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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`EPL LIMITED,
`Petitioner
`
`v.
`
`COLGATE-PALMOLIVE COMPANY,
`Patent Owner
`
`___________________
`
` Case PGR2022-00001
`U.S. Patent No. 10,889,093
`___________________
`
`
`PETITION FOR POST-GRANT REVIEW
`OF U.S. PATENT NO. 10,889,093
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................1
`IDENTIFICATION OF THE CHALLENGE ...........................................2
`A.
`Citation of Prior Art ....................................................................3
`B.
`Statutory Grounds for the Challenge..............................................4
`III. OVERVIEW OF THE ’093 PATENT ....................................................4
`A.
`Technology Background ..............................................................4
`B. Alleged Problem in the Art—Stress Values and the Well-Known
`Curling Problem .........................................................................9
`1.
`Alleged Problem of Recycling Multilayer Plastics ................ 11
`C. Alleged Solution of the ’093 Patent – Balancing the Curling Tendency
`(Stress Value) of Individual Layers to Reduce Curl in the Overall
`Structure (Net Stress Value) ....................................................... 12
`D. Overview of the ’093 Claims ...................................................... 13
`E.
`Prosecution History Summary .................................................... 14
`IV. LEVEL OF ORDINARY SKILL IN THE ART ..................................... 16
`V.
`CLAIM CONSTRUCTION ................................................................ 16
`VI. OVERVIEW OF THE APPLIED REFERENCES .................................. 18
`A. Morris ..................................................................................... 18
`B. Haley ...................................................................................... 19
`C.
`Borse ...................................................................................... 20
`D. Guo......................................................................................... 20
`VII. GROUND 1: MORRIS RENDERS OBVIOUS CLAIMS 1–4 AND 7–10. 20
`A. Morris renders obvious claim 1. .................................................. 22
`1.
`Preamble: “A sheet comprising:” ....................................... 22
`2.
`[1.1] “a polymeric multi-layer structure comprising:” ........... 23
`3.
`[1.1a] “a plurality of layers including an uppermost layer and a
`lowermost layer, each of the plurality of layers having a stress
`value” ............................................................................ 24
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`4.
`
`5.
`
`b)
`
`c)
`
`[1.1b] “wherein the stress value of at least two of the plurality
`of layers are non-zero and different from one another”.......... 26
`a)
`It would have been obvious that the multilayer structure
`of Morris would have had two layers with non-zero,
`different stress values. ............................................. 27
`Claiming a highly probable result of a well-known
`technique is not patentable. ...................................... 28
`i.
`Patent Owner’s arguments during prosecution
`support the unpatentability of this claim element.
`.................................................................... 30
`Two layers with non-zero, different stress values is
`obvious as being part of a finite number of predictable
`solutions. ............................................................... 31
`[1.1c] “wherein the multi-layer structure has a net stress value
`that is less than the greater stress value of the plurality of
`layers.” ........................................................................... 32
`B. Morris renders obvious claim 2. .................................................. 33
`C. Morris renders obvious claim 3. .................................................. 34
`D. Morris renders obvious claim 4. .................................................. 35
`E. Morris renders obvious claim 7. .................................................. 35
`F. Morris renders obvious claim 8. .................................................. 37
`G. Morris renders obvious claim 9. .................................................. 37
`H. Morris renders obvious claim 10. ................................................ 39
`VIII. GROUND 2: MORRIS AND HALEY RENDERS OBVIOUS CLAIMS 5-6.
`........................................................................................................ 41
`A. Morris and Haley render obvious claim 5. .................................... 41
`1.
`A POSA would have been motivated to improve material
`performance of the multilayer structure by adding the layers
`disclosed in Haley. ........................................................... 41
`A POSA would have had a reasonable expectation of success
`adding Haley’s layers to Morris’ multilayer structure............ 44
`Element [5.1] .................................................................. 44
`Element [5.2] .................................................................. 45
`
`2.
`
`3.
`4.
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`b)
`
`4.
`
`5.
`
`5.
`Element [5.3] .................................................................. 46
`B. Morris and Haley render obvious claim 6. .................................... 47
`IX. GROUND 3: HALEY, BORSE, AND GUO RENDER OBVIOUS CLAIMS
`1–10. ................................................................................................ 49
`A. Haley, Borse, and Guo render obvious claim 1.............................. 49
`1.
`Preamble: “A sheet comprising:” ....................................... 49
`2.
`[1.1] “a polymeric multi-layer structure comprising:” ........... 49
`3.
`[1.1a] “a plurality of layers including an uppermost layer and a
`lowermost layer, each of the plurality of layers having a stress
`value” ............................................................................ 50
`[1.1b] “wherein the stress value of at least two of the plurality
`of layers are non-zero and different from one another”.......... 52
`a)
`A POSA would have been motivated to modify Haley in
`view of Borse, the combination of which renders [1.1b]
`obvious.................................................................. 52
`A POSA would have further been motivated to apply the
`teachings of Guo to the combination of Haley and Borse.
`............................................................................. 55
`i.
`Guo is analogous art. ...................................... 57
`ii.
`Guo’s teachings are applicable to Haley and Borse.
`.................................................................... 58
`[1.1c] “wherein the multi-layer structure has a net stress value
`that is less than the greater stress value of the plurality of layers
`...................................................................................... 59
`B. Haley, Borse, and Guo render obvious claim 2.............................. 59
`C. Haley, Borse, and Guo render obvious claim 3.............................. 60
`D. Haley, Borse, and Guo render obvious claim 4.............................. 61
`E. Haley, Borse, and Guo render obvious claim 5.............................. 63
`1.
`Element [5.1] .................................................................. 65
`2.
`Element [5.2] .................................................................. 66
`3.
`Element [5.3] .................................................................. 67
`Haley, Borse, and Guo render obvious claim 6.............................. 68
`
`F.
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`B.
`
`C.
`
`G. Haley, Borse, and Guo render obvious claim 7.............................. 69
`H. Haley, Borse, and Guo render obvious claim 8.............................. 70
`I.
`Haley, Borse, and Guo render obvious claim 9.............................. 71
`J.
`Haley, Borse, and Guo render obvious claim 10. ........................... 72
`X. CLAIMS 1–10 ARE NOT ENABLED. ................................................ 74
`XI. CLAIMS 1–10 DO NOT RECITE PATENTABLE SUBJECT MATTER. 79
`A.
`The claims recite well-known structure in combination with certain
`material properties. ................................................................... 80
`The claims are directed towards a natural law and meet Alice/Mayo
`step one. .................................................................................. 81
`The claims fail to add an inventive concept and thus meet Alice/Mayo
`step two. .................................................................................. 82
`XII. MANDATORY NOTICES ................................................................. 83
`A.
`Real Party-in-Interest ................................................................ 83
`B.
`Related Matters ........................................................................ 83
`C.
`Lead and Back-Up Counsel ........................................................ 83
`D.
`Service Information................................................................... 83
`XIII. GROUNDS FOR STANDING (37 C.F.R. §42.204(A)) .......................... 84
`XIV. CONCLUSION ................................................................................. 84
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`PETITIONER’S EXHIBIT LIST
`
`Description
`U.S. Patent No. 10,899,093 B2 to Wang (“the ’093 Patent”)
`Prosecution File History of U.S. Patent No. 10,889,093 B2 (“’093
`File History”)
`Declaration of Stephen McCarthy, Ph.D.
`Curriculum Vitae of Stephen McCarthy, Ph.D.
`Barry A. Morris, The Science and Technology of Flexible
`Packaging: Multilayer Films from Resin and Process to End Use,
`Elsevier Inc., 2007 (“Morris”)
`U.S. Patent No. 8,709,611 B2 to Haley (“Haley”)
`International Patent Application Publication No. WO
`2014/005214 A1 to Borse (“Borse”)
`Guo, et al., “Predicting multilayer film’s residual stress from its
`monolayers,” Materials and Design 110 (2016) 858-864
`Multilayer Flexible Packaging, 2nd Ed., edited by John R.
`Wagner, Jr., Elsevier Inc., 2016 (“Wagner”)
`Declaration of Sylvia Hall-Ellis, Ph.D.
`High Density Polyethylene TIPELIN, MOL Group Product
`Catalogue, April 2018
`“SoarnoL,” Soarus L.L.C. website, captured by the Web Archive
`on January 6, 2019 (accessed October 8, 2021 at
`https://web.archive.org/web/20190106165900/https://soarus.com/
`product/soarnol-evoh/)
`Polyethylene Technical Guide Series, “01 General Properties –
`Technical Guide,” Qenos Pty Ltd.
`“HDPE Bottle Application Test, HDPE-A-01,” The Association
`of Postconsumer Plastic Recyclers
`U.S. Patent No. 3,655,503 to Stanley et al. (“Stanley”)
`“Newest APR Recycling Demand Champion Companies
`Announced at the 2019 Plastics Recycling Conference,” The
`Association of Plastic Recyclers Press Release, March 13, 2019
`U.S. Patent No. 7,802,685 B2 to Allen et al. (“Allen”)
`“The APR Design Guide for Plastics Recyclability,” The
`Association of Plastic Recyclers, October 26, 2018
`
`- v -
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`1010
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`1016
`
`1017
`1018
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
`
`Exhibit
`No.
`
`1019
`
`1020
`
`Description
`“Applications Guidance for Innovations ‘HDPE Bottles
`Applications Guidance Document,’” Association of Postconsumer
`Plastic Recyclers, May 13, 2019
`“SMARTFLEX -- The New Series of Packaging Film Extrusion
`Lines,” Bandera, YouTube video, June 10, 2012 (accessed
`October 11, 2021 at
`https://www.youtube.com/watch?v=WdHTLiC5jUk)
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
`
`I.
`
`INTRODUCTION
`The ’093 patent claims are directed to a basic plastic multilayer sheet. These
`
`structures are well-known in the art and are the basis for many common household
`
`products, like shampoo bottles or toothpaste tubes. The ’093 patent claims’ alleged
`
`point of novelty is a multilayer sheet that has a lesser tendency to deform (i.e.,
`
`“curl”) than the individual layer in the multilayer sheet that has the greatest
`
`tendency to curl. The tendency of an individual layer to curl is represented by its
`
`“stress value” and the tendency of the multilayer structure to curl is the
`
`combination of the stress values of the individual layers, represented by what the
`
`claims term the “net stress value.” These stress values are internal stresses that
`
`work to deform the individual layers, and thus the overall multilayer structure, in a
`
`manner similar to the stresses that cause a sheet of plywood to warp when it is
`
`exposed to excess moisture. In the case of multilayer plastic structures, the internal
`
`stresses are caused by chemical and material interactions that occur during
`
`formation of the multilayer structure.
`
`But these stress values, and the resulting deformation or curl were a well-
`
`known problem in the art. And solutions to minimize or eliminate the curl by
`
`balancing or eliminating the stress values were also well-known by the ’093
`
`patent’s 2019 earliest possible priority date. Thus, the ’093 patent claims nothing
`
`more than a known multilayer structure with known material properties.
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`The ’093 patent also fails to discuss how to practice its claimed multilayer
`
`structure with the claimed stress value configuration. In fact, the ’093 patent does
`
`not provide a single example with the claimed stress value and net stress value
`
`characteristics. The ’093 patent also does not provide any guidance on how to
`
`create a multilayer structure with the claimed stress value characteristics. Thus, the
`
`’093 patent also fails to enable its claims.
`
`Finally, the ’093 patent claims suffer from a fundamental flaw: they are, at
`
`heart, directed to a natural law. The formation of stresses in a multilayer structure
`
`is governed by chemical and material processes that are natural phenomena. The
`
`broad ’093 patent claims recite only well-known multilayer structures and material
`
`properties, and thus fail to add any additional inventive concept. Thus, the ’093
`
`patent claims are also unpatentable because they are directed at unpatentable
`
`subject matter.
`
`II.
`
`IDENTIFICATION OF THE CHALLENGE
`U.S. Patent No. 10,889,093 (“the ’093 patent”) is titled “Dimensionally
`
`Stable Recyclable Plastic Package.” The ’093 patent issued from U.S. Application
`
`No. 16/721,472, filed on December 19, 2019. The ’093 patent claims priority to
`
`U.S. Provisional Patent Application 62/843,691, filed on May 6, 2019. For
`
`purposes of this Petition alone, the ’093 patent will be assumed to have an earliest
`
`effective priority date of May 6, 2019. The ’093 patent is therefore subject to post-
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`AIA law and is eligible for Post-Grant Review because its earliest possible priority
`
`date falls after the critical March 16, 2013 date. See AIA §§ 3(n)(1), 6(f)(2)(A).
`
`A. Citation of Prior Art
`“The Science and Technology of Flexible Packaging: Multilayer Films
`
`from Resin and Process to End Use,” Barry A. Morris (EX1005, “Morris”), is a
`
`textbook that was publicly accessible at least as early as September 1, 2017.
`
`EX1010, ¶¶44-49, 63. Specifically, as Dr. Hall-Ellis explains in her declaration,
`
`Morris was indexed and searchable in various public databases at least as early as
`
`September 1, 2017. Id. Moreover, a physical copy of Morris was available to be
`
`reviewed at a public library by September 1, 2017. Id., ¶46. Thus, Morris published
`
`before the ’093 patent’s earliest possible priority date and is prior art at least under
`
`35 U.S.C. § 102(a)(1)1.
`
`United States Patent No. 8,709,611 to Haley, “Multilayer Films Having
`
`Reduced Curling” (EX1006, “Haley”), issued on April 29, 2014, before the ’093
`
`patent’s earliest effective priority date. Haley is prior art at least under 35 U.S.C. §
`
`102(a)(1).
`
`
`
`
`1 As explained above, the ’093 patent is subject to post-AIA law. Section II.
`
`Thus, all cites to statutes and regulations in this Petition will be to post-AIA
`
`versions unless otherwise noted.
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`PCT Patent Application Publication No. WO2014/005214 to Borse et al.,
`
`“Curl Resistant Barrier Films” (EX1007, “Borse”), published on January 9, 2014,
`
`before the ’093 patent’s earliest effective priority date. Borse is prior art at least
`
`under 35 U.S.C. § 102(a)(1).
`
`“Predicting Multilayer Film’s Residual Stress from its Monolayers,”
`
`Guo et al. (EX1008, “Guo”) is a journal article that was published in the Materials
`
`and Design Journal at least as early as August 17, 2016. EX1008, 858; EX1010,
`
`¶¶56-63. Thus, Guo is prior art at least under 35 U.S.C § 102(a)(1).
`
`Statutory Grounds for the Challenge
`B.
`Ground
`References
`Basis
`1
`§103
`2
`§103
`3
`§103
`4
`§112
`5
`§101
`
`Morris
`Morris, Haley
`Haley, Borse, Guo
`None
`None
`
`
`
`Claims Challenged
`1-4, 7-10
`5-6
`1-10
`1-10
`1-10
`
`III. OVERVIEW OF THE ’093 PATENT
`A. Technology Background
`The ’093 patent discloses methods and systems for manufacturing multilayer
`
`structures made from various types of plastic materials. EX1001, 1:9-22. These
`
`structures (called “sheets” in the ’093 patent) are commonly used as flexible
`
`packaging for products like toothpaste. Id., 1:9-22, 1:35-36. Examples of materials
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`used in the layers of these sheets include High Density Polyethylene (“HDPE”),
`
`Low Density Polyethylene (“LDPE”), and ethylene-vinyl-alcohol (“EVOH”). Id.,
`
`14:31-34, 15:40-43, 16:46-48. These sheets can be either formed as single,
`
`combined structure, or they can be formed by combining multiple existing layers in
`
`a process called lamination. EX1003, McCarthy Decl., ¶28; EX1009, 7. Forming
`
`the sheets as a single structure with multiple layers can be accomplished, for
`
`example, in two processes. In a blown film process molten material is extruded
`
`through a ring-shaped die that has air being blown through the center of the ring.
`
`Id.; EX1001, 23:2-24:26; Morris, 29-35; EX1009, 137-139. The molten material is
`
`blown into a cylindrical film in a process somewhat analogous to blowing a
`
`continuous soap bubble. EX1003, ¶28; EX1020. Additional layers can be added to
`
`a blown film by adding additional dies nested next to each other, with each die
`
`corresponding to a single layer. Id., ¶28; EX1001, 23:2-24:27; EX1005, 29-35.
`
`Figure 12 from the ’093 patent shows a nine-layer blown film machine, with
`
`extruders 921-929 visible.
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`EX1001, FIG. 12.
`
`
`
`Another process that can form a single multi-layer structure is a casting
`
`process. EX1003, ¶29; EX1001, 25:2739; EX1005, 36-39; EX1009, 139-142. In
`
`this process, the molten film material is extruded out of a die onto a series of
`
`cooling rollers, as shown below.
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`EX1005, 36.
`
`
`
`Multilayer sheets can also be formed by laminating together previously-
`
`fabricated single layer or multilayer sheets. EX1003, ¶30; EX1001, 6:47-7:23,
`
`26:1-21; EX1005, 42-45; EX1009, 142-145. Lamination occurs by bonding
`
`together the previously-fabricated layers into multilayer structure. EX1003, ¶30;
`
`EX1001, 26:1-21; EX1005, 42-45. This can be accomplished using adhesives, for
`
`example. EX1003, ¶30; EX1001, 26:1-21; EX1005, 42-45. It is also possible to
`
`laminate multilayer structures together through lamination to form a single,
`
`combined multilayer structure. EX1003, ¶30. For example, the ’093 patent teaches
`
`forming a first web 100 and a second web 200 that are each themselves multilayer
`
`structures, and then laminating them together with an intermediate sheet layer 300
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`to create the final multilayer structure. EX1001, 26:22-30. A cross-section of one
`
`of the multilayer sheets discussed in the ’093 patent is shown below.
`
`EX1001, FIG. 4.
`
`
`
`While the ’093 patent describes in detail embodiments that are laminations
`
`of multiple layers wherein the layers are themselves multilayer structures made
`
`through blown film and cast film techniques, the ’093 patent makes clear that the
`
`alleged invention includes multilayer structures that are as simple as a three layer
`
`sheet made using conventional blown and cast film techniques. See, e.g., EX1001,
`
`28:3-13; EX1003, ¶31. The above manufacturing processes are well-known and
`
`are not recited in the claims of the ’093 patent.
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`B. Alleged Problem in the Art—Stress Values and the Well-Known
`Curling Problem
`The ’093 patent states that flexible multilayer materials can exhibit “poor
`
`dimensional stability.” EX1001, 1:15-22. The ’093 patent further explains that
`
`flexible material that exhibits poor dimensional stability tends to curl onto itself
`
`making it unsuitable as a packaging material. Id. However, this problem was well-
`
`known in the art long before the ’093 patent was filed. See, e.g., EX1015, 3:50-54
`
`(discussing the need to minimize curl in a patent filed in 1969). The ’093 patent
`
`does not identify any new facets or features to this well-known issue. EX1003,
`
`¶32.
`
`The ’093 patent explains that the polymeric material is comprised of
`
`macromolecule chains. EX1001, 5:6-6:46. Within each layer of the multi-layer
`
`structure that is formed from a polymeric material, the corresponding
`
`macromolecule chains (i.e., polymer chains) may exhibit a specific molecular
`
`orientation. EX1003, ¶32. The ’093 patent further explains that each layer of the
`
`multilayer sheet exhibits a particular molecular orientation of the polymeric chains
`
`contained within the layer. Id. Depending on the molecular orientation for a given
`
`layer, the counterbalancing forces of the polymer chains within that given layer
`
`may not be at equilibrium, thereby causing that layer to be in a state of internal
`
`stress. EX1001, 5:14-17. The internal stress of the given layer may manifest in the
`
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`given layer deforming (e.g., curling) from a substantially flat state to a non-flat
`
`state even when no external forces are applied to that given layer. Id., 5:18-28.
`
`It is important to recognize that the stress value in the ’093 patent depends
`
`on the stress caused by internal stress patterns overcoming equilibrium and causing
`
`the layer to have a tendency to deform. EX1003, ¶33. As the ’093 patent explains
`
`“[d]epending on the molecular orientation for a given layer, the counterbalancing
`
`forces of the polymer chains within that given layer may not be at equilibrium,
`
`thereby causing that layer to be in a state of internal stress.” Id., 5:14-17. Morris
`
`expands on this, explaining “the residual stress is countered by a resisting force
`
`related to the stiffness and thickness of the layers in the structure.” EX1005, 495.
`
`For example, if a material is very stiff (i.e., has a high Young’s modulus), it may
`
`have quite high internal stresses, but it may not deform because the stress cannot
`
`overcome the stiffness of the material. EX1003, ¶33.
`
`A simple example of how curl forms in a material is when a molten plastic
`
`material is poured onto a very cold surface and allowed to solidify. Id., ¶34. The
`
`plastic in contact with the cold surface will cool and solidify rapidly, while the
`
`opposite surface of the molten plastic layer that is exposed only to ambient
`
`atmosphere will cool and solidify much more slowly. Id., ¶34. As part of the
`
`cooling process, the plastic will also at least partially adhere to the cold surface.
`
`Because most plastic materials contract when they solidify, the portion of plastic
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`that is not in contact with the cold surface will be free to contract more than the
`
`opposite surface. Id., ¶34. This would result in stresses that tend to curl the
`
`resulting solid plastic towards the side opposite the cold surface. Id., ¶34.
`
`Alleged Problem of Recycling Multilayer Plastics
`1.
`The ’093 patent is titled “Dimensionally Stable Recyclable Plastic Package”
`
`
`
`and states that “[r]ecycling is a way to prevent waste material from being deposited
`
`in a landfill.” EX1001, (54); 1:6-7. But beyond the general statements found in the
`
`background section, the ’093 patent only links recyclability to a single concept: the
`
`overall melt flow index of the multilayer structure, which is the subject of claim
`
`10. Id., 27:21-33; EX1003, ¶¶36. However, the recited melt flow index range was
`
`known to be desirable for recycling in existing HDPE recycling streams. See
`
`EX1014, 8. Indeed, Exhibit 1014 is a guidance document from the Association of
`
`Postconsumer Plastic Recyclers (“APR”) that discusses the various properties (and
`
`their ranges) that are required for a material to be compatible with existing HDPE
`
`recycling streams. See generally EX1014. 2 And the ’093 patent does not add any
`
`more detail regarding recyclability of these multilayer structures beyond the known
`
`compatibility issues. EX1003, ¶¶36.
`
`
`
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`2 Colgate was a member of APR before the critical date. EX1016.
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`While melt flow index is the only property of the sheet that is explicitly
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`linked to recyclability in the specification, other dependent claims recite
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`exceedingly specific values and properties that are seemingly pulled from thin air.
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`But in fact, these claim elements too—substantially zero metal and cellulose (claim
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`8) and density of 0.950-0.965 g/cm3 (claim 9)—are well-known in the industry to
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`be desirable values for recyclability. EX1014, 7-8.
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`C. Alleged Solution of the ’093 Patent – Balancing the Curling
`Tendency (Stress Value) of Individual Layers to Reduce Curl in
`the Overall Structure (Net Stress Value)
`The ’093 patent states that “it has been discovered that the resulting multi-
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`layer structure 50 may comprise such layers having such non-zero stress values
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`that are different from one another, yet the overall multi-layer structure 50 has a
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`net stress value that is less than the greater stress value for the individual layers.”
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`EX1001, 6:7-12. This alleged discovery is restated as “the multi-layer structure 50
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`may exhibit a non-zero stress value, yet the net stress value of the multi-layer
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`structure 50 will still be less than the greatest stress value for an individual layer
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`within that multi-layer structure 50—thereby resulting in the multi-layer structure
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`50 exhibiting less curl as compared [to] the layer having the greatest individual
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`stress value.” Id., 6:14-20. Thus, according to the ’093 patent, while the stress
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`patterns of each individual layer may be a non-zero value and are different from
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`each other—the summation of all stress patterns may at least partially
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`counterbalance each other, thereby putting the multi-layer structure 50 closer to
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`equilibrium and reducing the amount of deformation (e.g., curling) within the
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`multi-layer structure 50. EX1003, ¶35.
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`As explained in detail below, the ’093 patent does not explain exactly how
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`this counterbalancing of stress layers is accomplished. Section III.C. Regardless,
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`the alleged discovery of the ’093 patent is nothing more than a well-known natural
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`phenomenon: that layers with different stress values can be arranged to balance
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`each other in a multi-layer film. EX1005, 499-502; EX1003, ¶35. The claims of the
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`’093 add nothing to this alleged issue beyond well-known structures and material
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`properties. EX1003, ¶35.
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`D. Overview of the ’093 Claims
`The ’093 patent claims are all product claims. There are ten claims in the
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`’093 patent, with the sole independent claim reciting a multilayer sheet having a
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`plurality of layers in which the “net stress value” of the sheet is less than the
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`greatest stress value of an individual layer:
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`1. A sheet comprising:
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`a polymeric multi-layer structure comprising:
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`a plurality of layers including an uppermost layer and a lowermost layer,
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`each of the plurality of layers having a stress value;
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`wherein the stress value of at least two of the plurality of layers are non-zero
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`and different from one another; and
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`wherein the multi-layer structure has a net stress value that is less than the
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`greater stress value of the plurality of layers.
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`EX1001, Claim 1; EX1003, ¶37.
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`
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`The remaining nine dependent claims can be split into three general
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`categories:
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`1. Claim 2 is the sole additional claim that involves stress values. It includes
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`the same stress value concept found in claim 1 because it only adds that the
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`stress value of a third layer must be non-zero and different from the stress
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`values of the two layers recited in claim 1. EX1003, ¶38.
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`2. Claims 3–6 recite adding additional layers to the multilayer structure in a
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`specific order. Id.
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`3. Claims 7–10 recite properties of the multilayer structure, such as thickness
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`or overall density. Id.
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`Prosecution History Summary
`E.
`The application that became the ’093 patent received a single substantive
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`Office Action. EX1002, 0112-21. The Examiner issued Section 112 rejections for
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`lack of clarity. Id. In response, Applicant amended the claims to remove certain
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`claim elements that were subject to the Section 112 rejection. Id., 0134-49;
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`EX1003, ¶39.
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`The Examiner also rejected all claims as obvious over U.S. Patent
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`Application Publication 2016/0339663 to Clare, finding that Clare disclosed a
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`multi-layer flexible sheet with layers formed of different materials. EX1002, 0114-
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`20. The Examiner further found that layers of differing materials would
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`“inherently” possess differing, non-zero stress values as claimed. Id. Focusing on
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`the Examiner’s inherency-based rejection, Applicant argued in response that claim
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`1’s recitation of “wherein the stress value of at least two of the plurality of layers
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`are non-zero and different from one another” and “wherein the multi-layer
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`structure has a net stress value that is less than the greater stress value of the
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`plurality of layers” distinguished the claims from Clare. Id., 0134-49; EX1003,
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`¶40. Specifically, Applicant argued that “there is no teaching or suggestion in
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`Clare that would lead a skilled person to believe that the plurality of layers of Clare
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`necessarily have different stress values.” EX1002, 0144. Applicant continued on to
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`explain that a person of ordinary skill in the art (“a POSA”) would not have been
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`motivated to modify Clare to match the claims because there was no teaching or
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`suggestion to do so. Id., 0144-45. Applicant did not point the Examiner to enabling
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`or written description support for the full scope of the claims in either the as-filed
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`Application or during prosecution. EX1003, ¶40
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`Petition for Post-Grant Review of U.S. Patent No. 10,889,093
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`IV. Level of Ordinary Skill in the Art
`A POSA at the time of the alleged invention would have had a B.S. degree
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`in Chemical Engineering, Materials Science, or Mechanical Engineering (or
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`equivalent), as well as at least 2–4 years of academic or industry experience with
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`multilayer polymer material production or research. EX1003, ¶¶27; see id. ¶¶6-11.
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`Less work experience may be compensated by a higher level of relevant education,
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`such as a Master’s Degree, and vice versa.
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`V. Claim Construction
`The claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d
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`130