxyethyl ester Cinnamic acid (cinoxate), zinc oxide,
`zealites [sic, zeolites], titanium dioxide, molecular filter type materials, and
`other suitable materials.” Id. ¶ 30. Haggquist’s encapsulants can include,
`but are not limited to, “water-soluble surfactants, surfactants, salts (e.g.,
`sodium chloride, calcium chloride), polymer salts, polyvinyl alcohols, waxes
`(e.g., paraffin, carnauba), photo-reactive materials, degradable materials,
`biodegradable materials, ethoxylated acetylenic dials, and any other suitable
`substances.” Id. ¶ 33.
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`Asserted Anticipation Based on Dutta
`C.
`Petitioner asserts that claims 27, 28, 30, 32, and 36–37 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Dutta. Pet. 21–37.
`Petitioner presents a claim chart to demonstrate where Petitioner contends
`every element of the challenged claims is found in Dutta. Id. at 21–32.
`Regarding claim 27, Petitioner contends that Dutta discloses:
`(1) a liquid-impermeable breathable cured base material comprising a
`first thickness, “in the creation of the polyurethane film from the drying and
`heating of a polyurethane solution,” which polyurethane film has a thickness
`that includes the base material and the active particles, as shown in Table 1
`(id. at 33);
`(2) a plurality of active particles in contact with the liquid-
`impermeable breathable cured base material, with Dutta’s disclosure of
`absorbent particles or Sephadex particles in contact with or layered on a
`liquid-impermeable breathable cured base material (id. at 22–23, 34);
`(3) the plurality of active particles comprising a second thickness,
`with Dutta’s disclosure of a plurality of absorbent-type particles sized from
`0.1 to 300 micrometers or Sephadex particles sized from 20–50 micrometers
`(id. at 23, 34–35);
`(4) that 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, with the claimed thickness ratio shown in
`Example 1B and Table 1 in Dutta (id. at 35); and
`(5) that the active particles improve the moisture vapor transport
`capacity of the composition, and that a moisture vapor transmission rate
`(“MVTR”) of the water-proof composition comprises from about 600
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`IPR2018-00190
`Patent 8,945,287 B2
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`g/m2/day to about 11000 g/m2/day due to the addition of active particles,
`with Dutta’s disclosure of an improved water vapor transmission rate in
`Example 1B in Dutta of 6730 g/m2/day (id. at 36).
`Patent Owner contends, first, that the Petition fails to show how Dutta
`discloses “active particles.” Prelim. Resp. 22. Patent Owner faults
`Petitioner for its reliance on an “overly-broad construction for ‘active
`particles’ that is designed to manufacture anticipation using a reference that
`does not disclose ‘active particles.’” Id. Rather, Patent Owner argues, Dutta
`discloses “absorbent particles” such as hydrophilic absorbent Sephadex
`particles, “which are not active particles.” Id. at 22–23. Petitioner,
`however, presents evidence that Sephadex, in addition to being an absorbent
`particle, is also an adsorbent particle capable of trapping water and other
`substances. Pet. 34 (citing Ex. 1023, 143; Ex. 1005 ¶¶ 117–125). On this
`record, and given that our construction 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,” we are persuaded by
`Petitioner’s arguments that Sephadex is an active particle.
`Patent Owner contends, next, that “the Petition fails to specifically
`show how the ‘first thickness’ element, as properly construed, is met by
`Dutta.” Prelim. Resp. 26. More particularly, Patent Owner contends that
`“the Petition fails to specifically show that Dutta discloses a two-layer
`waterproof composition comprising a base material (a first “layer or
`membrane”) and a plurality of active particles (a second “layer or member”)
`as claimed.” Id. Patent Owner also argues that “the Petition fails to
`specifically show how Dutta discloses the ‘second thickness’ as claimed.”
`Id. at 27. More particularly, Patent Owner contends that the citations to
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`Dutta relied on by Petitioner disclose the size of individual particles, rather
`than the “second layer or membrane.” Id.
`As a preliminary matter, we disagree with Patent Owner’s contention
`that claim 27 requires a two-layer construction. See Sections II.A.ii
`and II.A.iii, supra (claim constructions for “first thickness” and “second
`thickness”). We have not been directed to any portion of the ’287 patent
`specification that requires the claimed composition to be a water-proof
`composition with two distinct layers. 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, Figs. 4, 5
`(Haggquist, incorporated by reference in its entirety into the ’287
`specification, 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”). Thus, there do not appear to have to be two distinct
`layers of base material and active particles, as urged by Patent Owner.
`Regarding the “first thickness,” Petitioner relies on Example 1B in
`Table 1 of Dutta to disclose the thickness of the base material. Pet. 33.
`Table 1 discloses the thickness of Example 1B (with Sephadex particles) to
`be 0.0030 inches. We have construed “first thickness” to mean “the
`thickness of a base material,” which base material may include active
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`IPR2018-00190
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`particles. Claim 27 requires a “cured base material comprising a first
`thickness.” As noted above, the specification’s discussion of the base
`material indicates that the active particles may be intermixed with the base
`material before it is cured. See also Ex. 1001, 6:65–7:29, Fig. 1 (indicating
`“base material solution and the active particles may be mixed together” at
`Step 130 prior to curing as discussed in Steps 140 and 150). Thus, on the
`present record, Petitioner’s reliance on Example 1B of Dutta is sufficient to
`support institution.
`Regarding the “second thickness,” Petitioner relies on the thickness of
`Dutta’s absorbent-type particles or Sephadex particles, “particles sized from
`0.1 to 300 micrometers, 0.1 to 100 micrometers, or 20–50 micrometers.”
`Pet. 34–35. We have construed “second thickness” to mean “the thickness
`of a plurality of active particles,” which may be the particle size of the active
`particles. Claim 27 does not require that the active particles be present in a
`layer, let alone a layer of any particular depth or configuration of active
`particles. Rather, it appears from the specification that the plurality of active
`particles may be dispersed throughout the base layer. See, e.g., Ex. 1001,
`2:
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