Case: 22-1724 Document: 43 Page: 1 Filed: 03/04/2024
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`PAUL HARTMANN AG,
`Appellant
`
`v.
`
`ATTENDS HEALTHCARE PRODUCTS, INC.,
`Appellee
`______________________
`
`2022-1724, 2022-1725, 2022-1726, 2022-1727
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`01477, IPR2020-01478, IPR2020-01479, IPR2020-01480.
`______________________
`
`Decided: March 4, 2024
`______________________
`
`KATHLEEN DALEY, Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP, Washington, DC, argued for ap-
`pellant. Also represented by JOSHUA GOLDBERG; BRANDON
`THOMAS ANDERSEN, Reston, VA.
`
` JEREMY ALBRIGHT, Norton Rose Fulbright US LLP,
`Austin, TX, argued for appellee. Also represented by
`STEPHANIE DEBROW, EAGLE HOWARD ROBINSON.
` ______________________
`
`
`

`

`Case: 22-1724 Document: 43 Page: 2 Filed: 03/04/2024
`
`2
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC.
`
`Before LOURIE, STOLL, and CUNNINGHAM, Circuit Judges.
`STOLL, Circuit Judge.
`Paul Hartmann AG appeals the final written decisions
`of the Patent Trial and Appeal Board in four inter partes
`reviews initiated by Attends Healthcare Products, Inc. The
`Board determined that all claims of Hartmann’s U.S. Pa-
`tent Nos. 8,152,788, 8,784,398, 8,771,249, and 8,708,990
`were unpatentable as obvious. Because the Board based
`its decision on unsupported assumptions, we vacate the
`Board’s determinations and remand for further proceed-
`ings consistent with this opinion.
`BACKGROUND
`Hartmann’s ’788, ’398, ’249, and ’990 patents (collec-
`tively, the Beckert Patents) relate to adult incontinence di-
`apers.1 The incontinence diapers include a main part or
`chassis, front side parts or wings, and rear side parts.
`’249 patent, col. 1 ll. 13–35. The main part includes a liq-
`uid impermeable backsheet that forms the outer face of the
`main part and is directed away from the user’s body. Id.
`col. 1 ll. 13–22, col. 12 ll. 22–26. To close the incontinence
`diaper, the rear side parts are “wrapped onto the abdomen
`side of the user” and connected either to the backsheet or
`the outer face of the front side parts. Id. col. 1 ll. 35–40.
`The patents state that incontinence diapers in the prior art
`use mechanical closure aids consisting of hook-and-loop
`fasteners in which the hooks are present on the rear side
`parts and a corresponding loop component is present on the
`backsheet, or front of the diaper. Id. col. 1 ll. 42–65. This
`corresponding loop component is “a considerable cost fac-
`tor” and may not be comfortable to the user. Id. col. 1 l. 59–
`col. 2 l. 3.
`
`
`1 The patents share a specification and thus, we cite
`to the ’249 patent for simplicity.
`
`

`

`Case: 22-1724 Document: 43 Page: 3 Filed: 03/04/2024
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC. 3
`
`The Beckert patents purport to have an improved clo-
`sure system in which the “retaining forces between the me-
`chanical closure means and the outer face of the main part
`[is] lower than the retaining forces between the mechanical
`closure means and the outer face of the [front] side parts.”
`Id. col. 2 ll. 7–16. Further, the “materials forming the
`outer face of the main part and the outer face of the side
`parts in the front area are inventively chosen so that, in
`addition to their primary function, they can also serve as
`the engagement surface for the closure means.” Id. col. 2
`ll. 17–21.
`Claims 1, 3 and 4 of the ’249 patent are representative
`and are reproduced below, along with claim 2.
`1. An absorbent incontinence diaper for an adult
`user, comprising:
`a chassis having an inner face which, when in use,
`is directed toward a user body and an outer face
`which, when in use, is directed away from the user
`body, said chassis having an absorbent body and a
`backsheet on a side of said absorbent body which,
`when in use, is directed away from the user body,
`said absorbent body having a smaller width than
`said backsheet, said chassis also having a rear
`area, a front area, and a crotch area lying between
`said rear area and said front area, said chassis fur-
`ther defining first and second side edges;
`a first ear attached as a separate component to said
`first side edge in said front area;
`a second ear attached as a separate component to
`said second edge in said front area;
`a third ear attached as a separate component to
`said first side edge in said rear area;
`a fourth ear attached as a separate component to
`said second side edge in said rear area;
`
`

`

`Case: 22-1724 Document: 43 Page: 4 Filed: 03/04/2024
`
`4
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC.
`
`said third and fourth ears having a closure compo-
`nent including mechanical closure aids which,
`when in use, hold the diaper on the user body when
`said closure component is selectively fastened to ei-
`ther said outer face of said chassis or to said outer
`face of said first and second ears;
`wherein retaining forces between said closure com-
`ponent and said outer face of said chassis are lower
`than retaining forces between said closure compo-
`nent and said outer face of said first and second
`ears.
`2. The absorbent incontinence diaper for an adult
`user of claim 1, wherein said retaining forces are
`determined as over-abdomen retaining forces.
`3. The absorbent incontinence diaper for an adult
`user of claim 2, wherein said retaining forces, de-
`termined as over-abdomen retaining forces between
`said closure component and said outer face of said
`chassis, are 57-20 N/25 mm.
`4. The absorbent incontinence diaper for an adult
`user of claim 3, wherein said retaining forces, de-
`termined as over-abdomen retaining forces between
`said closure component and said outer face of said
`first and second ears, are 90-58 N/25 mm.
`Id. col. 15 l. 59–col. 16 l. 34 (emphases added to highlight
`disputed limitations).
`Attends petitioned for IPRs of the Beckert Patents,
`challenging all claims of each patent. The Board found
`claims 1–54 of the ’249 patent, claims 1–30 of the ’398 pa-
`tent, claims 1–21 of the ’990 patent, and claims 1–21 of the
`’788 patent unpatentable as obvious over prior art combi-
`nations
`including
`U.S.
`Patent
`Publication
`No. 2005/0256496 (Benning) and U.S. Patent Publication
`
`

`

`Case: 22-1724 Document: 43 Page: 5 Filed: 03/04/2024
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC. 5
`
`No. 2003/0220626 (Karami ’626).2 Benning, titled “Hy-
`gienic article for incontinence,” discloses an incontinence
`article with a main body portion with front and rear side
`flaps or wings. Benning [0002], [0003], [0053]–[0055].
`Karami ’626, titled “Loopless absorbent article,” discloses
`“an absorbent article having a fastener element which does
`not require a special loop-providing landing zone,” and in-
`stead, the hook-type fastener elements “engage directly
`with any portion of the nonwoven surface constituting
`the . . . backsheet 32 or wings 40.” Karami ’626 [0039]–
`[0041], [0002].
`Hartmann timely appealed all four Board decisions.
`We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`The Board found that a person of ordinary skill in the
`art would have been motivated to modify Benning’s diaper
`by replacing the fastener elements and material for the
`backsheet of Benning’s diaper with the fastener elements
`and backsheet of Karami ’626’s diaper. Hartmann does not
`dispute this finding of motivation to combine on appeal. In-
`stead, Hartmann argues that the Board erred in finding
`that Benning as so modified by Karami ’626 discloses three
`particular limitations: (1) “hold the diaper on the user
`body”; (2) “retaining forces between said closure component
`and said outer face of said chassis are lower than retaining
`forces between said closure component and said outer face
`of said first and second ears” (which we will refer to as the
`“relative force limitation”); and (3) “retaining forces, deter-
`mined as over-abdomen retaining forces between said clo-
`sure component and said outer face of said chassis, are 57-
`20 N/25 mm” and “retaining forces, determined as over-
`
`
`2 The Board’s decisions as to the relevant claim lim-
`itations are similar and thus, we cite to the decision for the
`’249 patent for simplicity.
`
`

`

`Case: 22-1724 Document: 43 Page: 6 Filed: 03/04/2024
`
`6
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC.
`
`abdomen retaining forces between said closure component
`and said outer face of said first and second ears, are 90-58
`N/25 mm” (which we will refer to as the “range limita-
`tions”). The relative force limitation is recited in each of
`the claims at issue on appeal. The parties also dispute
`whether the Board relied on inherency or obviousness in
`finding that the prior art discloses these limitations.
`I
`Turning first to the relative force limitation, Hartmann
`argues that the Board erred by relying on obviousness in-
`stead of inherency to demonstrate that the proposed com-
`bination teaches the limitation. Attends responds that the
`Board did, in fact, rely on inherency to conclude that the
`proposed combination meets this claim limitation.
`“[I]nherency may supply a missing claim limitation in
`an obviousness analysis,” but “the use of inherency . . .
`must be carefully circumscribed in the context of obvious-
`ness.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d
`1186, 1194–95 (Fed. Cir. 2014). A claim limitation is in-
`herent “only when the limitation at issue is the ‘natural re-
`sult’ of the combination of prior art elements.” Id. (quoting
`In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981). In other
`words, “the mere fact that a certain thing may result from
`a given set of circumstances is not sufficient” to find a lim-
`itation as inherent. Oelrich, 666 F.2d at 581 (citation omit-
`ted). Instead, the “limitation at issue necessarily must be
`present” in the combination. PAR Pharm., 773 F.3d
`at 1195–96.
`Obviousness is a legal determination based on under-
`lying factual findings. See Intelligent Bio-Sys., Inc. v. Illu-
`mina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir.
`2016). We review the Board’s ultimate obviousness deter-
`mination de novo and the underlying factual findings for
`substantial evidence. Id. Whether a claimed feature is in-
`herent in the combination of elements disclosed by the
`prior art is a question of fact, reviewed for substantial
`
`

`

`Case: 22-1724 Document: 43 Page: 7 Filed: 03/04/2024
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC. 7
`
`evidence. See Hospira, Inc. v. Fresenius Kabi USA, LLC,
`946 F.3d 1322, 1329 (Fed. Cir. 2020). Substantial evidence
`is “such relevant evidence as a reasonable mind might ac-
`cept as adequate to support a conclusion.” In re Mouttet,
`686 F.3d 1322, 1331 (Fed. Cir. 2012).
`Whether the Board relied on inherency or obviousness,
`we agree with Hartmann that the Board erred in finding
`that Benning as modified by Karami ’626 would meet the
`relative force claim limitation. The Board acknowledged
`that Karami ’626 discloses that parameters such as the
`number of fibers and the extent to which they are bonded
`together in the nonwoven as well as the pore size in the
`nonwoven can affect the shear and peel strength and in
`turn, affect the retaining forces. Attends Healthcare Prods,
`Inc. v. Paul Hartmann AG, IPR2020-01479, 2022 WL
`557871, at *22 (P.T.A.B. Feb. 23, 2022) (citing Karami ’626
`[0068], [0069]) (’249 IPR Decision). And the Board cor-
`rectly noted that Benning as modified by Karami ’626
`“would have a nonwoven for its . . . backsheet that is of rel-
`atively lower basis weight than the nonwoven for its . . .
`wings,” i.e., the number of fibers would be lower for the
`backsheet compared to the wings. Id. The Board then
`erred, however, in relying on a hypothetical rationale that
`the combination would have the differing retaining forces
`“[i]f the extent to which the fibers are bonded together and
`pore size [were] the same between the two nonwoven ma-
`terials” of the backsheet and wings. Id. The Board did not
`explain or otherwise identify any support to show why the
`nonwovens in the proposed combination would necessarily
`have these characteristics and would thus, necessarily pro-
`vide the required difference in retaining forces. The
`Board’s assumption regarding the characteristics of the
`nonwovens does not satisfy the high “necessarily so” stand-
`ard required for inherency. See Persion Pharm. LLC v. Al-
`vogen Malta Operations Ltd, 945 F.3d 1184, 1191 (Fed. Cir.
`2019) (“Inherency . . . is a high standard.” (citation omit-
`ted)).
`
`

`

`Case: 22-1724 Document: 43 Page: 8 Filed: 03/04/2024
`
`8
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC.
`
`The Board’s finding that “to the extent that the pro-
`posed combination . . . [does] not necessarily provide the re-
`cited difference in retaining forces, . . . such a difference is,
`at least, suggested [by] Karami ’626” is also not supported
`by substantial evidence. ’249 IPR Decision, 2022 WL
`557871, at *22. Specifically, the Board’s finding is again
`based on the assumption that the “two nonwovens . . . oth-
`erwise have the same extent of bonding and pore size,” but
`the Board did not provide any reason why a person of ordi-
`nary skill would have chosen nonwovens with these char-
`acteristics. Id.
`During oral argument, Attends argued that the Board
`found that it would have been obvious to not just replace
`the fasteners and backsheet of Benning with those in
`Karami ’626, but also to modify the material in Benning’s
`wings to have the same nonwoven characteristics as the
`material in Karami ’626. Oral Arg. at 13:58–15:40,
`https://oralarguments.cafc.uscourts.gov/default.aspx?fl=22
`-1724_12052023.mp3. While Attends’s expert opined in
`paragraph 115 of his declaration that “a [person of skill in
`the art] would have readily [modified Benning’s wings and]
`chosen other nonwoven characteristics (e.g., bonding area,
`fiber size, and intersticy size)” to match the nonwoven
`characteristics of Karami’s 626’s backsheet, we do not read
`the Board’s opinion as adopting this proposed further mod-
`ification of Benning. Jezzi Decl. at ¶115. To the contrary,
`the Board explained that “the proposed combination [of
`Benning in view of Karami ’626] does not require modifying
`the relatively heavier nonwoven material that Benning al-
`ready uses for its material sections or wings.” ’249 IPR De-
`cision, 2022 WL 557871, at *21. While the Board cited
`paragraph 115 of Attends’s expert’s declaration, the Board
`did so in addressing a different claim limitation. Moreover,
`the Board’s citation of a page and a half long paragraph
`containing numerous factual assertions does not mean that
`the Board adopted each of the expert’s assertions in that
`paragraph. This is especially true where the sentence the
`
`

`

`Case: 22-1724 Document: 43 Page: 9 Filed: 03/04/2024
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC. 9
`
`Board cited the expert opinion for merely states “[b]ased on
`the full record, we determine that Benning’s diaper modi-
`fied with Karami ’626’s hook-type fastener would have
`functioned to ‘when in use, hold the diaper on the user
`body.’” Id. at *22.
`As such, we do not find substantial evidence support
`for the Board’s findings regarding the relative force limita-
`tion. Hartmann also argues that the particularly recited
`combination of Benning as modified by Karami also fails to
`disclose the “hold the diaper on the user body” limitation
`for the same reasons that the combination does not disclose
`the relative force limitation. We need not reach this issue,
`however, given our holding regarding the relative force lim-
`itation, which is recited in each of the claims at issue on
`appeal.
`
`II
`Turning to the range limitations, Hartmann again ar-
`gues that the Board erred by relying on obviousness rather
`than inherency and that the Board’s findings are based on
`hindsight. We hold that the Board erred in finding that
`Benning as modified by Karami ’626 would provide retain-
`ing forces within the claimed range limitations.
`The specification of Hartmann’s patents-at-issue in
`this appeal describes an embodiment with particular fas-
`teners and nonwovens for the backsheet and wings.
`’249 patent, col. 14 l. 47–col. 15 l. 57. The specification
`lists the retaining forces resulting from this embodiment
`and these retaining forces fall within the claimed range
`limitations. Id. The Board’s obviousness analysis primar-
`ily depends on its finding that Hartmann “does not dis-
`pute . . . that the fasteners and nonwovens used in the
`[proposed combination involving Benning and Karami
`’626] match those described in the Specification [of the pa-
`tents-in-suit]” and thus, the proposed combination would
`provide retaining forces that meet the claimed range limi-
`tations. ’249 IPR Decision, 2022 WL 557871, at *24. The
`
`

`

`Case: 22-1724 Document: 43 Page: 10 Filed: 03/04/2024
`
`
`
`PAUL HARTMANN AG v. ATTENDS HEALTHCARE PRODUCTS, INC. 10
`
`Board points to Hartmann’s Response and Sur-reply as ev-
`idence of Hartmann’s alleged admission, but we see no
`such admission by Hartmann in the cited briefing. With-
`out such an admission or any other record evidence to sup-
`port the Board’s assertion (i.e., that the fastener and
`nonwoven materials of Benning in view of Karami ’626
`match those described in the specification of the patent-in-
`suit), the Board’s analysis of whether the prior art combi-
`nation discloses the claimed range limitations is unsup-
`ported and cannot stand.
`CONCLUSION
`For the foregoing reasons, we vacate and remand the
`decision of the Board.
`VACATED AND REMANDED
`COSTS
`
`Costs to appellants.
`
`
`