from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2014-01244.
Nicholas (Nika) Fremont Aldrich, Jr., Schwabe, Williamson
& Wyatt, Portland, OR, argued for appellant. Also
represented by Steven J. Prewitt, Sara Kobak.
Paul Weihrouch, Rothwell, Figg, Ernst & Manbeck, P.C.,
Washington, DC, argued for appellee. Also represented by
Jennifer Nock, Soumya Panda.
Dyk, Moore, and Reyna, Circuit Judges.
Technologies Corp. ("Outdry") appeals from the
Patent Trial and Appeal Board's ("Board") inter
partes review decision holding that claims 1-15 of U.S.
Patent No. 6, 855, 171 ("the '171 patent")
would have been obvious over a combination of prior art. For
the reasons discussed below, we affirm.
'171 patent claims methods of waterproofing leather,
particularly for the manufacture of shoes, clothes, or
leather accessories. '171 patent at 1:12-14. The
specification discloses prior art methods of waterproofing
leather shoes, including sewing a fabric lining and a
semi-permeable film to the interior surface of the leather or
gluing a semi-permeable membrane inside the leather around
the membrane's perimeter. Id. at 1:20-26, 36-38.
It states these prior art methods allowed a water cushion to
form in which water penetrates the leather and becomes
trapped between the membrane and interior surface of the
leather. Id. at 1:27-31, 39-42. The '171 patent
sought to overcome this issue by "directly
pressing" a semi-permeable membrane onto the leather via
a dotted glue pattern:
1. A process for waterproofing leather (1), comprising
directly pressing on an internal surface of the
leather (1) at least one semi-permeable membrane (2) whose
surface contacting the leather (1) is provided with a
discontinuous glue pattern to adhere the leather to the
semi-permeable membrane, wherein the glue pattern is formed
of a multiplicity of dots having a density included between
50 dots/cm2 and 200 dots/cm2.
'171 patent at claim 1 (emphasis added). Claim 9, the
only other independent claim, is identical to claim 1 but for
reciting the size of the dots instead of the density: "a
multiplicity of dots having a diameter included between 0.1
mm and 0.8 mm."
Board found U.S. Patent No. 5, 244, 716
("Thornton") discloses all elements of claims 1 and
9 except the density of the dots (claim 1) and the sizes of
the dots (claim 9). Thornton is directed to "waterproof
but breathable articles of clothing" including
stockings, gloves, and hats. J.A. 250 at 1:5-10, 20-23. It
discloses a waterproof and breathable glove consisting of
three layers: an inner knitted lining, a middle layer of film
105, and an outer water permeable layer, such as leather.
J.A. 260 at 21:1-14. It discloses placing adhesive dots on
the "outer surface of film 105 in spaced apart
locations" to "secure the barrier component of the
glove" by heatwelding. Id. at 21:31-44. The
Board construed "directly pressing" to mean
"applying pressure without any intervening materials or
layers other than the recited adhesive" and determined
"Thornton explicitly describes drawing the membrane
barrier component over a former, applying adhesive to the
outer surface of the film, drawing the outer glove layer onto
the former, and bonding the layers by pressing." J.A.
10, 16 (citing J.A. 260 at 21:64- 22:8).
disclosure of the density and sizes of the dots, the Board
relied on "Coated and Laminated Fabrics" in
Chemistry of the Textiles Industry ("Scott") and
U.S. Patent No. 6, 139, 929 ("Hayton"). Scott
discloses adhering a waterproof, vapor permeable membrane to
fabric for rainwear in which there is "sufficient
adhesive to bond the hydrophobic 'non-stick' film to
a textile fabric, but the adhesive dot coverage has to be
kept low to minimize the area of blocked micropores."
J.A. 517. Hayton discloses socks having an inner knitted
sock, a water impermeable and vapor permeable barrier
component 100, and an outer knitted sock. J.A. 302 at
12:34-39. It discloses "the barrier component 100 is
attached to the inner surface 201 of the outer sock 200 . . .
by spaced apart dots of adhesive." Id. at
12:43-46. It teaches that the adhesive is "preferably
applied as dots 0.2 to 1 mm e.g. 0.5 to 0.8 mm preferably
0.55 to 0.65 mm in diameter and a density of 10 to 100 dots,
preferably 15 to 75, more preferably 20 to 60 dots per square
cm." J.A. 299 at 6:24-27.
Board found that a person of ordinary skill in the art would
have been motivated to combine Thornton with Scott and
Hayton. It found the petitioner, Geox S.p.A.
("Geox"), "provided a rational underpinning
for combining the disclosures of Scott and Hayton, which
provide guidance for the density and size of adhesive dots to
adhere a semi-permeable membrane to a porous layer."
J.A. 15. It held that claims 1, 2, 5-11, 14, and 15 would
have been obvious over Thornton, Scott, and Hayton and that
the remaining claims would have been ...