In Neenah, Inc. v. Schwendimann, IPR2021-00016, Paper 26 (PTAB April 12, 2022), the Patent Trial and Appeal Board (“PTAB”) issued a final written decision determining that all challenged claims are unpatentable as anticipated.
Neenah challenged claims 5 and 19 of U.S. Pat. No. 7,008,746 (“the ’746 patent”):
Claim 5. A coated transfer sheet comprising: a substrate having a first and second surface; and at least one release layer overlaying said first surface, said release layer comprising a film forming binder, a wax emulsion, and a retention aid.
Claim 19. A method of applying an image to a receptor element which comprises the steps of: (i) imaging a coated transfer sheet according to claim 5; (ii) positioning the front surface of the transfer sheet against said receptor element, (iii) applying energy to the rear surface of the imaging system to transfer said image to said receptor element, (iv) optionally allowing the substrate to cool, and (v) removing the transfer sheet from the substrate.
Neenah asserted claim 5 was anticipated based on five references: Kronzer-769, Kronzer-179, Hiyoshi, Taniguchi, and Oez and that claim 19 was anticipated based on the same references except for Oez.
The PTAB began by construing the disputed claims terms, “film forming binder” and “retention aid.” The petitioner argued that the terms do not require a specific amount of the recited materials, nor do they require the materials perform a specific function. Id. at *9. The patent owner argued that the claims required each material to be present “in a sufficient amount to actually provide the desired characteristic.” Id. at *9. The patent owner also argued that the PTAB should adopt the same claim construction as the District Court of Delaware:
“film forming binder” means “a material, or a combination of materials, that facilitates release and/or adhesion of the composition;” and
“retention aid” means “a material that aids in the binding of an applied colorant.”
Id. at *11.
However, the PTAB found that, based on the language of the claims, “there is no express requirement of a specific amount of a ‘film forming binder,’ a wax emulsion, or retention aid, in any of the challenged claims. Nor is there an express requirement in any of the challenged claims that the ‘film forming binder,’ wax emulsion, or retention aid perform a particular function.” Id. at *12-13. According to the Board, construing the claim by function would improperly import limitations into the claims. Id. at *13.
Turning to the specification, the PTAB found that no description accompanying the lists of examples of film-forming binders, wax emulsions, and retention aids required that they have any specific function in the composition. Id. Moreover, permissive language such as “may be incorporated” used in the specification “undermines Patent Owner’s argument that the Specification requires a retention aid to perform a specific function in the recited composition.” Id. at *14.
The PTAB also concluded that the district court’s claim construction was consistent with its own, disagreeing with the patent owner that the district court’s constructions required specific functions. Id. at *16.
Having construed the claims, the PTAB concluded that the petitioner had shown that claims 5 and 19 were unpatentable because they were anticipated by Kronzer-769. In particular, for claim 5, the petitioner had shown that Kronzer-769’s “third layer corresponds to the claimed release layer and includes each of the claimed components (i.e., a film-forming binder, a wax emulsion, and a retention aid).” Id. at *18. The petitioner had also shown that “Kronzer-769 described the method of using the coated transfer sheet (of claim 5) as recited in claim 19.” Id. at *20.
The PTAB rejected the patent owner’s arguments that Kronzer-769 did not disclose the claimed components “as arranged in the claim” in a single embodiment, instead finding that the petitioner had persuasively demonstrated “that Kronzer-769’s third layer comprises all three of the recited components” and that Kronzer-769 described an example of a single embodiment including all the required components as arranged in the claims. Id. at *21. Thus, this was not a case of inappropriate “picking and choosing.” Id. at *22-23.
The PTAB also rejected the patent owner’s argument that Kronzer-769 was not enabling because the examples described did not successfully use a wax emulsion. Id. at *23-25. Since the claims did not require a particular result, the Board concluded that the success of Kronzer’s examples was of “little consequence.” Id. at *25.
The additional grounds were not addressed.
To be anticipating, a reference must “sufficiently describe the claimed invention to have placed the public in possession of it.” Minnesota Mining & Mfg. Co. (“3M”) v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1572 (Fed. Cir. 1992). There is no “teaching away” analysis in an anticipation inquiry. Celeritas Techs., Ltd. v. Rockwell Int'l. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis.”). To remove a reference on grounds that it does not enable what it discloses, an applicant must prove that no operable technique existed to produce the product or perform the process disclosed by the reference. See In re Sasse, 629 F.2d 675, 681 (CCPA 1980).
This case provides an example of how claim drafting can ultimately determine the types of arguments available to practitioners when enforcing or defending the patent. In this case, the lack of a functional limitation or a result recited in the claim left the practitioners with fewer arguments to work with. The case is also a reminder that a PTAB panel and a district court judge may construe a claim differently, even when both are operating under the same claim construction standard. There is no rule requiring one to defer to the construction of the other.
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