Jodi Schwendimann

Patent Trials and Appeals Board

Oct 1, 2021

IPR2020-00633 (P.T.A.B. Oct. 1, 2021)

Trials@uspto.gov Paper 40
571-272-7822 Date: October 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

STAHLS’ INC.,
Petitioner,
v.
JODI A. SCHWENDIMANN, f/k/a JODI A. DALVEY, and
NUCOAT, INC.,
Patent Owner.

IPR2020-00633
Patent RE41,623 E

Before JEFFREY W. ABRAHAM, MICHELLE N. ANKENBRAND, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining Some Claims Unpatentable
35 U.S.C. § 318

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I. INTRODUCTION
Stahls’ Inc. (“Petitioner”)1 filed a Petition (Paper 1, “Pet.”) requesting
inter partes review of claims 6–14 and 16 of U.S. Patent No. RE41,623 E
(Ex. 1002, “the ’623 patent”). Pet. 1. Jodi A. Schwendimann and NuCoat,
Inc. (collectively “Patent Owner”) filed a Preliminary Response (Paper 9,
“Prelim. Resp.”).
Upon consideration of the Petition, Preliminary Response, and the
parties’ evidence, we determined that Petitioner had demonstrated a
reasonable likelihood that it would prevail with respect to at least one claim
of the ’623 patent. Paper 11 (“Decision on Institution” or “DI”). Thus,
pursuant to the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138
S. Ct. 1348, 1355 (2018), and the USPTO Guidance,2 we instituted review
of all challenged claims on all asserted grounds. Id.
Following institution of trial, Patent Owner filed a Patent Owner
Response (Paper 15, “PO Resp.”), Petitioner filed a Reply (Paper 26, “Pet.
Reply”), and Patent Owner filed a Sur-reply (Paper 35, “Sur-reply”).
In support of their respective positions, Petitioner relies on the testimony of
Dr. Christopher E. Scott (Ex. 1001; Ex. 1039), and Patent Owner relies on
the testimony of Dr. Scott Williams (Ex. 2001) and the Declaration of Dr.
Christopher Ellison (Ex. 2011). The parties also rely on the Declaration of
Jodi A. Schwendimann executed on January 31, 2013 (Ex. 2003, “2013

1 Petitioner identifies Stahls’ Inc. and Siser North America, Inc. as the real
parties-in-interest. Pet. 2.
2 In accordance with USPTO Guidance, “if the PTAB institutes a trial, the
PTAB will institute on all challenges raised in the petition.” See USPTO,
Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018)
(available at https://www.uspto.gov/patents-application-process/patent-trial-
and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).
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Schwendimann Declaration”), the Declaration of Jodi A. Schwendimann
executed on January 11, 2021 (Ex. 2014, “2021 Schwendimann
Declaration”), the Declaration of Nabil Nasser, executed on January 29,
2021 (Ex. 2020, “2021 Nasser Declaration”).
An oral hearing was held on July 14, 2021, and a transcript of the
hearing is included in the record (Paper 39, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine that Petitioner has shown by
a preponderance of the evidence that claims 6, 7, 9–14, and 16 of the ’623
patent are unpatentable.
A. Related Proceedings
Petitioner identifies the pending lawsuit between the parties, styled
Jodi A. Schwendimann v. Stahls’ Inc., Case No. 2:19-cv-10525-LVP-RSW
(E.D. Mich.), as a related proceeding in which Patent Owner asserts the ’623
patent. Pet. 4; see also Paper 10, 2 (Patent Owner’s Mandatory Notices).
The ’623 patent is asserted in the following pending litigations:
Jodi A. Schwendimann v. Neenah, Inc., Case No. 1:19-cv-00361-
LPS (D. Del.)(the “the Delaware Lawsuit”); and
Jodi A. Schwendimann v. Siser North America, Inc., Case No.
1:19-cv-00362-LPS (D. Del.).
Pet. 4; Paper 10, 2. The ’623 patent was also asserted in Jodi A.
Schwendimann v. Arkwright Advanced Coating, Inc., Case No. 0:11-cv-
00820-JRT-HB (D. Minn.) (“Arkwright Lawsuit”). Pet. 4. The ’623 patent
is also the subject of additional, separate IPRs: Neenah, Inc. v. Jodi A.
Schwendimann, IPR2020-00628 and Stahls’ Inc. v. Jodi A. Schwendimann,
IPR2020-00641. Paper 10, 2. We instituted inter partes review in both the -
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00628 and -00641 cases. See IPR2020-00628, Paper 10; IPR2020-00641,
Paper 11. Concurrently with the entry of this Final Written Decision, we
also separately enter judgment in the -00628 and -00641 cases.
Petitioner states that the ’623 patent is a reissued patent of U.S. Patent
No. 6,844,311 which issued from U.S. Patent Application No. 09/541,845
(“the ’845 application”) which is a continuation-in-part of U.S. Patent
Application No. 09/391,910 (“the ’910 application”). Numerous patents
claim priority to the ’845 and ’910 applications including U.S. Patent
No. 7,749,581 (“the ’581 patent”), U.S. Patent No. 7,754,042 (“the ’042
patent”), U.S. Patent No. 7,771,554 (“the ’554 patent”), and U.S. Patent
No. 7,766,475 (“the ’475 patent”) (together with the ’623 patent, collectively
“the Schwendimann patents”). Pet. 3.
Petitioner also filed petitions for inter partes review against claims of
the ’581 patent, the ’042 patent, the ’475 patent, and the ’554 patent. We
instituted inter partes review on Petitioner’s challenges against the ’581
patent in IPR2020-00634 (Paper 13), IPR2020-00644 (Paper 10), and
against the ’042 patent in IPR2020-00629 (Paper 10) and IPR2020-00635
(Paper 10). We rendered judgment in IPR2020-00629, -00634, -00635, and
-00644 on September 10, 2021. IPR2020-00634, Paper 39; IPR2020-00644,
Paper 35; IPR2020-00629, Paper 39; IPR2020-00635, Paper 46. We
declined, however, to institute trial on Petitioner’s challenges against certain
claims of the ’581 patent in IPR2020-00645 (Paper 10) or against the ’544
patent in IPR2020-00636 (Paper 10) or IPR2020-01121 (Paper 8).
The Schwendimann patents were also involved in Patent Interference
Nos. 105,961, 105,964, and 105,966 (collectively “Interference
Proceedings”). Ex. 2004, 1; Ex. 2003, 2.
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B. The ’623 Patent
The ’623 patent, titled “Method of Image Transfer on a Colored
Base,” issued on September 7, 2010. Ex. 1002, codes (45), (54). The ’623
patent is directed to “a method for transferring an image onto a colored base
and to an article comprising a dark base and an image with a light
background on the base.” Id. at 1:13–15.
The ’623 patent explains that conventional image transfer processes
use two-steps: applying a white or light background polymeric material to a
colored base with heat and then using another sheet to impart an image to
the substantially white polymeric material. Id. at 3:35–48. According to the
’623 patent, the conventional two-step process requires careful alignment of
an image with the white background, is “exceedingly time-consuming,” and
produced significant waste of base and image transfer materials. Id. at 3:49–
56.
An exemplary image transfer process of the ’623 patent is depicted
below in Figure 1.
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Figure 1 “illustrates a schematic view of one process of image transfer onto
a colored product.” Id. at 2:29–31. Figure 1 depicts colored base material
102 (e.g., a colored textile), image 104 including substantially white
background 106, and indicia 108 disposed on substantially white
background 106. Id. at 3:7–18. The ’623 patent states that image 104 is
applied to colored base material 102 with heat to make completed article 110
in a single step. Id.
An embodiment of an image transfer device is depicted below in
Figure 5.
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Figure 5 illustrates “a cross-sectional view of one other embodiment of the
image transfer device of the present invention.” Id. at 2:41–42. Figure 5
shows “an image transfer sheet 500 that is comprised of a substrate layer 502
[and] a release layer 504, comprising a silicone coating 505 and a white
layer 506.” Id. at 8:48–53. Figure 5 also depicts white layer 506 and
receiving layer 508 as part of peel layer 520. See id. at 8:57–63, 9:7–9.
The ’623 patent describes the white layer as imparting “a white
background on a dark substrate.” Id. at 3:31–34. According to one
embodiment, “the white layer 506 of the image transfer sheet 500 is
impregnated with titanium oxide or other white or luminescent pigment.”3
Id. at 8:57–60. In another embodiment, “the white layer 506 and a receiving
layer 508, contacting the white layer 506 are impregnated with titanium
oxide or other white or luminescent pigment.” Id. at 8:60–63. According to
the ’623 patent,
[f]or some embodiments, a white layer 506, 606, such as is
shown in FIGS. 5-6, includes ethylene/methacrylic acid
(E/MAA), with an acid content of 0-30%, and a melt index from
10 to 3500 with a melt index range of 20 to 2300 for some
embodiments. A low density polyethylene with a melt index

3 “Titanium oxide,” “titanium dioxide,” and “TiO2” are synonymous, and
used interchangeably in the prior art, the parties’ papers, and in this
Decision.
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higher than 200 is also suitable for use. Other embodiments of
the white layer include ethylene vinyl acetate copolymer resin,
EVA, with vinyl acetate percentages up to 50%/EVA are
modifiable with an additive such as DuPont Elvax, manufactured
by DuPont de Nemours of Wilmington, Del. These resins have
a Vicat softening point of about 40 degrees to 220 degrees C.,
with a range of 40 degrees to 149 degrees C. usable for some
embodiments.
Id. at 6:8–20.
Referring once again to the embodiment of Figure 5, the ’623 patent
describes an image transfer process. Specifically, the ’623 patent discloses
that “an image is imparted to the polymer component of the peel layer 520
utilizing a top coat image-imparting material such as ink or toner.” Id.
at 9:7–9. The ’623 patent explains that “[t]he image transfer sheet 500 is
applied to the colored base material so that the polymeric component of the
peel layer 520 contacts the colored base” and a source of heat is applied to
the image transfer sheet 500. Id. at 9:18–26. Thus, “[t]he peel layer 520
transfers the image” and “[t]he application of heat to the transfer sheet 500
results in ink or other image-imparting media within the polymeric
component of the peel layer being changed in form to particles encapsulated
by the polymeric substrate.” Id. at 9:28–32. As a result, “[t]he encapsulated
ink particles or encapsulated toner particles and encapsulated titanium oxide
particles are then transferred to the colored base in a mirror image to the ink
image or toner image on the polymeric component of the peel layer 520.”
Id. at 9:36–40. The ’623 patent further explains that
[b]ecause the polymeric component of the peel layer 520
generally has a high melting point, the application of heat, such
as from an iron, does not result in melting of this layer or in a
significant change in viscosity of the overall peel layer 520. The
change in viscosity is confined to the polymeric component that
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actually contacts the ink or toner or is immediately adjacent to
the ink or toner. As a consequence, a mixture of the polymeric
component, titanium oxide or other white or luminescent
pigment, and ink or toner is transferred to the colored base as an
encapsulate whereby the polymeric component encapsulates the
ink or toner or titanium oxide or other white pigment. It is
believed that the image transfer sheet, with the white titanium
oxide or other white or luminescent pigment background is
uniquely capable of both cold peel and hot peel with a very good
performance for both types of peels.
Id. at 9:41–55.
C. Illustrative Claim
Petitioner challenges claims 6–14, and 16 of the ’623 patent. Of the
challenged claims, only claim 6 is an independent claim. Claim 6 is
illustrative and is reproduced below.
6. An image transfer sheet, comprising:
a colored[,] substrate comprising woven, fabric based
material, or paper;
a release layer overlaying the substrate, wherein the
release layer is impregnated with titanium oxide or other white
pigment or luminescent pigment; and
a polymer layer.
Ex. 1002, 12:20–26.
D. Prior Art and Asserted Grounds of Unpatentability
Petitioner contends that claims 6–14 and 16 are unpatentable based on
the following grounds:
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Claims Challenged 35 U.S.C. §4 Reference(s)/Basis
6, 7, 9–14, 16 103 Williams5
6–9, 13, 14, 16 103 Asajima6
6, 10–12, 16 103 DeVries7
6, 7, 9–12, 16 103 Keino8
6, 7, 9–12, 14, 16 103 Oez,9 Takao10
Pet. 5. We instituted trial on all asserted grounds. DI 2, 52–53; SAS, 138
S. Ct. at 1355.
II. ANALYSIS
A. Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’623 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
5 Williams et al., US 6,875,487 B1, issued April 5, 2005 (Ex. 1024,
“Williams”).
6 Asajima et al., US 5,418,207, issued May 23, 1995 (Ex. 1018, “Asajima”).
7 DeVries et al., US 4,058,644, issued November 15, 1977 (Ex. 1016,
“DeVries”).
8 Keino et al., US 4,515,849, issued May 7, 1985 (Ex. 1017, “Keino”).
9 Oez, US 5,655,476, issued Sep. 9, 1997 (Ex. 1020, “Oez”).
10 Takao et al., US 5,753,589, issued May 19, 1998 (Ex. 1019, “Takao”).
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shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness.11 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
To show obviousness, it is not enough to merely show that the prior
art includes separate references covering each separate limitation in a
challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
(Fed. Cir. 2011). “This is so because inventions in most, if not all, instances
rely upon building blocks long since uncovered, and claimed discoveries
almost of necessity will be combinations of what, in some sense, is already
known.” KSR, 550 U.S. at 418–419.
On the other hand, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418; accord In re Translogic

11 The parties have not asserted or otherwise directed our attention to any
objective evidence of nonobviousness.
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Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, Petitioner
cannot satisfy its burden of proving obviousness by employing “mere
conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a
person of ordinary skill in the art would have combined or modified the prior
art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016);
see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366
(Fed. Cir. 2017) (“In determining whether there would have been a
motivation to combine prior art references to arrive at the claimed invention,
it is insufficient to simply conclude the combination would have been
obvious without identifying any reason why a person of skill in the art would
have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751
F.3d 1327, 1352 (Fed. Cir. 2014)).
B. Level of Ordinary Skill in the Art
In the Decision on Institution, we determined that a person of ordinary
skill in the art at the time of the invention of the ’581 patent
would have at least a Bachelor’s degree in Chemistry, Chemical
Engineering, Imaging Technology or Material Science with at
least one year of experience in coating technologies and imaging
technologies, or at least five years of work experience in the field
of coating technologies and imaging technologies.
DI 11 (adopting Patent Owner’s proposed definition).
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For purposes of this Final Written Decision, we maintain the
determination from the Decision on Institution because neither party
disputes that determination and because that level of skill is consistent with
the record. PO Resp. 13; Pet. Reply 3.
C. Claim Construction
In an inter partes review we construe claims “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b), including construing the claim in accordance
with the ordinary and customary meaning of such claim as understood by
one of ordinary skill in the art and the prosecution history pertaining to the
patent.” 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). Furthermore, we expressly construe the claims
only to the extent necessary to resolve the parties’ dispute. See Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (“[W]e 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))).
1. “white layer”12
In the Decision on Institution, we construed the term “white layer” to
mean “a layer comprising a concentration or configuration of pigment
providing a white background for received indicia and which further
comprises a polymer that melts and mixes with another layer or layers

12 Although the term “white layer” is not expressly recited in claim 6 of the
’623 patent, both parties agree that all claims of the ’623 patent require a
white layer that melts and mixes. See, e.g., Pet. 12–13; PO Resp. 13–15, 28,
37, 42, 49.
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during application.” DI 13. Our construction was based on the parties’
agreement that the claims of the ’623 patent require a white layer that melts
and mixes with another layer and the claim construction the district court in
the Arkwright Lawsuit adopted. Ex. 1031, 17 (Arkwright Markman
Order”). The district court in the Delaware Litigation also adopted a similar
construction of “white layer.” Ex. 1045, 6 (Delaware Markman Order). In
the Decision on Institution, we rejected Patent Owner’s attempt to broaden
the interpretation adopted in the Arkwright Lawsuit to include “a polymer
that softens or melts and mixes to some degree with another layer.” Id.
(Patent Owner’s modifications indicated with underlining); Prelim. Resp. 14.
Patent Owner reasserts that “[t]hese additions properly and importantly
clarify ‘melt’ and ‘mix,’ consistent with the district court’s holding, the ‘623
Patent’s disclosure, and Schwendimann’s statements in the Interference.”
PO Resp. 14.
But, Patent Owner states that “the parties’ disputes with respect to the
construction of the ‘white layer’ make no difference to the Board’s
resolution of this matter” (PO Resp. 14–16) and Petitioner asks that we
“adopt the same constructions” as in the Delaware Litigation (Pet. Reply 1–2
(citing Ex. 1045, 9)). Accordingly, we maintain our construction of the term
“white layer.”
2. remaining terms
Petitioner contends that we should construe the term “release layer”
and Patent Owner asks that we construe “image transfer sheet.” Pet. 13; PO
Resp. 15–17. Because resolution of the issues before us does not require
construction of either “release layer” or “image transfer sheet,” we need not
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provide any express constructions for those terms. See Nidec, 868 F.3d
at 1017.
D. Challenges based on Williams (claims 6, 7, 9–14, and 16)
Petitioner contends the subject matter of claims 6, 7, 9–14, and 16
would have been obvious over Williams. Pet. 29. Petitioner directs us to
portions of Williams that purportedly disclose each of the limitations in the
challenged claims. See generally id. Petitioner also relies on the testimony
of Dr. Scott to support its arguments. Id.
1. Williams (Ex. 1024)
Williams is directed to “a heat-setting label sheet that is a polymeric
transfer sheet that can be marked and transferred by the consumer.”
Ex. 1024, code (57). Williams teaches that its transfer sheet may contain a
support, a pressure-sensitive adhesive layer, an adhesion layer, one or more
opaque layers, and one or more image receiving layers. Id. at 3:11–19.
Williams explains that “a white pigment may be used to exhibit opacity
capabilities,” and indicates that the opaque layers “render the image visible
against a dark receptor, and otherwise improves the appearance and
readability of an image.” Id. at 20:2–6, 20:30–32; see also id. at 7:14–15.
(indicating that opaque backgrounds are used “to aid in ink visibility on
various colored receptors”).
Williams also teaches a process for transferring an image that
comprises imaging a heat-setting label sheet, peeling the adhesive layer from
the base sheet, placing the peeled portion of the label sheet onto the receptor
element, and heating the layers. Id. at 2:36–46.
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2. Analysis
Petitioner argues that Williams would have rendered obvious the
subject matter of claims 6, 7, 9–14, and 16 of the ’623 patent. Pet. 29. With
reference to claim 6, Petitioner contends that Williams’s “heat-setting label
sheet which can be imaged, and having images which are capable of being
directly transferred to, for instance, a receiver such as a textile, such as a
shirt or the like,” is the “image transfer sheet” of claim 6. Id. (citing
Ex. 1024, 1:12–15, 2:3–4).13 Petitioner argues that Williams’s heat-setting
label sheet comprises five layers including support 21 (i.e., an image transfer
substrate), opaque layer 24, adhesion layer 23, and pressure sensitive layer
22—which together comprise the “release layer,”—and polymer layer 25
(i.e., an image imparting layer that comprises an indicia). See id. at 29–35
(citing Ex. 1024, 1:12–15, 2:3–6, 3:61–65, 6:33–34, 7:13–15, 12:45–48,
20:2–32, 20:18–41, 21:65–66, 22:7–9, 24:41–56; Ex. 1001 ¶¶ 118–120).
Petitioner contends that Williams’s “release layer,” i.e., the combination of
Williams’s layers 22, 23, and 24, includes a “white layer” that mixes and
melts with adjacent layers because they “are of the same type and therefore
would have the same or similar thermal properties, such as melt and glass
transition temperature ranges, as the materials disclosed in the ‘623 Patent
for corresponding layers.” Id. at 33 (citing Ex. 1001 ¶¶ 127–128 (comparing
polymers of Williams and the ’623 patent)). According to Petitioner, when
heat and pressure are “applied under similar conditions, whatever ‘melting
and mixing’ that may occur in the ‘623 Patent as argued by the Patent

13 Petitioner also supports its Petition by citing to the provisional application,
U.S. Application No. 60/148,562 (Ex. 1025), leading to issued Williams.
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Owner in the Interference will also occur in Williams.” Id. (citing Ex. 1001
¶ 127).
Petitioner argues that Williams’s heat-setting label sheet is useful for
transferring images to textiles, such as a T-shirt, and that the textile may be a
“dark receptor.” Pet. 30 (citing Ex. 1024, 1:12–15, 20:2–32). Petitioner also
explains that Williams describes use of a “release base paper,” and though
the paper is not described as colored, “paper of all colors was clearly
commonly known.” Id. at 31 (citing Ex. 1024, 12:45–48). Therefore, “[i]t
would have been an obvious design choice for a [person of ordinary skill in
the art] to use a ‘colored’ release base paper in Williams.” Id. (citing
Ex. 1001 ¶ 118).
Petitioner also argues that Williams discloses the limitations of 7, 9–
14, and 16 of the ’623 patent. Specifically, Petitioner contends that
Williams discloses a transfer sheet where the polymer layer, comprised of a
polyamide (claims 9, 13, 14) and titanium dioxide or other white pigment
(claims 7). Id. at 34–35 (citing Ex. 1024, 20:30–32, 22:7–9, 22:30–33;
Ex. 1025, 40:17–19, 43:5–8, 44:28–31; Ex. 1001 ¶¶ 131–133, 134–136), 36–
37 (citing Ex. 1024, 22:7–9, 22:30–33; Ex. 1025, 43:5–8, 44:28–31;
Ex. 1001 ¶¶ 146–151). Petitioner further asserts that Williams’s transfer
sheet may be applied to colored fabric (claim 10), for example, a T-shirt
(claims 11 and 12). Id. at 35–36 (citing Ex. 1024, 1:12–15, 20:2–32;
Ex. 1025, 1:8–12, 39–19–21; Ex. 1001 ¶¶ 137–145). And lastly, Petitioner
alleges that Williams includes a release layer having a coating portion and a
white layer portion that includes titanium dioxide (claim 16). Id. at 37–38
(citing Pet. Section 8.1.3; Ex. 1001 ¶¶ 152–154).
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Patent Owner, does not challenge any of Petitioner’s allegations
regarding the teachings of Williams. See generally PO Resp. 19–24; Pet.
Reply 4. Rather, Patent Owner argues only that Williams is not prior art to
the ’623 patent. Id. We have reviewed the evidence and argument of record
and determine that Petitioner establishes, by a preponderance of the
evidence, that Williams discloses or suggests each limitation of claims 6, 7,
9–14, and 16 of the ’623 patent. We address Patent Owner’s argument that
Williams is not prior art below.
Williams claims priority to U.S. Provisional Application No.
60/148,562 (Ex. 1025, the “Williams Provisional Application”), filed on
August 13, 1999. Pet. 15. Petitioner contends that the Williams Provisional
Application supports at least one of the claims in Williams and, therefore, is
prior art to the ’623 patent as of its filing date on August 13, 1999. Id.
Patent Owner does not dispute that Williams is entitled to a priority date of
August 13, 1999. PO Resp. 16 (stating Williams has a priority date of
August 13, 1999). We have reviewed Petitioner’s showing and determine
that the Williams Provisional Application discloses the pertinent limitations
and supports at least claims 1, 51, 53, and 63 of Williams. Ex. 1001 ¶¶ 58–
62. Therefore, Petitioner has shown that Williams is prior art as of August
13, 1999.
In its Response, Patent Owner states that “[c]ontemporary evidence
demonstrates unequivocally that the inventors of the ‘623 Patent invented
and created image transfer sheets meeting all of the limitations of the
Challenged Claims no later than December 16, 1997.” PO Resp. 20
(emphasis added). This evidence consists of two “Formula Books”
(Ex. 2015 and 2016) described as “lab notebooks kept by the inventors to
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document their experimentation and inventions,” the 2013 Schwendimann
Declaration (Ex. 2003), describing and explaining the information contained
in the Formula Books, and the 2021 Nasser Declaration (Ex. 2020),
explaining that the samples in the Formula Books included on or more
polymers. PO Resp. 20–24.
Patent Owner argues that the Formula Books and 2013
Schwendimann Declaration show the inventors began working on a dark
T-shirt transfer product around June 1996, and by July 1999, had made at
least 22 samples and applied them to dark T-shirts. PO Resp. 21 (citing
Ex. 2003 ¶¶ 7–21). Patent Owner contends these samples included each of
the structures (i.e., the image transfer sheets) the challenged claims require.
PO Resp. 21–24.
Petitioner argues that Patent Owner and Ms. Schwendimann’s
“attempt to swear behind Williams fails because she has not corroborated
her testimony, as she must as a matter of law.” Pet. Reply 4. Citing the
Federal Circuit’s decision in Apator Miitors ApS v. Kamstrup A/S, 887
F.3d 1293, 1295 (Fed. Cir. 2018), Petitioner contends that “[i]t is well-
established that when a party seeks to prove conception through an
inventor’s testimony the party must proffer evidence, “in addition to [the
inventor’s] own statements and documents,” corroborating the inventor’s
testimony.” Id. (also citing Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577
(Fed. Cir. 1996); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171–72
(Fed. Cir. 2006); Cooper v. GoldFarb, 154 F.3d 1321, 1330 (Fed. Cir.
1998)).
Petitioner first argues that the Formula Books are unwitnessed,
making them legally insufficient to corroborate Ms. Schwendimann’s
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testimony that she conceived of the physical image transfer article recited in
claim 6 because “an unwitnessed laboratory notebook, alone, cannot
corroborate an inventor’s testimony of conception.” Id. at 6 (quoting
Apator, 887 F.3d at 1297, citing Brown v. Barbacid, 276 F.3d 1327, 1335
(Fed. Cir. 2002); Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566
F.3d 989, 998–99 (Fed. Cir. 2009)).
Petitioner further argues that the laboratory notebooks fail to factually
support Ms. Schwendimann’s testimony. Specifically, Petitioner asserts that
the laboratory notebooks “do not indicate that the white layer in the
described samples ‘melted’ when transferred to a fabric via heat” (id. at 7),
“make no mention of a white layer that ‘mixed’ with another layer” (id.),
and do not “suggest[] the white pigment described as being present in the
samples result[s] in a ‘white background’” (id. at 8). In fact, Petitioner
states that the “evidence demonstrates that the samples did not generate a
white ‘background’ for the image after being transferred” but instead, “the
white layer covered the image, which was barely visible through the white
layer.” Id. at 9 (citing Ex. 1048 ¶¶ 8–9).
Furthermore, Petitioner contends that the laboratory notebooks fail to
corroborate the 2021 Nasser Declaration that the polymer layer of claim 6
was conceived and reduced to practice before Williams’s priority date. Id.
(citing Ex. 2020 ¶ 3). Petitioner states that the laboratory notebooks “do not
reflect any formulations for the inkjet layer” and “[t]herefore, Patent Owner
has failed to offer corroborated evidence that any of the samples, let alone
the December 16, 1997 sample (Ex. 2015, p. 129) included the recited
‘polymer layer.’” Id. at 9–10.
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Lastly, Petitioner asserts that Patent Owner has not established that
“the examples described in the laboratory notebooks ‘worked for their
intended purpose.’” Pet. Reply 10. According to Petitioner, Patent Owner
does not direct our attention to any successful transfer. Id. Further,
Petitioner contends that the record evidence establishes the contrary, that the
samples from 1996–1999 did not work. Id. For example,
Ms. Schwendimann was unable to make any product sales until “well into
the 2000s” (id. at 11 (citing Ex. 1050, 87:12–88:3)), Ms. Schwendimann
testified that “as of August 10, 1999, [Mr. Nasser] ‘tried and tried’ but
‘didn’t come up with anything’ to solve the dark fabric transfer problem”
(id. (citing Ex. 1049, 44:11–24)), and the “litigation ‘experiment’ . . .
“reconstructing one of the samples . . . resulted in a barely visible image”
(id. (citing Ex. 1048 ¶¶ 8–96)).
In its Sur-reply, Patent Owner argues that the Formula Books
corroborate Ms. Schwendimann’s deposition testimony. Sur-reply 3. Patent
Owner explains that even though some test results were “not opaque
enough,” others, in fact, were successful. Id. at 3–4 (citing Ex. 2015,
JS004914–4921). And relying on TransWeb LLC v. 3M Innovative Props.
Co., 812 F.3d 1295, 1301–02 (Fed. Cir. 2016), Patent Owner states that “the
law does not require that the inventor produce corroborating evidence that
describes every element of the invention.” Id. at 4. Patent Owner further
asserts that “unwitnessed lab notebooks can corroborate inventor testimony
so long as there is additional corroborating evidence.” Id. at 5. As this
additional evidence, Patent Owner refers to “a contact report prepared by
Ms. Schwendimann discussing her demonstration of transfer sheets for dark-
colored fabrics to a customer . . . in August 1999,” which “indicates that she
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‘figured out the Dark Fabric Transfer.’” Id. at 6 (citing Ex. 2018, “the
Contact Report”).
After considering the full record developed during trial, we agree with
Petitioner that there is insufficient evidence to support Patent Owner’s
assertion that inventors of the ’623 patent invented the subject matter of the
challenged claims before the August 13, 1999 priority date of Williams.
“It is well established . . . that when a party seeks to prove conception
through an inventor’s testimony the party must proffer evidence, ‘in addition
to [the inventor’s] own statements and documents,’ corroborating the
inventor’s testimony.” Apator, 887 F.3d at 1295 (quoting Mahurkar, 79
F.3d at 1577). Patent Owner attempts to establish an invention date “no later
than December 16, 1997,” based on Ms. Schwendimann’s testimony, the
Formula Books, and the Contact Report. Patent Owner first argues that Ms.
Schwendimann’s testimony, as corroborated by the Formula Books, details
each limitation of the challenged claims. PO Resp. 21–24 (claim charts);
Sur-reply 3. It is undisputed, however, that the Formula Books are
unwitnessed. Sur-reply 5 n.2; Tr. 59:12–60:6. According to the Federal
Circuit, the unwitnessed Formula Books alone cannot corroborate
Ms. Schwendimann’s testimony regarding a purported invention date
between 1996 and 1998. Apator, 887 F.3d at 1297; Brown, 276 F.3d
at 1335; Procter & Gamble, 566 F.3d at 998–99.
Patent Owner appears to argue that prior Federal Circuit cases
restricting the use of unwitnessed laboratory notebooks to corroborate
inventor testimony are inapplicable here. In particular, Patent Owner argues
that the reason behind the corroboration requirement is to “address[] the
concern that a party claiming inventorship might be tempted to describe his
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actions in an unjustifiably self-serving manner in order to obtain a patent or
to maintain an existing patent.” Sur-reply 5 n.2 (quoting Singh v. Brake, 222
F.3d 1362, 1367 (Fed. Cir. 2000)). According to Patent Owner, this is not a
concern here because the Formula Books were recorded by “numerous
individuals other than Ms. Schwendimann who were working at her
direction” and, therefore, the unwitnessed Formula Books “bear hallmarks of
reliability to the same extent as witnessed lab notebooks do.” Id.
Patent Owner, however, offers no authority to support the argument
that unwitnessed lab notebooks, purportedly drafted by persons working at
the direction of an inventor and not the inventor herself, “bear hallmarks of
reliability to the same extent as witnessed lab notebooks do.” Id. Indeed,
the laboratory notebooks in the only case Patent Owner relies upon to
support its argument were eventually witnessed. Singh, 222 F.3d at 1369
(noting the lab notebooks in question were witnessed several years after they
were made). Here, it is undisputed that the lab notebooks were never
witnessed. Further, the only testimony Patent Owner directs us to on this
subject is Ms. Schwendimann’s deposition testimony “guess[ing]” that her
co-inventor, Mr. Nasser, wrote one specific entry in a Formula Book.
Ex. 1042, 94:20–24. This testimony does not support Patent Owner’s
argument we should consider all of the entries in both Formula Books
without concern that “a party claiming inventorship might be tempted to
describe his actions in an unjustifiably self-serving manner in order to obtain
a patent or to maintain an existing patent.” Singh, 222 F.3d at 1367.
This is especially true considering Patent Owner describes the
Formula Books as “lab notebooks kept by the inventors to document their
experiments and inventions.” PO Resp. 20 (emphasis added). Likewise, in
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her January 2021 Declaration, Ms. Schwendimann testifies that “we keep a
‘Formula Book’ in which we record the formulas we make in our facilities.”
Ex. 2014 ¶ 3 (emphasis added). Ms. Schwendimann provided similar
testimony in her 2013 Declaration. Ex. 2003 ¶ 2 (“As part of our
development efforts, we keep a ‘Formula Book’ in which we record the
formulas we make in our facilities.” (emphasis added)). In contrast to Patent
Owner’s representation, these statements suggest some connection between
Ms. Schwendimann herself and the information in the Formula Books,
which undermines the argument that there “is not a concern here” that “a
party claiming inventorship might be tempted to describe his actions in an
unjustifiably self-serving manner in order to obtain a patent or to maintain
an existing patent.” Singh, 222 F.3d at 1367; See Sur-reply 23.
Nevertheless in its Sur-reply, Patent Owner asserts that “[t]he law . . .
holds that unwitnessed lab notebooks can corroborate inventor testimony
so long as there is additional corroborating evidence,” and contends that the
Contact Report constitutes “additional corroborating evidence” such that the
unwitnessed lab notebooks can legally corroborate Ms. Schwendimann’s
testimony. Sur-reply 5 (citing Singh, 222 F.3d at 1369).
We disagree. To the extent the Contact Report corroborates anything,
it would be an invention date of August 10, 1999. Ex. 2018. There is no
indication of an earlier date of invention in the Contact Report. Ex. 2018.
Thus, the Contact Report does not constitute “additional corroborating
evidence” of an invention date “no later than December 16, 1997.”
Furthermore, the Contact Report is another example of an inventor’s “own
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statements or documents.”14 Apator, 887 F.3d at 1295. For example,
Ms. Schwendimann testifies that she personally entered the notes that appear
in the Contact Report. Ex. 1042, 127:12–14; Ex. 2028 ¶ 8. According to the
Federal Circuit’s holding in Apator, Patent Owner cannot rely on the
Contact Report to corroborate Ms. Schwendimann’s testimony. Apator, 887
F.3d at 1295; see also id. at 1297 (stating “[i]t would be strange indeed to
say that [an inventor], who filed the . . . affidavit that needs corroborating,
can by his own testimony provide that corroboration.” Id. at 1297 (quoting
In re NTP, Inc., 654 F.3d 1279, 1292 (Fed. Cir. 2011))). Therefore, the
unwitnessed Formula Books remain the only evidence purportedly
corroborating Ms. Schwendimann’s deposition testimony regarding a pre-
December 1997 invention date. And, as we explained above, the
unwitnessed Formula Books are insufficient to corroborate
Ms. Schwendimann’s testimony. Apator, 887 F.3d at 1297; Brown, 276
F.3d at 1335; Procter & Gamble, 566 F.3d at 998–99.
Thus, contrary to Patent Owner’s contentions otherwise, the facts in
this case emphasize the need for evidence corroborating
Ms. Schwendimann’s testimony. Mahurkar, 79 F.3d at 1577 (stating that

14 Patent Owner appears to place some significance on the fact that the
company NuCoat “maintained” the Contact Report. PO Resp. 40. To the
extent Patent Owner is arguing that the Contact Report is not
Ms. Schwendimann’s own document because it is “maintained” by NuCoat,
we do not consider such an argument to be persuasive. First, it is not clear
what Patent Owner means by “maintained.” Second, Patent Owner has not
presented any authority to support a position that the relevant inquiry into
whether a document is an inventor’s own document is based on who
“maintains” the document after it has been prepared, as opposed to the
individual who prepared the document itself, including providing the
relevant substantive information in the document. See PO Resp. 40.
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the corroboration “requirement arose out of a concern that inventors
testifying in patent infringement cases would be tempted to remember facts
favorable to their case by the lure of protecting their patent or defeating
another's patent”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171–72
(Fed. Cir. 2006) (“Even the most credible inventor testimony is a
fortiori required to be corroborated by independent evidence.”).
In the absence of sufficient evidence corroborating
Ms. Schwendimann’s testimony regarding the alleged invention date of the
subject matter recited in claim 6, we find there is insufficient evidence to
support Patent Owner’s assertion that inventors of the ’623 patent invented
the subject matter of the challenged claims before the August 13, 1999
priority date of Williams. We thus consider Williams to be prior art to the
’623 patent.
As noted above, it is undisputed that Williams discloses or suggests
all of the limitations in independent claim 6, and claims 7, 9–14, and 16
which depend therefrom. We have considered the evidence and arguments
presented in the Petition, and agree with Petitioner that Williams discloses or
suggests each limitation of claims 6–7, 9–14, and 16. As a result, we find
Petitioner has established, by a preponderance of the evidence, that Williams
renders the subject matter of claims 6, 7, 9–14, and 16 of the ’623 patent
obvious in view of Williams.
E. Challenges based on Asajima (claims 6 and 8)
Petitioner contends claims 6–9, 13, 14, and 16 would have been
obvious over Asajima. Pet. 38. Petitioner directs us to portions of Asajima
that purportedly disclose each of the limitations in the challenged claims. Id.
at 38–47. Petitioner also relies on the testimony of Dr. Scott to support its
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arguments. See id. We consider below Petitioner’s arguments as to claims 6
and 8 only. We do not address claims 7, 9, 13, 14, and 16 because we have
already determined that Petitioner has shown that these claims would have
been obvious over Williams.
1. Asajima (Ex. 1018)
Asajima “relates to a thermal transfer image-receiving sheet and a
process for producing the same.” Ex. 1018, 1:6–8. An object of Asajima’s
invention “is to . . . provide a thermal transfer image-receiving sheet which
enables a high-quality and high-density image free from dropout and
omission to be formed with a good thermal energy efficiency even on a
rough paper not having a smooth surface.” Id. at 2:10–15.
Asajima’s first embodiment is depicted below in Figure 1.

Figure 1 “is a cross-sectional view of the thermal transfer image-receiving
sheet according to [Asajima’s] invention.” Id. at 4:5–7. Figure 1 depicts a
thermal transfer image-receiving sheet that includes “a resin layer A
comprising at least dye-receiving layer 2 and including a hollow capsule
having a volumetric hollowness of 50% or more . . . on a substrate sheet 1,”
which “is not particularly limited” and may be, for example, “plain paper,
wood free paper, tracing paper and plastic films.” Id. at 4:23–30. Asajima
also describes
the thermal transfer image-receiving sheet . . . can be formed also
by a method which comprises forming a transferable resin layer
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including the above-described receiving layer on a releasable
sheet, such as a polyester film, to prepare a transfer sheet and
using the transfer sheet to transfer the transferable resin layer
including the receiving layer onto the above-described substrate
sheet by any heat pressing means capable of heating the sheet to
a temperature at which the receiving layer or adhesive layer is
activated, such as a hot stamper for a transfer foil, a hot roll or a
hot laminator. When the adhesive layer comprises a pressure
sensitive agent, heating is not essential during transfer.
Id. at 7:51–64. According to Asajima, “[t]he receiving layer 2 can be
formed by coating one surface of the substrate sheet with a suitable organic
solvent solution or organic solvent or water dispersion of a mixture of the
above-described resin with necessary additives such as a release agent.” Id.
at 5:16–20.
Asajima explains that resin layer A “may consist of the receiving
layer alone” or, as shown in Figure 1, may further include “an intermediate
layer or a barrier layer (hereinafter referred to simply as ‘intermediate
layer 3’) and/or an adhesive layer or a pressure sensitive adhesive layer
(hereinafter referred to simply as ‘adhesive layer 4’).” Id. at 4:35–43. “The
intermediate layer 3 can be formed by coating a solution of a resin having a
good film forming property” and “may comprise a resin having an improved
strength.” Id. at 5:52–60.
Asajima further states that “the incorporation of a filler, a white
pigment, a fluorescent brightener, etc. in at least one of the above-described
layers can provide a receiving layer having an excellent whiteness
independently of the ground color of the transfer material.” Id. at 7:24–28.
Asajima’s second embodiment is depicted below in Figure 2.
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Figure 2 “is a cross-sectional view of the receiving layer transfer sheet
according to [Asajima’s] invention.” Id. at 4:8–9. Figure 2 depicts a
receiving transfer sheet that includes
a transferable resin layer A provided on one surface of a substrate
sheet 11, and is characterized in that the transferable resin layer
A comprises a dye-receiving layer 12 and a cell-containing layer
13 and the cell-containing layer 13 contains a cell and/or a
foaming agent capable of increasing the thickness of the transfer-
able resin layer 18 by a factor of 1.1 to 4 upon being heated.
Id. at 8:1–9.
Asajima discloses that “[i]f necessary, the resin layer may further
comprise an intermediate layer 14 and an adhesive layer 15,” and also “may
comprise a heat-resistant lubricating layer 16.” Id. at 8:10–13.
Asajima explains that “[t]here is no particular limitation on the
transfer material onto which a transfer layer including a receiving layer is
transferred by using the above-described receiving layer transfer sheet, and
examples thereof include plain paper, wood free paper, tracing paper and
plastic films.” Id. at 11:14–19. Further, “[t]he transfer layer can be
transferred by any heat pressing means capable of heating the sheet to a
temperature at which the receiving layer or adhesive layer is activated, such
as a hot stamper for a transfer foil or a hot roll.” Id. at 11:24–28.
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Asajima describes first transferring the thermal transfer image-
receiving sheet onto plain paper by means of a hot roll and then printing an
image or indicia on the surface of the receiving layer with a thermal head.
See, e.g., id. at 21:12–23.
2. Analysis of Claims 6 and 8
Claim 8 depends from claim 6 and additionally requires that the
polymer layer of the image transfer sheet comprises polypropylene.
Ex. 1002, 12:30–31.
Petitioner argues that Asajima would have rendered claim 6 of the
’623 patent obvious. Pet. 38. Petitioner contends that Asajima’s “thermal
transfer image-receiving sheet” is the “image transfer sheet” the ’623 patent
recites. Id. (citing Ex. 1018, 1:6–12; Ex. 1001 ¶ 156). Petitioner argues that
“Asajima’s thermal transfer image-receiving sheet comprises an improved
resin layer A, which includes (i) a dye-receiving layer 2, (ii) intermediate
layer 3, and (iii) adhesive layer 4.” See id. (citing Ex. 1018, 4:35–45).
According to Petitioner, Asajima explains that resin layer A can be
formed on a “releasable sheet,” or substrate, and then used to transfer the
thermal transfer image-receiving sheet onto a permanent or final substrate.
Id. at 38–39 (citing Ex. 1018, 7:51–62). Though Asajima exemplifies use of
a polyester film as the releasable sheet, Petitioner states that “it was common
knowledge to a [person of ordinary skill in the art] that silicone (or other
releasing agent)-coated paper was a well-known ‘releasable sheet,’
essentially interchangeable with the exemplary ‘polyester film.” Id. at 39.
Petitioner asserts that the releasable sheet may use silicone “to form a
‘peeling layer’ on a paper substrate.” Id. (citing Ex. 1018, 8:34–39).
Petitioner also explains that even though Asajima does not describe its
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releasable sheet as either colored or non-colored, use of a colored releasable
sheet would have been an obvious design choice. Id. at 40 (citing Ex. 1001
¶ 159).
Petitioner contends that the claimed “release layer” is the layer
overlaying the substrate and includes a white pigment. Id. at 41. According
to Petitioner, Asajima teaches that a white pigment may be included in any
of its layers, including “the releasable sheet, the adhesive layer 4, the
intermediate layer 3 and/or the dye-receiving layer 2.” Id. (citing Ex. 1018,
7:24–28). Petitioner argues that Asajima includes a white pigment “to
improve the whiteness of the substrate receiving the image, and therefore
provide a white background for the image.” Id. at 42 (citing Ex. 1018,
10:53–57). Petitioner further contends that the “white layer”—i.e., the
portion of the release layer having a white pigment—mixes and melts with
adjacent layers because they “are of the same type and therefore would have
the same or similar thermal properties, such as melt and glass transition
temperature ranges, as the materials disclosed in the ‘623 Patent for
corresponding layers.” Id. (citing Ex. 1001 ¶¶ 162–170 (comparing
polymers of Asajima and the ’623 patent)). According to Petitioner, when
heat and pressure are “applied under similar conditions, whatever ‘melting
and mixing’ that may occur in the ‘623 Patent as argued by the Patent
Owner in the Interference will also occur in Asajima.” Id. (citing Ex. 1001
¶ 127).
With respect to the additional limitation of claim 8, Petitioner asserts
that “Asajima teaches that the dye-receiving layer 2, 13 may include
‘polypropylene.’” Id. at 45 (citing Ex. 1018, 4:49–50, 8:56–57, 12:40–41,
16:58–59; Ex. 1001 ¶¶ 179–181).
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Patent Owner, focuses on Petitioner’s purported failure to show that
Asajima discloses “an image transfer sheet” or a “white layer” that melts and
mixes with another layer. PO Resp. 34–40. Because we determine
Petitioner has failed to establish that Asajima suggests a white layer that
melts and mixes with another layer, we confine our discussion below to
addressing that issue.
In the Decision on Institution, we expressed “some doubt,” based on
Petitioner’s argument and evidence that Asajima teaches a white layer that
mixes and melts with other layers as the claims 6 and 8 require. DI 29.
Specifically, we noted that “Petitioner does not direct our attention to any
teaching in Asajima that any layer . . . melts and mixes with any other
layer,” and instead, relies heavily on its expert’s testimony that “‘to the
extent melting and mixing occurs, as asserted by the inventor for the ’623
patent, . . . the layers described in Asajima will behave in the same manner
(i.e., melt and mix)’ when the same heat and pressure is applied.” Id. at 28–
29.
Petitioner asserts that the layers of Asajima would melt and mix in the
same manner as those in the ’623 patent. Pet. Reply 15. According to
Petitioner, “[t]hat is because, to the extent ‘melt’ and ‘mix’ are disclosed in
the ‘623 patent at all, it is only through the same type of inferences drawn
from the nature of the disclosed materials and the prescribed application
temperatures” as “[t]he ’623 patent itself is devoid of any explicit statement
that its white layer ‘melts.’” Id. Therefore, Petitioner reasons that a person
of ordinary skill in the art examining the ’623 patent “is left to infer that the
white layer and adjacent layers may ‘melt’ and ‘mix’ by examining the melt
temperatures/indexes for the various disclosed materials and comparing
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them to the prescribed application temperature ranges.” Id. at 16. As a
result, according to Petitioner, “Asajima’s disclosure that the white layer
‘melts’ is at least as robust as the ’623 patent’s disclosure.” Id.
Having considered the full trial record, we determine that Petitioner
has not carried its burden of showing, by a preponderance of the evidence,
that the white layer of Asajima melts and mixes as the claim 6 of the ’623
patent, and its dependent claims, require. As Petitioner admits, Asajima fails
to expressly describe melting. Pet. Reply 15. And when Asajima discusses
applying heat, it does so in the context of “activating” either the adhesive
layer or the foaming agent of the receiving layer. See, e.g., Ex. 1018, 2:50–
67, 6:34–36, 7:56–61, 8:5–9, 9:66–68, 11:24–28, 11:44–46. Asajima further
explains that “[w]hen the adhesive layer comprises a pressure sensitive
agent, heating is not essential during transfer.” Id. at 7:62–64. Unlike other
prior art references on which Petitioner relies in other asserted grounds to
suggest melting, Asajima does not even describe or suggest the process of
melting. Compare Ex. 1018, with Ex. 1024, 7:8 (“the adhesion layer melts
and flows”) and Ex. 1016, Abstract, 3:8–13, 3:25, 4:23–26, 6:24–30, 7:12–
16, claims 1, 14, and 17 (each explaining that the polymeric coating “softens
and penetrates”). Petitioner does not address the “doubt” we expressed in
the Decision on Institution by directing our attention to any passage in
Asajima that could suggest “melting” occurs, and our independent review of
Asajima reveals none. Petitioner has thus failed to carry its burden of
establishing that Asajima teaches a white layer that mixes and melts with
other layers as claimed. Accordingly, Petitioner has not shown, by a
preponderance of the evidence, that claims 6 and 8 of the ’623 patent are
unpatentable as obvious over Asajima.
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F. Remaining Grounds of Unpatentability
Having determined that Petitioner establishes, by a preponderance of
the evidence, that claims 6, 7, 9–14, and 16 are unpatentable as obvious over
Williams, we do not address Petitioner’s additional grounds challenging
claims 6, 7, 9–14, and 16. See SAS, 138 S. Ct. at1359 (holding a petitioner
“is entitled to a final written decision addressing all of the claims it has
challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984,
990 (Fed. Cir. 2020) (nonprecedential) (“We agree that the Board need not
address [alternative grounds] that are not necessary to the resolution of the
proceeding.”).
III. CONCLUSION15
For the foregoing reasons, we conclude that Petitioner has satisfied its
burden of demonstrating, by a preponderance of the evidence, that claims 6,
7, 9–14, and 16 of the ’623 patent are unpatentable. We also conclude that
Petitioner has not satisfied its burden of demonstrating, by a preponderance
of evidence, that claim 8 of the ’623 patent is unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby:

15 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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ORDERED that Petitioner has established by a preponderance of the
evidence that claims 6–7, 9–14, and 16 are unpatentable;
FURTHER ORDERED that Petitioner has not established by a
preponderance of evidence that claim 8 is unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
In summary:
Claims 35 U.S.C. § Reference(s)/ Basis16
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
6, 7, 9–14,
16
§ 103 Williams 6, 7, 9–14, 16
6–9, 13, 14,
16
§ 103 Asajima 6, 8
6, 10–12, 16 § 103 DeVries
6, 7, 9–12,
16
§ 103 Keino
6, 7, 9–12,
14, 16
§ 103 Oez, Takao
Overall
Outcome
6, 7, 9–14, 16 8

16 In view of our determination that claims 6, 7, 9–14, and 16 are
unpatentable as obvious in view of Williams, we do not reach the ground
based on Asajima with respect to claims 7, 9, 13, 14, and 16 or grounds for
which the last two columns of this table are blank. See Sections II.E. and
II.F.
IPR2020-00633
Patent RE41,623 E

36
FOR PETITIONER:
Glenn E. Forbis (Reg. No. 40,610)
James B. Luchsinger (Reg. No. 73,705)
Jewell Briggs (Reg. No. 77,298)
Mathew L. Cutler (Reg. No. 43,574)
HARNESS, DICKEY & PIERCE PLC

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mcutler@hdp.com
bluchsinger@hdp.com
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FOR PATENT OWNER:
Devan V. Padmanabhan (Reg. No. 38,262)
Michelle E. Dawson (Reg. No. 62,319)
Britta S. Loftus (admitted pro hac vice)
PADMANABHAN & DAWSON, PLLC

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michelle@paddalawgroup.com
britta@paddalawgroup.com