Jodi Schwendimann

Patent Trials and Appeals Board

Nov 1, 2021

IPR2020-00915 (P.T.A.B. Nov. 1, 2021)

Trials@uspto.gov Paper 29
571-272-7822 Date: November 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NEENAH, INC.,
Petitioner,
v.
JODI A. SCHWENDIMANN,
Patent Owner.

IPR2020-00915
Patent 7,766,475 B2

Before JEFFREY W. ABRAHAM, MICHELLE N. ANKENBRAND, and
AVELYN M. ROSS, Administrative Patent Judges.
ANKENBRAND, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

IPR2020-00915
Patent 7,766,475 B2
2
I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1–21 (collectively, “the challenged claims”) of
U.S. Patent No. 7,766,475 B2 (“the ’475 patent,” Ex. 1005). We have
jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
determine that Petitioner demonstrates, by a preponderance of the evidence,
that the challenged claims are unpatentable.
Procedural History
Neenah, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
an inter partes review under 35 U.S.C. § 311. Jodi A. Schwendimann
(“Patent Owner”) filed a Preliminary Response. Paper 8. On November 5,
2020, we instituted an inter partes review of the challenged claims. Paper 9
(“Institution Decision” or “DI”).
Following institution, Patent Owner filed a Response (Paper 13,
“Resp.”), Petitioner filed a Reply (Paper 16, “Reply”), and Patent Owner
filed a Sur-reply (Paper 23, “Sur-reply”).
Petitioner relies on the Declaration of Dr. Robert A. Wanat
(Ex. 1020), and submitted a supplemental Declaration of Dr. Wanat
(Ex. 1062) with the Reply. Patent Owner relies on the Declaration of
Dr. Christopher Ellison (Ex. 2011). Petitioner took cross-examination
testimony of Dr. Ellison via deposition and filed the transcript (Ex. 1063).
We heard oral argument on July 12, 2021, and the record includes a
transcript of the argument. Paper 28 (“Tr.”).
Related Matters
The parties identify the following lawsuits involving the ’475 patent:
Jodi A. Schwendimann v. Neenah, Inc., Case No. 1:19-cv-00361-LPS
IPR2020-00915
Patent 7,766,475 B2
3
(D. Del.) (“Delaware Lawsuit”); Jodi A. Schwendimann v. Arkwright
Advanced Coating, Inc., Case No. 0:11-cv-00820-JRT-HB (D. Minn.)
(“Arkwright Lawsuit”); Jodi A. Schwendimann v. Stahls’ Inc., Case No.
2:19-cv-10525-LVP-MKM (E.D. Mich.); and Jodi A. Schwendimann et al. v.
Siser North America, Inc., Case No. 1:19-cv-00362-LPS (D. Del.). Pet. 1–2;
Paper 4, 2.
The parties also identify the following proceedings challenging the
’475 patent and related patents: IPR2020-00628, IPR2020-00633, and
IPR2020-00641, challenging U.S. Patent No. RE 41,623 (“the RE ’623
patent”); IPR2020-00629 and IPR2020-00635, challenging U.S. Patent No.
7,754,042 (“the ’042 patent”); IPR2020-00634, IPR2020-00644, and
IPR2020-00645, challenging U.S. Patent No. 7,749,581 (“the ’581 patent”);
IPR2020-00636 and IPR2020-001121, challenging U.S. Patent No.
7,771,554 (“the ’554 patent”); and IPR2020-01122, challenging the ’475
patent. Pet. 2; Paper 4, 2. We instituted review in all of the proceedings
except IPR2020-00636, IPR2020-00645, and IPR2020-01121.
On September 10, 2021, we entered final written decisions in
IPR2020-00629, IPR2020-00634, IPR2020-00635, and IPR2020-00644
determining all challenged claims of the ’042 patent and the ’581 patent
unpatentable. IPR2020-00629, Paper 39; IPR2020-00634, Paper 39;
IPR2020-00635, Paper 46; IPR2020-00644, Paper 35; IPR2020-00644,
Paper 36. On October 1, 2021, we entered final written decisions in
IPR2020-00628 determining all challenged claims of the RE ’623 patent
unpatentable, and in IPR2020-00633 and IPR2020-00641 determining some
challenged claims of the RE ’623 patent unpatentable. IPR2020-00628,
Paper 29; IPR2020-00633, Paper 40; IPR2020-00641, Paper 42.
IPR2020-00915
Patent 7,766,475 B2
4
In addition, Petitioner identifies several interference proceedings
involving the ’475 patent that have concluded—Interference Nos. 105,961,
105,964, and 105,966. Pet. 9–10.
A. The ’475 Patent (Ex. 1005)
The ’475 patent, titled “Image Transfer on a Colored Base,” issued on
August 3, 2010. Ex. 1005, [45], [54]. The ’475 patent relates to an image
transfer sheet comprising a release layer and a polymer layer where one or
more of the release and polymer layers comprise titanium oxide or other
white pigments. Id. at Abstract.
The written description explains that conventional image transfer
processes used 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 3:37–50.
According to the ’475 patent, the conventional two-step process required
careful alignment of an image with the white background, was “exceedingly
time-consuming,” and produced significant waste of base and image transfer
materials. Id. at 3:51–57. To address that issue, the ’475 patent discloses a
method that applies the white background, i.e., a “white layer,” and image in
a single step. Id. at 3:10–21.
The ’475 patent describes several embodiments of, and methods for
making, an image transfer sheet. One embodiment of the transfer sheet is
depicted below in Figure 5.
IPR2020-00915
Patent 7,766,475 B2
5

Figure 5 illustrates “a cross-sectional view of one . . . embodiment of the
image transfer device of the present invention.” Id. at 2:41–42. “[I]mage
transfer sheet 500 . . . is comprised of a substrate layer 502 [and] a release
layer 504, comprising a silicone coating 505 and a white layer 506.” Id.
at 8:45–47. Figure 5 also depicts white layer 506 and receiving layer 508 as
part of peel layer 520. See id. at 8:53–56, 9:1–3.
The ’475 patent describes the white layer as imparting “a white
background on a dark substrate.” Id. at 3:35–36. 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.”
Id. at 8:51–54. 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 8:54–57.
Referring again to the Figure 5 embodiment, the ’475 patent also
describes an image transfer process. Specifically, the ’475 patent discloses
“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 9:1–3. “[I]mage 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.
IPR2020-00915
Patent 7,766,475 B2
6
at 9:11–19. 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 9:19–25. 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 9:28–32. The ’475
patent further explains:
Because 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
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 9:33–48.
B. Illustrative Claims
Petitioner challenges claims 1–21 of the ’475 patent. Of the
challenged claims, claims 1, 13, and 19 are independent. Claims 1 and 19
are illustrative and are reproduced below.
1. An ink-jet transfer article, comprising:
a substrate member including a substrate surface;
IPR2020-00915
Patent 7,766,475 B2
7
an opaque first layer overlaying the substrate surface, the
opaque first layer including polyurethane and a white or
luminescent pigment; and
a second layer overlaying the opaque first layer and
configured to receive indicia, the second layer including
polyurethane and a polymeric material.
Ex. 1005, 11:34–41.
19. A method of transferring an image to a dark-colored or
black receiving member, comprising:
providing an ink-jet transfer article, comprising
a substrate member including a substrate surface;
an opaque first layer overlaying the substrate surface, the
opaque first layer including polyurethane and a white or
luminescent pigment; and
a second layer overlaying the opaque first layer and
configured to receive indicia printed using an ink-jet printer,
the second layer including polyurethane and a polymeric
material;
wherein the substrate member is peeled away from the opaque
first layer and the second layer;
wherein the opaque first layer and the second layer are applied
to the dark-colored or black receiving member such that
received indicia face upwards;
wherein the substrate layer, when peeled, or an overlay
release paper is positioned over the second layer and the
opaque first layer; and
wherein heat is applied to one of the substrate layer or the
overlay release paper, the second layer, and the opaque first
layer so that received indicia and a substantially white
background for received indicia, provided by the opaque first
layer, are transferred to the colored or black receiving
member at substantially the same time.
Id. at 12:42–67.
IPR2020-00915
Patent 7,766,475 B2
8
C. Asserted Unpatentability Challenges
We instituted an inter partes review of the challenged claims on the
following grounds of unpatentability:
Claims Challenged 35 U.S.C. §1 References/Basis
1–21 103 Oez-US,2 Meyer3
1–21 103 Oez-PCT,4 Oez-US
1–21 103 Kronzer,5 Oez-US
II. ANALYSIS
A. Legal Standards
To prevail in its challenge, Petitioner must demonstrate by a
preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d) (2019). A claim is unpatentable under 35
U.S.C. § 103(a) if the differences between the claimed subject matter and the
prior art are such that the subject matter, as a whole, would have been
obvious at the time of the invention to a person having ordinary skill in the
art. 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

1 Because the claims at issue have an effective filing date before March 16,
2013, the effective date of the applicable provisions of the Leahy Smith
America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), we
apply the pre-AIA version of 35 U.S.C. § 103 in this decision.
2 US 5,665,476, issued Sep. 9, 1997 (Ex. 1013).
3 US 3,359,127, issued May 9, 1966 (Ex. 1019).
4 WO 97/41489, published Nov. 6, 1997 (Ex. 1014). References to
Oez-PCT will be to Exhibit 1016, which is an English-language translation
of Oez-PCT with line numbers. Pet. 4.
5 US 5,798,179, issued Aug. 25, 1998 (Ex. 1018).
IPR2020-00915
Patent 7,766,475 B2
9
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) objective evidence of nonobviousness, i.e., secondary
considerations.6 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Subsumed within the Graham factors is the requirement that the skilled
artisan would have had a reasonable expectation of success in combining the
prior art references to achieve the claimed invention. Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). “Obviousness does not require
absolute predictability of success. . . . [A]ll that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir.
1988).
Moreover, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id.
at 417.
B. Level of Ordinary Skill in the Art
In the Institution Decision, we determined that a person of ordinary
skill in the art at the time of the invention of the ’475 patent would have had
“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”
because that description was consistent with the level of skill reflected in the
prior art. DI 8 (adopting Dr. Ellison’s description of the level of ordinary

6 The record does not contain evidence or argument regarding objective
evidence of nonobviousness.
IPR2020-00915
Patent 7,766,475 B2
10
skill in the art). For purposes of this Final Written Decision, we maintain
our determination from the Institution Decision because neither party
disputes that determination and that level of ordinary skill is consistent with
the record. See Resp. 15; see generally Reply.
C. Claim Construction
In an inter partes review, we construe claim terms according to the
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under that standard, we
construe claims “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).
Furthermore, we expressly construe the claims only to the extent necessary
to determine whether to institute inter partes review. 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))).
For purposes of this decision, the claim term “white layer” and the order of
method steps merit discussion.
1. White layer
In the Institution Decision, we determined that each of the claims in
the ’475 patent requires a “white layer” that melts and mixes with another
layer or layers during application. DI 10–11. Our construction was based
the parties’ agreement that the claims of the ’475 patent require a white layer
that melts and mixes with another layer, and on the claim construction of
“white layer” that the district court in the Arkwright Lawsuit adopted.
Ex. 1022, 17 (Arkwright Lawsuit Markman Order). In the Institution
IPR2020-00915
Patent 7,766,475 B2
11
Decision, we rejected Patent Owner’s attempt to modify the interpretation
adopted in the Arkwright Lawsuit to include “a polymer that softens or melts
and mixes to some degree with another layer.” DI 10 (Patent Owner’s
modifications underlined).
In its Response, Patent Owner again requests that we adopt a
construction of “white layer” that differs from the construction adopted in
the Arkwright Lawsuit and in our Institution Decision. Specifically, Patent
Owner’s proposed construction includes “a layer comprising a concentration
or configuration of pigment providing a white background for received
indicia and which further comprises a polymer that softens or melts, such
that it mixes with another layer or layers during application, without the
resulting composition needing to be substantially uniform.” Resp. 16–17.
(Patent Owner’s modifications underlined).
Petitioner contends that we should again reject Patent Owner’s
attempt to rewrite the construction of “white layer” because it is “completely
at odds” with the construction in both the Arkwright Lawsuit and the
Delaware Lawsuit, which requires actual melting, not just softening, and
construes “mix” to have its plain and ordinary meaning. Reply 2 (citing
Ex. 1022, 8–18; Ex. 1066, 6, 8–9).
We agree, and decline to adopt Patent Owner’s construction that
departs from the construction in the Arkwright Lawsuit and the Delaware
Lawsuit. Ex. 1022, 17; Ex. 1066, 6. Accordingly, for purposes of this Final
Written Decision, we maintain our construction of the term “white layer”
from the Institution Decision. We note, however, that 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.”
Resp. 17; Tr. 13:21–14:3; 53:19–21.
IPR2020-00915
Patent 7,766,475 B2
12
2. Order of steps
Claim 19 of the ’475 patent recites a method that includes several
steps. Ex. 1005, 12:42–67. In the Institution Decision, we found that it was
not necessary to determine the order of steps in claim 19 to resolve the
parties’ dispute. DI 11. Patent Owner argues that the order of the method
steps, i.e., “providing an ink-jet transfer article,” “wherein the substrate
member is peeled away,” “wherein the opaque first layer and the second
layer are applied to the dark-colored or black receiving member,” and
“wherein heat is applied,” is sequential. Resp. 18 (citing Pet. 74). Patent
Owner further asserts that “Petitioner acknowledges there is a ‘sequential
order recited in claim 19.’” Id. (quoting Pet. 74). Petitioner does not
provide any express argument about the order of steps. Although we agree
with Patent Owner that Petitioner’s arguments at least imply that claim 19
requires a sequential order, as in the DI, we conclude that it is not necessary
to determine whether the order of steps must be sequential to resolve the
parties’ dispute because Petitioner shows that the art teaches the steps in the
order claim 19 recites. Nidec, 868 F.3d at 1017; see infra § II.D.4.
D. Obviousness over Kronzer and Oez-US
Petitioner contends that the subject matter of claims 1–21 would have
been obvious over Kronzer and Oez-US. Pet. 60. Petitioner directs us to
portions of Kronzer and Oez-US that purportedly disclose all the limitations
in the challenged claims. Id. at 62–76. Petitioner also relies on Dr. Wanat’s
testimony to support its arguments. See id. We provide a brief summary of
Kronzer and Oez-US before discussing the parties’ arguments.
1. Kronzer (Ex. 1018)
Kronzer relates to a printable heat transfer paper having cold release
properties to permit the removal of the carrier or base sheet after it has
IPR2020-00915
Patent 7,766,475 B2
13
cooled. Ex. 1018, Abstract, 2:25–30. According to Kronzer, the heat
transfer paper includes a flexible first layer, or base sheet, that “ha[s]
sufficient strength for handling, coating, sheeting, and . . . for removal after
transferring an image.” Id. at 4:15–26. The heat transfer paper includes a
second layer, or “release layer,” disposed on the base sheet and composed of
a thermoplastic polymer having essentially no tack at transfer temperatures.
Id. at 5:23–45. A third layer, overlaying the second layer, includes a
thermoplastic polymer that melts in a range of from about 65° C to about
180° C. Id. at 5:46–48. According to Kronzer, “[t]he third layer functions
as a transfer coating to improve the adhesion of subsequent layers in order to
prevent premature delamination of the heat transfer material.” Id. at 5:48–
51. A fourth layer overlays the third layer to provide a layer on which an ink
jet printer places an image. Id. at 7:3–6.
2. Oez-US
Oez-US “relates to a transfer paper and to a process for transferring
photocopies to textiles, such as, in particular, T-shirts.” Ex. 1013, 1:6–8.
Oez-US describes “a transfer paper which has, as the coating of plastic, at
least: a polyurethane which can be cross-linked under the action of heat by a
melamine-formaldehyde resin esterified with methanol, mixed with an
acrylic acid ester/acrylic acid copolymer, the latter being a thickener.” Id.
at 1:37–42. Oez-US states that “[i]t is furthermore of essential importance
that a white pigment (TiO2) can be incorporated into the mixture so that the
prior white coating of dark (black) textiles hitherto necessary can now be
dispensed with and the print can be transferred immediately with a single
film.” Id. at 1:51–55.
Oez-US discloses that the coating “can be peeled off from the paper as
a film and can be laid as a positive on the textile substrate to be ironed on
IPR2020-00915
Patent 7,766,475 B2
14
and to bond with the textile fibers.” Id. at 1:47–49. Oez-US describes
ironing the film onto a textile “at elevated temperatures.” Id. at 3:56–58.
3. Claims 1 and 13
Petitioner contends that the combination of Kronzer and Oez-US
discloses the ink-jet transfer article of claims 1 and 13. Pet. 62–66.
Petitioner argues that Kronzer describes “‘a heat transfer paper’ (i.e., image
transfer sheet) ‘for transferring designs, messages, and illustrations’ (i.e.,
images/indicia) ‘on articles of clothing, such as T-shirts.’” Id. at 62 (quoting
Ex. 1018, 1:5–11, 9:1–18:6). Petitioner also argues Kronzer “teaches that
layers are ‘useful for a printable heat transfer material on which an image is
to be placed by an ink jet printer.’” Id. (quoting Ex. 1018, 7:3–8:31; citing
Ex. 1020 ¶ 249).
Claim 1 requires a substrate member that includes a substrate surface,
and claim 13 requires a removable substrate member. Ex. 1005, 11:35,
12:15. Petitioner explains that “Kronzer teaches ‘[t]he printable heat
transfer material includes a flexible first layer having first and second
surfaces [that] serves as a base sheet or backing [and] typically will be a film
or a cellulosic nonwoven web.’” Pet. 62 (quoting Ex. 1018, 4:15–20; citing
id. at 4:27–30; Ex. 1020 ¶ 251) (emphasis omitted, alterations in original).
According to Petitioner, Kronzer also explains that the backing sheet, i.e.,
substrate, is removable. Id. (citing Ex. 1018, 4:6–14, 5:23–44, 12:12–43,
Tables VI–XIV; Ex. 1020 ¶ 251).
Claim 1 next requires “an opaque first layer overlaying the substrate
surface, the opaque first layer including polyurethane and a white or
luminescent pigment.” Ex. 1005, 11:36–38. Claim 13 similarly requires an
opaque white layer “overlaying a portion of the substrate member” that
includes “a binder and a white or luminescent pigment.” Id. at 12:16–18.
IPR2020-00915
Patent 7,766,475 B2
15
Petitioner alleges that Kronzer discloses a second, release layer that overlays
the first surface of the first layer and “is ‘composed of a thermoplastic
polymer having essentially no tack at transfer temperatures’” and that
Kronzer discloses a third polymer layer that overlays the second layer.
Pet. 63 (quoting Ex. 1018, 5:23–48; citing Ex. 1020 ¶ 253). Petitioner
argues that “[a]lthough Kronzer does not expressly disclose that its
second/third layers include a white or luminescent pigment, this feature was
extremely well-known before the ’475 patent, as shown by Oez-US.” Id. In
particular, Petitioner explains that Oez-US “expressly discloses” including a
white pigment “to form a white layer in the transfer sheet that provides an
opaque/non-transparent background and improves image quality on
dark/black fabrics.” Id. (citing Ex. 1013, 1:26–31, 1:47–55, 3:32–54,
claim 6; Ex. 1020 ¶ 253). Petitioner further asserts that Oez-US teaches that
the white pigment and the polymers in the layer “are ‘mixed and
homogenized’” and that a person of ordinary skill in the art “would have
understood that such polymers . . . were commonly used as ‘binders.’” Id.
(citing Ex. 1013, 3:22–58; Ex. 1020 ¶ 253).
Petitioner contends that a person of ordinary skill in the art would
have had reason to combine the teachings of Kronzer and Oez-US because
Kronzer teaches that any of its layers may contain materials such as
pigments, and Oez-US teaches that “including a white layer ‘advantageously
provides a contrasting white background for application of images onto dark
[(black)] fabrics.’” Pet. 64 (quoting Ex. 1013, 1:27–31, 2:50–51; citing
Ex. 1018, 8:47–49).
Petitioner additionally asserts that a person of ordinary skill in the art
“would have understood that Kronzer’s white layer (e.g., its third layer with
. . . white pigment as taught by Oez-US) would melt and mix with other
IPR2020-00915
Patent 7,766,475 B2
16
adjacent layers of the image transfer sheet, such as the fourth/ink-receptive
layer.” Id. at 64–65. Petitioner contends that Kronzer includes third and
fourth layers of thermoplastic polymers that melt between 65 °C and 180 °C.
Id. at 65 (citing Ex. 1018, 2:35–67). According to Petitioner, an ordinarily
skilled artisan would have understood that the Kronzer/Oez-US transfer
sheet would have been heated above 180 °C during application and,
therefore, that the third/white layer and fourth/image-imparting layers would
melt and mix. Id. (citing Ex. 1020 ¶ 259).
Claims 1 and 13 also require a layer overlaying the opaque layer.
Ex. 1005, 11:39, 12:19. In claim 1, the layer overlaying the opaque layer is
“configured to receive indicia” and includes “polyurethane and a polymeric
material.” Id. at 11:39–41. In claim 13, the layer overlying the opaque
white layer is an “ink-receptive layer” and includes “a binder and a
polymeric material.” Id. at 12:19–21. Petitioner argues that Kronzer teaches
“‘a fourth layer may overlay the third layer in order to provide an ink jet
printable heat transfer material [that] typically includes a film-forming
binder and a powdered thermoplastic polymer.’” Pet. 65 (quoting Ex. 1018,
2:65–67, 7:3–9; citing id. at 4:15–16) (emphasis omitted, alteration in
original). Petitioner further explains that Oez-US “teaches a polymer layer
with a surface on which an image (i.e., indicia) is printed that comprises
polyurethane [commonly used as a binder] and polymeric components.” Id.
(citing Ex. 1013, Abstract, 1:6–8, 1:26–31, 3:24–30, 3:56–58; Ex. 1020
¶ 261). Thus, Petitioner argues that Kronzer and Oez-US teach “a second
layer for receiving ink/ink-receptive layer that includes a binder (film-
forming binder, polyurethane) and a polymeric material overlaying the
opaque first/white layer.” Id. at 66 (citing Ex. 1020 ¶ 262).
IPR2020-00915
Patent 7,766,475 B2
17
Patent Owner does not dispute that Kronzer and Oez-US together
teach or suggest all of the limitations recited in claims 1 and 13. See
generally Resp. 20–42;7 Reply 1. After considering the full record
developed during trial, we agree with Petitioner’s undisputed arguments and
evidence that Kronzer and Oez-US teach or suggest all of the limitations
recited in claims 1 and 13.
Patent Owner, however, does contend that Petitioner fails to
demonstrate that one of ordinary skill in the art would have had reason to
combine just the white pigment from Oez-US (and not the entire cross-
linking white layer) with Kronzer’s structure, or that such a combination
would have yielded a reasonable expectation of success. Resp. 30–31.
Similarly, Patent Owner argues that Petitioner fails to demonstrate a reason
the skilled artisan would have included a polyurethane (as recited in claim 1)

7 In its Sur-reply, Patent Owner states that “Petitioner’s main obviousness
challenge presents a combination of two references (Kronzer-Oez . . .),
neither of which discloses this key feature: a white layer that melts and
mixes with another layer.” Sur-reply 1. Patent Owner also states, “[n]o
prior art of record teaches the key feature of the ‘475 Patent: a white layer
that melts and mixes with another layer.” Id. at 2. We understand Patent
Owner’s assertions here to mean that neither reference, individually,
discloses a white layer that melts and mixes, not that the combined teachings
of the references fail to disclose a white layer that melts and mixes. Our
understanding is based on Patent Owner’s arguments that Kronzer “has no
need for a white layer at all,” and that Oez-US discloses a white layer that
does not melt and mix. Id. at 1. Patent Owner’s statements in the Sur-reply
do not address Petitioner’s actual argument, namely that Kronzer discloses a
layer that melts and mixes, and Oez-US discloses the use of a white pigment,
such that the references collectively teach or suggest a white layer that melts
and mixes. See In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”).
IPR2020-00915
Patent 7,766,475 B2
18
or a binder (as recited in claim 13) in both the white layer and the layer
configured to receive indicia/indicia receptive layer of Kronzer. Id. at 44–
45, 48. Additionally, Patent Owner affirmatively asserts that a person of
ordinary skill in the art would not have had a reason to combine the
teachings of Kronzer and Oez-US to achieve the invention claimed in the
’475 patent. Id. at 31. We address Patent Owner’s arguments below.
a) Whether Petitioner establishes a reason one of ordinary skill
in the art would have combined Kronzer and Oez-US
Patent Owner acknowledges that Petitioner offers three reasons why a
person of ordinary skill in the art would have combined the teachings of
Kronzer and Oez-US, and challenges each reason. Resp. 31–34.
Patent Owner contends that Petitioner’s first reason—that both
Kronzer and Oez-US teach “printable multi-layered transfer structures
having a removable substrate, release coating, and image-imparting layer”—
is incorrect. Id. at 31. Patent Owner asserts that “every example and every
claim in Oez teaches a single coating of plastic, not a multi-layered transfer
with a distinct ‘image-imparting layer.’” Id. at 31–32. Patent Owner
additionally argues that mere identity of subject matter between two
references is insufficient to establish that the ordinarily skilled artisan would
have had a reason to combine the teachings of those references. Id. at 32.
Petitioner asserts that Patent Owner’s allegation regarding Oez-US
being limited to a single layer of plastic is “demonstrably false.” Reply 4.
Petitioner explains that “Oez-US discloses and claims a multi-layered
transfer sheet” and that “[Patent Owner’s] expert admitted as much” during
his deposition. Id. (citing Ex. 1013, 2:36–44; Ex. 1063, 295:8–296:18).
We agree with Petitioner that Oez-US is not limited to a single-layer
coating and instead encompasses multi-layered designs. Petitioner directs us
IPR2020-00915
Patent 7,766,475 B2
19
to specific portions of Oez-US that, like Kronzer, describe multi-layered
transfer structures. See Ex. 1013, 2:36–44 (describing a polymer layer
between the paper and the polyurethane layer), claim 12 (same). Testimony
from Dr. Ellison likewise indicates Oez-US discloses a multi-layered
structure. Ex. 1063, 295:8–296:18 (Dr. Ellison’s testimony describing Oez-
US as having a second, optional layer).
Furthermore, although we agree with Patent Owner that identity of
subject matter alone is insufficient to demonstrate that the ordinarily skilled
artisan would have had reason to combine the teachings of Kronzer and Oez-
US, Petitioner does not rely on identity of subject matter alone, as discussed
in more detail below. Nevertheless, we consider Petitioner’s discussion of
the identity of subject matter to be relevant for purposes of demonstrating
the references are analogous art, which is part of the obviousness analysis.
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In
re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as
to whether a person of ordinary skill in the art would have sought to
combine the references “picks up where the analogous art test leaves off”).
Patent Owner next challenges Petitioner’s argument that Kronzer and
Oez-Us “share the common goal of improving image transfer
characteristics” because “Kronzer and Oez-US actually solve fundamentally
different problems using fundamentally different technologies.” Resp. 32
(quoting Pet. 61). Patent Owner explains that Kronzer “solves the problem
of creating an image transfer that has ‘cold release properties;’” in contrast,
Oez-US “solves the problem of printing in ‘positive,’ incorporating white
pigment into ‘a coating of plastic,’ and the use of ‘black textiles.’” Id. at
32–33. According to Patent Owner, Kronzer’s solution involved
experimenting with transparent transfer materials (i.e., lacking pigment) that
IPR2020-00915
Patent 7,766,475 B2
20
can be printed in mirror image and applied image-side down, whereas Oez-
US’s solution involves incorporating white pigment into its coating and
using an image-side up, peel first method. Id. Therefore, Patent Owner
reasons that “the divergent goals and solutions of the two inventions
demonstrate why a [person of ordinary skill in the art] would not be
motivated to combine the references.” Id. at 33.
Petitioner maintains that “Kronzer and Oez-US are both directed to
improving the image transfer quality of multi-layer transfer sheets.” Reply 4
(citing Pet. 60–61; Ex. 1020 ¶¶ 245–248; Ex. 1062 ¶¶ 7–12). Citing our
Institution Decision, Petitioner explains that “Kronzer’s teachings are
applicable to image transfers on any color fabric” and argues that a person of
ordinary skill in the art “would have understood from Oez-US’s teachings
that a ‘positive’ image would be printed on top of Kronzer’s layer in
conjunction with adding white pigment.” Id. (citing DI 19–20; Ex. 1020
¶¶ 245–263; Ex. 1062 ¶¶ 7–12).
We find Petitioner’s arguments persuasive. Contrary to Patent
Owner’s argument that the references have divergent goals, the evidence of
record supports Petitioner’s assertion that both Kronzer and Oez-US share
the common goal of improving the quality of image transfers. E.g.,
Ex. 1013, 1:25–31 (referring to a transfer paper that “ensures a greater
brilliance of the image”); Ex. 1018, 2:17–48 (referring to “an improved heat
transfer paper”); Ex. 1020 ¶¶ 245–248. Additionally, we credit Dr. Wanat’s
testimony that Kronzer and Oez-US are “complementary and compatible”
with one another “because Kronzer’s image transfer sheet can be used on
any color fabric.” Ex. 1062 ¶ 11. As noted in our Institution Decision, we
do not discern any specific discussion in Kronzer that its teachings are
limited to any color fabric. DI 20. Nor has Patent Owner directed us to any.
IPR2020-00915
Patent 7,766,475 B2
21
Instead, Patent Owner acknowledges that Kronzer does not discuss problems
with transferring an image to a dark fabric, or the use of dark or black
fabric/T-shirts. Resp. 24. In view of Kronzer’s silence about the color of its
T-shirt base, a person of ordinary skill in the art would have understood that
Kronzer’s teachings are applicable to any color fabric.
Moreover, even if we were to agree with Patent Owner’s argument
regarding Kronzer and Oez-US solving fundamentally different problems, it
would be error to “assum[e] that a person of ordinary skill in the art
attempting to solve a problem will be led only to those prior art elements
designed to solve the same problem.” KSR, 550 U.S. at 402. Further,
“[c]ommon sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.” Id. at 420.
Patent Owner also challenges Petitioner’s argument that a person of
ordinary skill in the art would have combined the teachings in Kronzer and
Oez-US because Kronzer discloses its film layer may contain pigments and
“Oez-US teaches that its transfer sheets ‘can be used particularly
advantageously on dark (black) fabrics.’” Resp. 33 (quoting Pet. 61).
According to Patent Owner, “nothing in this argument indicates why a
[person of ordinary skill in the art] would be motivated to combine Oez-US
with Kronzer.” Id. at 33. Patent Owner faults Petitioner for failing to
argue, for example, “that there is something lacking in Oez-US that would
be improved by combining it with Kronzer” or “that the combination of the
two references as Petitioners propose would result in some new desirable
feature.” Id.; Sur-reply 12. As a result, Patent Owner argues that
IPR2020-00915
Patent 7,766,475 B2
22
Petitioner’s combination of Kronzer and only the pigment from Oez-US uses
the claims as a roadmap. Resp. 33.
We disagree. Petitioner’s arguments are based on Oez-US supplying
something beneficial that is missing from Kronzer and, therefore, improving
Kronzer’s system.8 Thus, contrary to Patent Owner’s assertions otherwise,
Petitioner has indicated why a person of ordinary skill in the art would have
been motivated to combine Oez-US and Kronzer. Furthermore, Petitioner’s
reliance on express teachings from Oez-US and Kronzer in support of its
arguments undermines Patent Owner’s assertion that Petitioner improperly
relies on hindsight.
In weighing the evidence and arguments before us, we find Petitioner
advances sufficient reasoning with rational underpinnings to explain why
one of ordinary skill in the art would have had reason to combine Kronzer
and Oez-US. Petitioner relies on Kronzer’s express teaching that any of its
layers may contain pigments and Oez-US’s express teaching that its layered
sheet including a white pigment “advantageously provides a contrasting
white background for application of images onto dark fabrics.” Pet. 64
(citing Ex. 1018, 8:47–49; Ex. 1013, 1:27–31 (stating the use of white
pigment “ensures a greater brilliance of the image . . . especially for printing
black textiles”), 2:50–51). Accordingly, Petitioner reasons that a person of
ordinary skill in the art would have included the white pigment of Oez-US in

8 In view of this, we agree with Petitioner that Patent Owner’s assertion
regarding Petitioner’s failure to argue Kronzer provides something
beneficial that is lacking in Oez-US is a red herring, as Petitioner does not
propose to modify or improve anything in Oez-US based on Kronzer.
Reply 5.
IPR2020-00915
Patent 7,766,475 B2
23
the polymer layer of Kronzer to achieve the shared goal in Kronzer and Oez-
US of improving image transfer. Id. at 60–61; Reply 5; Ex. 1062 ¶¶ 11–12.
b) Whether Petitioner establishes that a person of ordinary skill
in the art would have included polyurethane or a binder in
both the white layer and indicia receptive layer
Patent Owner argues that Petitioner fails to establish that a person of
ordinary skill in the art would have had a reason to include a polyurethane
(claim 1) or a binder (claim 13) in both the layer containing the pigment and
the layer configured to receive the indicia. Resp. 44–48. As to the
polyurethane that claim 1 requires, Patent Owner contends that Petitioner
“borrow[s]” from Oez-US the polyurethane in the white layer and “relies
upon Kronzer to supply the polyurethane in the indicia-receiving layer,” but
fails to “cite to any disclosure in either Kronzer or Oez that includes
polyurethane in both a white layer and an indicia-receiving layer, and there
are none.” Id. at 45–46. Patent Owner further contends that Petitioner
“seems to argue that [a person of ordinary skill in the art] would make a
combination that included (1) Oez’s polyurethane in the white layer; and (2)
Kronzer’s binder in the fourth [indicia-receiving] layer,” but Petitioner
provides no evidence why an ordinarily skilled artisan would have made that
combination. Id. According to Patent Owner, an ordinarily skilled artisan
would not have had a reason “to borrow both the polyurethane and the white
pigment from Oez without also borrowing the cross-linking melamine
formaldehyde in Oez’s white layer” because the polyurethane is included
“for the purpose of cross-linking.” Id. at 46 (citing Ex. 2011 ¶ 317); Sur-
reply 14 (citing Ex. 1013, 1:39–41). Patent Owner makes the same
argument with respect to the binder claim 13 requires in both layers. See
Resp. 48.
IPR2020-00915
Patent 7,766,475 B2
24
Petitioner replies that Patent Owner’s arguments are “entirely at odds
with Kronzer, which discloses the use of ‘binders’ [e.g., polyurethane] in
both its third and fourth layers without the use of cross-linking.” Reply 11–
12 (citing Ex. 1018, 5:46–67, 7:22–35). Petitioner also notes that Dr. Wanat
explains that “‘polyurethane’ was a well-known binder at the time of the
’475 patent.” Id. at 12 (citing Ex. 1020 ¶¶ 253, 261, 262, 298; Ex. 1062
¶ 47). And Petitioner asserts that a person of ordinary skill in the art would
have had reason to use polyurethane “for reasons completely unrelated to
cross-linking,” including “to hold polymer layers together.” Id. (citing
Pet. 63–66; Ex. 1020 ¶¶ 253, 254, 298–300; Ex. 1062 ¶ 48); see id. at 13
(providing the same reply arguments for the “binder” limitation in claim 13).
Petitioner’s arguments are persuasive. Initially, we note that Patent
Owner’s argument that neither Oez-US nor Kronzer discloses a polyurethane
or binder in both layers is unavailing because obviousness does not require a
single reference to disclose all claim elements. See Banner Eng’g Corp. v.
Tri-Tronics Co., Nos 93-1115, 93-1116, 93-1158, 1993 WL 432383, at *3
(Fed. Cir. Oct. 27, 1993) (unpublished). This is because “references are read
not in isolation but for what they fairly teach in combination with the prior
art as a whole.” Id. (citing Merck, 800 F.2d at 1097).
As for whether one of ordinary skill in the art would have added
polyurethane or a binder to both the pigment and indicia-receiving layers,
we agree with Petitioner that Kronzer expressly discloses using a binder
(e.g., polyurethane) in two layers—its third and fourth layers. Ex. 1018,
5:46–67, 7:22–35; see id. at 6:55–57 (disclosing polyurethane as an
exemplary polymer that can be used as a binder), 11:44–45 (Table IV chart
of fourth layers noting that “Sancor 12676 is a heat sealable polyurethane”).
Further, as Petitioner argues, polyurethane was a known binder that was
IPR2020-00915
Patent 7,766,475 B2
25
used to “hold polymer layers together.” Reply 12. In that regard, we credit
Dr. Wanat’s unrebutted testimony that “polyurethane had the known use as a
‘binder’ to hold polymer layers together, such as layers with pigment
particles.” Ex. 1062 ¶ 48; see also, e.g., Ex. 1020 ¶ 253 (citing Ex. 1051
generally). Kronzer also supports Dr. Wanat’s testimony, disclosing, for
example, that the third layer “may be formed by applying a coating of a
film-forming binder” and that the third layer “functions as a transfer coating
to improve the adhesion of subsequent layers in order to prevent premature
delamination of the heat transfer material,” Ex. 1018, 5:46–52 (emphasis
added).9 Thus, contrary to Patent Owner’s arguments, we determine that
Petitioner provides adequate reasons why one of ordinary skill in the art
would have used polyurethane or a binder both in the layer containing
pigment and in the indicia-receiving layer.
c) Patent Owner’s affirmative arguments that a person of
ordinary skill in the art would not have combined Kronzer and
Oez-US to yield the inventions described in the ’475 patent
claims
In addition to arguing Petitioner fails to establish that a person skilled
in the art would have been motivated to combine Kronzer and Oez-US,
Patent Owner affirmatively argues the evidence of record shows a person of

9 We acknowledge that Oez-US discloses polyurethane “can be cross-linked
under the action of heat by melamine-formaldehyde resin.” Ex. 1013, 1:39–
40. That disclosure, however, does not negate the fact that polyurethane can
be used as a binder without cross-linking to hold polymer layers together in
more than one layer of an image transfer sheet. Reply 11–12; Ex. 1018,
5:46–67, 6:55–57, 7:22–35, 11:44–45.
IPR2020-00915
Patent 7,766,475 B2
26
ordinary skill in the art would not have been motivated to combine Kronzer
and Oez-US. Resp. 34. Specifically, Patent Owner contends that
[t]his evidence includes: (1) Kronzer does not even address dark
t-shirt transfer; (2) Kronzer and Oez rely upon different chemical
reactions (heat alone v. heat plus a chemical reaction);
(3) Kronzer and Oez employ different structures (multi-layered
v. single layered); (4) Kronzer and Oez solve different problems
(cold peel v. dark fabric transfer); Kronzer and Oez use different
technologies to solve those problems (specific formulations v. a
cross-linking white layer and a peel-first method); and
(5) Kronzer and Oez use opposite methods of applications
(image down/peel later v. image up/peel first).
Id. Patent Owner additionally alleges adding the white pigment from Oez-
US to Kronzer would not yield predictable results and a person of ordinary
skill in the art would not “expect the combination to succeed” because
Petitioner “incorrectly borrows a single function of the white pigment in Oez
(allowing transfer to dark fabrics) while ignoring the impact of the other
functions of the white pigment.” Id. at 34–35. We address each of Patent
Owner’s arguments below.
(1) whether a person of ordinary skill in the art would not have
had reason to combine Kronzer and Oez-US because
Kronzer’s sheets are transparent and Kronzer fails to
acknowledge problems associated with transferring an
image to dark fabrics
Patent Owner argues that “a [person of ordinary skill in the art] would
not be motivated to combine Kronzer with Oez-US to create the inventions
of the ‘475 Patent . . . because Kronzer does not solve – or even
acknowledge – the problem of transferring an image onto dark fabric.”
Resp. 35. For example, Patent Owner contends that Kronzer does not
acknowledge that conventional, transparent transfers result in an image that
has insufficient brilliance on dark fabric, and that none of Kronzer’s
IPR2020-00915
Patent 7,766,475 B2
27
examples utilize a pigment at all, let alone one used to form an opaque
background for dark fabrics. Id. at 36 (citing Ex. 2011 ¶¶ 173, 308).
Petitioner replies that “Oez-US—not Kronzer—discloses the solution
to the problems with transferring images onto dark fabrics; i.e., including a
white/opaque pigment to provide a white/opaque background onto which a
positive image can be printed,” the same issue the ’475 patent purports to
solve. Reply 6. Petitioner further explains Patent Owner ignores that
Kronzer is not limited to a light fabric color and a person skilled in the art
“would have been motivated to improve Kronzer by including a white
pigment, as taught by Oez-US.” Id. at 5–6.
Petitioner’s arguments are persuasive. Contrary to Patent Owner’s
assertions, Kronzer need not solve, much less acknowledge, the specific
problem of dark image transfer. The test for obviousness is not whether any
one or all of the references expressly suggests the claimed invention, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover,
one of ordinary skill can use his or her ordinary skill, creativity, and
common sense to make the necessary adjustments and further modifications
to result in a properly functioning method. See KSR, 550 U.S. at 418
(holding “a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ”). And, where “a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” See id. at 417.
IPR2020-00915
Patent 7,766,475 B2
28
Here, Kronzer discloses an image transfer sheet, and does not
expressly limit its teachings to any color fabric. Oez-US teaches an
improvement—the use of a white, opaque pigment that “ensures a greater
brilliance of the image . . . especially for printing on black textiles.”
Ex. 1013, 1:28–31. The evidence of record discussed above, including the
fact that Kronzer teaches including a pigment in any one of its polymer
layers (Ex. 1018, 8:46–50), the shared goal of improving image transfer
sheets (Ex. 1013, 1:25–31; Ex. 1018, 2:17–48), and the “complementary and
compatible” nature of the transfer sheets in Kronzer and Oez-US (Ex. 1062
¶ 11), supports a finding that a person of ordinary skill in the art would have
recognized that the Oez-US technique would improve the similar transfer
sheet disclosed in Kronzer, and would have had a reason to combine the
teachings of Kronzer and Oez-US. See KSR, 550 U.S. at 417.
(2) whether a person of ordinary skill in the art would not have
had reason to combine Kronzer with Oez-US’s white
pigment alone and whether a reasonable expectation of
success exists
Patent Owner next argues that a person of ordinary skill in the art
would not have had reason to use only the white pigment from Oez-US
because Oez-US teaches away from a white layer that does not cross-link,
i.e., that melts and mixes. Resp. 37; Sur-reply 12–13. According to Patent
Owner, “[t]he cross-linking reaction in Oez is required for the white layer
in Oez to function, but Petitioner simply ignores it.” Resp. 37. Patent
Owner also argues that “transferring a pigment from a reactive system [Oez]
to a non-reactive system [Kronzer] raises significant technical challenges
from a chemistry and materials science perspective,” such that a person of
ordinary skill in the art would not have had a reasonable expectation of
IPR2020-00915
Patent 7,766,475 B2
29
success in taking only the pigment from Oez-US, and not the entire cross-
linking white layer. Id. at 38 (citing Ex. 2011 ¶ 177–183, 312).
Patent Owner contends that the “numerous failures in the numerous
trials in Kronzer” support its argument and further “demonstrate why one
cannot simply add a completely different composition (a composition or
concentration of white pigment sufficient to create an opaque, non-
transparent background) without making other adjustments or
accommodating for all of the various effects caused by the pigments.” Id.
(citing Ex. 2011 ¶¶ 185, 313). Patent Owner argues that “it is ‘extremely
rare’ to find a ‘drop in’ replacement for an existing ingredient that will result
in the identical finished [] color.” Id. at 39 (citing Ex. 2011 ¶ 176; Ex. 2012,
3). Additionally, Patent Owner states Petitioner “ignores that, in the reactive
system of Oez[-US], the titanium dioxide performs multiple functions
beyond providing whiteness,” and can also chemically react with the
components of a polymer layer. Id. (citing Ex. 2011 ¶ 180). Patent Owner
further argues that titanium dioxide is a particulate, which “would
completely change the characteristics” of Kronzer’s third layer, including
the viscosity and flow properties of the third layer at transfer temperatures
and solid state characteristics of the third layer, such as modulus, elasticity,
and flexibility. Id. at 39–40. As a result, according to Patent Owner,
transferring the pigment from Oez-US to Kronzer is not a “like-for-like
transfer,” the results of the transfer would be unpredictable, and a person
would not have had a reasonable expectation that adding pigment to the third
layer of Kronzer would be successful. Id. at 40–41.
Petitioner replies that Oez-US does not teach away from using only
the white pigment because “Oez-US does not make any statement that
criticizes, discredits or would discourage a [person of ordinary skill in the
IPR2020-00915
Patent 7,766,475 B2
30
art] from the use of a white pigment such as TiO2 in non-cross-linking
polymers.” Reply 6. Petitioner also argues that “Oez-US does not suggest
that using TiO2 with thermopolymers, such as those disclosed in Kronzer,
would not achieve the same improvement to an image transfer sheet.” Id.
(citing Ex. 1062 ¶¶ 16–20). Instead, Petitioner explains that it is undisputed
that Oez-US describes the use of titanium oxide to improve image quality on
dark substrates and asserts that “Kronzer also encourages using of pigments
in its polymer layers.” Id. at 6–7 (citing Ex. 1013, 1:46–55; Ex. 1018, 8:46–
51; Ex. 1062 ¶¶ 16–20; Ex. 2011 ¶¶ 87–91). Petitioner further asserts that a
person of ordinary skill in the art would have understood “that TiO2 would
function as a white pigment—and provide a white/opaque background—
regardless of whether it was present in a cross-linked polymer or a non-
cross-linked polymer,” and points to testimony from Patent Owner’s
declarant, Dr. Ellison, in support. Id. at 7 (citing Ex. 1062 ¶¶ 17–20;
Ex. 1063, 304:8–22). And Petitioner states that neither Patent Owner nor
Dr. Ellison cites to record evidence “to support [the assertion] that TiO2
somehow participates in the cross-linking reaction in Oez-US.” Id. (citing
Resp. 37–41; Ex. 2011 ¶¶ 141–148; Ex. 1063, 302:4–303:21).
We do not agree with Patent Owner’s arguments that Oez-US teaches
away from using white pigment alone or that Oez-US requires a cross-
linking polymer for the white pigment to function. See Resp. 37–41. To
teach away, a reference must discourage one of ordinary skill in the art from
following the path set out in the reference, or lead that person in a direction
divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994) (“[A] reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.”). “A reference does not
IPR2020-00915
Patent 7,766,475 B2
31
teach away . . . if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Patent Owner does not
identify any teaching in Oez-US that either requires use of a cross-linking
polymer with its white pigment or discourages using a white pigment
without a cross-linking polymer. Our independent review of Oez-US does
not reveal any such teaching. The fact that Oez-US uses a white pigment in
addition to a cross-linked polymer does not mean that cross-linking is
required; nor does it teach away from pursuing the path taken in the
’475 patent.
Patent Owner’s arguments that transferring a white pigment from a
reactive to a non-reactive system would have been unpredictable because the
titanium dioxide performs functions beyond providing whiteness and the
properties and characteristics of the layer would be altered are similarly
unavailing. See Resp. 38–41; Sur-reply 5–6. Neither Patent Owner nor
Dr. Ellison identifies anything in Oez-US that suggests the titanium dioxide
performs any function other than providing a contrasting background. See
generally Resp. 38–41; Ex. 2011. Rather, Oez-US consistently refers to the
white pigment or titanium dioxide as the material responsible for providing
contrast for images transferred to dark-colored textiles. Ex. 1013, 1:25–30,
1:50–54, 2:50–51. In fact, Oez-US states that “[i]f white textiles are to be
printed on, the titanium oxide pigment can also be omitted.” Id. at 2:31–32.
Further, Dr. Ellison’s testimony that “white pigments like titanium dioxide
often have a surface chemistry [that] . . . can interact with components of
reactive systems [and] . . . can itself chemically react with the components
IPR2020-00915
Patent 7,766,475 B2
32
of the single polymer layer of Oez[-US] and become part of the crosslinked
network,” is inconclusive and, at best, describes possible interactions in a
reactive system—not a non-reactive system as Petitioner proposes.
Ex. 2011 ¶ 180 (emphasis added).
Furthermore, record evidence supports Petitioner’s position that a
person of ordinary skill in the art would have understood that incorporating
titanium dioxide within a polymer layer provides a white background
whether the polymer is cross-linked or not. Ex. 1062 ¶¶ 17–18 (citing
Ex. 1055, 120–121); Ex. 1063, 304:8–22 (Dr. Ellison’s testimony that the
reactions described in Oez-US would not be required for titanium dioxide to
provide whiteness). Regarding the purported changes titanium dioxide
would have on certain properties or characteristics of the polymer layers,
Patent Owner’s argument is based solely on Dr. Ellison’s conclusory
declaration testimony, which is entitled to little or no weight. See Ex. 2011
¶¶ 181–184; 37 C.F.R. § 42.65(a).
Similarly, Patent Owner’s argument that “it is ‘extremely rare’ to find
a ‘drop in’ replacement” for titanium dioxide (Resp. 39) appears to be based
on an incomplete understanding of the referenced articles and is otherwise
conclusory. For example, Patent Owner relies on Dr. Ellison’s testimony
and Exhibits 2012 and 2013. But Dr. Ellison admits the book excerpted in
Exhibit 2013 is not relevant to inorganic pigments such as titanium oxide,
and that he had not “studied” the details of the paper in Exhibit 2012, which
identifies the problem with titanium oxide only as a possible color shift or
variance in lightness of up to 10%. Reply 8–9; Ex. 1063, 343:11–347:7,
350:5–355:2.
On the other hand, Petitioner identifies evidence that suggests
titanium dioxide is well-studied, well-understood, and the most widely-used
IPR2020-00915
Patent 7,766,475 B2
33
white pigment in response to Patent Owner’s unpredictability arguments and
arguments that a person of ordinary skill in the art would not have had a
reasonable expectation of success. Reply 8–9; Ex. 1062 ¶¶ 23–39 (citing
Exs. 1054–1058); see also Ex. 2012, 1 (“Titanium dioxide is the most
widely used white pigment because of its unique ability to provide
exceptional opacity and lend whiteness and brightness.”); Ex. 1055, 129
(“Half of all TiO2 pigment produced is consumed by the coatings industry
and a quarter by the paper industry.”).
We also disagree with Patent Owner’s assertion that the alleged
“numerous failures” in Kronzer demonstrate why adding a new component
to the third layer would be unpredictable. Resp. 38; Sur-reply 5. Even if we
were to accept Patent Owner’s characterization of Kronzer as including
some failures as true, Patent Owner itself acknowledges that none of those
trials included a pigment. Resp. 36 (“In each of the 68 trials in Kronzer,
there is no pigment in any of the layers that are transferred . . . .”); see also
Reply 8 (“Kronzer does not disclose any ‘failure’ regarding the use of TiO2
or any pigment.”) Thus, we fail to see the particular significance of those
specific trials to the question of unpredictability based on adding a pigment
to Kronzer. Moreover, a reference should be considered in its entirety for
what it fairly teaches one skilled in the art, which here would include the
multiple successful trials in Kronzer. Ex. 1018, Tables VI–XIV (showing
transfer sheet trials with characteristics, including image transfer, that are
“good” and/or “excellent”); see In re Wesslau, 353 F.2d 238, 241 (CCPA
1965).

IPR2020-00915
Patent 7,766,475 B2
34
(3) whether a person of ordinary skill in the art would not have
had reason to combine Kronzer and Oez-US because
Kronzer and Oez-US allegedly involve different structures
and manufacturing processes
Patent Owner contends Kronzer and Oez-US have “fundamental
differences in their structures and manufacturing” such that the ordinarily
skilled artisan would not have combined their teachings. Resp. 42. In
particular, Patent Owner asserts that “Kronzer is a multi-layered structure, in
which each layer is laid down separately during manufacturing and in which
each layer serves a different function,” whereas “every claim and every
example in Oez teaches a single homogenized coating, which is pre-mixed
during manufacture.” Id.
Petitioner replies that Oez-US is not a “single homogenized coating”
as Patent Owner suggests. Reply 9. Petitioner asserts that both Oez-US
itself and Patent Owner’s own declarant describe Oez-US as having a multi-
layered structure. Id.
For the same reasons discussed above in Section II.D.3.a, we do not
agree with Patent Owner’s arguments in this regard. As we explain above,
Oez-US and Kronzer each describe a multi-layered image transfer structure.
See Ex. 1013, 2:36–44 (describing a polymer layer between the paper and
the polyurethane layer), claim 12 (same); see also Ex. 1063, 295:8–296:18
(testimony by Dr. Ellison describing Oez-US as having a second, optional
layer); Ex. 1018, 2:33–3:6 (describing a heat transfer sheet having up to five
layers).

IPR2020-00915
Patent 7,766,475 B2
35
(4) whether a person of ordinary skill in the art would not have
had reason to combine Kronzer and Oez-US because the
problems being solved, and technology employed to solve
them are different
Patent Owner also argues that “a [person of ordinary skill in the art]
would not be motivated to combine Kronzer and Oez . . . because of the
fundamental differences in the problems each reference seeks to address and
the fundamental differences in the technology each reference uses to solve
those problems.” Resp. 43 (referring back to the arguments made at Resp.
37–38).
Petitioner replies that “Kronzer and Oez-US are both directed to
improving the image transfer quality of multi-layer transfer sheets.” Reply
4, 9–10; see also Pet. 60–61 (referring to the “common goal” of improving
image transfer sheets). Dr. Wanat testifies that the teachings of Kronzer and
Oez-US are “clearly complementary and compatible with one another”
because “Kronzer’s image transfer sheet can be used on any color fabric,”
“Kronzer teaches that ‘pigments’ can be used in any of its layers,” and
“[t]here is no structural or chemical characteristic of Kronzer’s image
transfer sheet that would prevent it from being applied to dark or black
fabric, or prevent it from being used with a white pigment as taught by Oez-
US.” Ex. 1062 ¶¶ 11–12.
For the same reasons discussed above in Section II.D.3.a, Patent
Owner’s arguments in this regard are unavailing. As we explained above,
we consider Kronzer and Oez-US to be aligned with a common goal of
improving the quality of transferred images. Additionally, Dr. Wanat’s
testimony regarding Oez-US and Kronzer being complementary and
compatible, which Kronzer supports because it teaches the use of pigments
and is not limited to fabric color, undermines Patent Owner’s bare assertion
IPR2020-00915
Patent 7,766,475 B2
36
that the technology in the two references is so different that a person of
ordinary skill in the art would not have had any reason to combine the
teachings of the references.
(5) whether a person of ordinary skill in the art would not have
had reason to combine Kronzer and Oez-US where the
printing and applying method of Kronzer and Oez-US are
opposite to one another
Patent Owner contends that a person of ordinary skill in the art would
not have had a reason to combine Kronzer and Oez-US because the “two
references use opposite methods of application” and a person of ordinary
skill in the art would not have had a reasonable expectation of successfully
adding white pigment to Kronzer’s third layer using Kronzer’s method of
application. Resp. 43–44. Patent Owner contends that, with the exception
of claim 19, Petitioner does not address how one would have combined the
peel later method of Kronzer (where the backing is peeled away from the
image transfer sheet after heating) with the peel first method of Oez-US
(where the backing is peeled away from the image transfer sheet before
heating), or which method an ordinarily skilled artisan would have used. Id.
at 44. According to Patent Owner, a person of ordinary skill in the art using
Kronzer’s peel later method would not have had a reasonable expectation of
successfully adding a white pigment to the third layer of Kronzer because, in
Kronzer, the third layer is between the viewer and the graphic and, therefore,
adding white pigment would have “obscure[d] the decorative graphic” and
been counterintuitive. Id. at 44.
Petitioner asserts that “far from being ‘counterintuitive’ (PO[ Resp.]
40), a [person of ordinary skill in the art] (or anyone else possessing a
modicum of common sense) would have understood that the inclusion of a
white/opaque pigment in Kronzer’s layer would necessitate the image to be
IPR2020-00915
Patent 7,766,475 B2
37
positioned positively on top of (not underneath) the opaque/white layer, as
expressly taught by Oez-US.” Reply 10 (citing Ex. 1062 ¶¶ 43–44).
Petitioner’s arguments are persuasive. Oez-US teaches that the
printed image should be oriented on top of the white/opaque background.
Ex. 1013, 1:25–31, 1:46–55, 3:1–4. Thus, we agree with Petitioner that a
person of ordinary skill in the art would have understood from the references
themselves that the image in Kronzer should be positioned such that it does
not end up underneath the white/opaque layer when printed. Reply 10.
Further, as Patent Owner acknowledges, using a white pigment without
modifying Kronzer’s peel later method would have resulted in the white
layer covering the image, and therefore, the image would have been
obscured. Resp. 44; Ex. 2011 ¶ 186 (A person having ordinary skill in the
art “would expect that white pigment in the third layer would obscure the
decorative graphic”). We disagree, however, that this would have dissuaded
a person of ordinary skill in the art from making Petitioner’s proposed
modification because the “person of ordinary skill is also a person of
ordinary creativity, not an automaton,” and does not abandon common sense
when considering the combination of references. KSR, 550 U.S. at 421;
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) (explaining that a person of ordinary skill in the art would have
considered both the advantages and disadvantages of the prior art).
For all of the foregoing reasons, we are persuaded by Petitioner’s
arguments and evidence demonstrating that a person of ordinary skill in the
art would have had reason to combine the teachings of Kronzer and Oez-US,
and would have had a reasonable expectation of successfully doing so to
arrive at the subject matter recited in claims 1 and 13. As noted above, we
also agree with Petitioner’s arguments and evidence that Kronzer and
IPR2020-00915
Patent 7,766,475 B2
38
Oez-US teach or suggest all of the limitations recited in claims 1 and 13. As
a result, we find Petitioner establishes, by a preponderance of evidence, that
claims 1 and 13 are unpatentable as obvious in view of Kronzer and
Oez-US.
4. Claim 19
Petitioner further asserts that the combined teachings of Kronzer and
Oez-US would have rendered obvious the subject matter of independent
claim 19. Pet. 72–75. Independent claim 19 recites “[a] method of
transferring an image to a dark-colored or black receiving member,”
comprising, among other things, “providing an ink-jet transfer article
comprising” a substrate and two layers. Ex. 1005, 12:42–52. The ink-jet
transfer article recited in claim 19 is substantively similar to the ink-jet
transfer article recited in claim 1. Claim 19 further requires peeling the
removable substrate away from the opaque first layer and the second layer;
applying the opaque first layer and second layer to the dark-colored or black
receiving member such that the indicia face upwards; positioning the
substrate layer, when peeled, or an overlay release paper over the second
layer and opaque first layer; and applying heat to the substrate layer or
overlay release paper, the second layer, and the opaque first layer so that the
indicia and the opaque first layer’s substantially white background are
transferred to the receiving member at the same time. Id. at 12:53–67.
For the common limitations between claims 1 and 19, Petitioner relies
on the same arguments and evidence discussed above with regard to claim 1.
Pet. 73. Additionally, Petitioner argues that Kronzer in view of Oez-US
teaches “[a] method of transferring an image to a dark-colored or black
receiving member,” as recited in the preamble of claim 19. Id. at 72.
Petitioner also argues that Kronzer teaches the steps of peeling off or
IPR2020-00915
Patent 7,766,475 B2
39
removing the substrate, applying the ink-jet transfer article to a fabric, and
“applying heat” to transfer the indicia and polymer layers onto the fabric.
Id. at 74. Petitioner acknowledges that Kronzer does not disclose
performing these steps in the sequential order recited in claim 19, but argues
that Oez-US does, and that a person of ordinary skill in the art would have
had reason to modify the order of the steps in Kronzer based on Oez-US and
would have had a reasonable expectation of success. Id. (citing Ex. 1013,
1:47–50, 3:10–12; Ex. 1020 ¶ 303).
In particular, Petitioner argues that “[i]n conjunction with modifying
Kronzer’s third layer to include an opaque/white background, as taught by
Oez-US,” a person of ordinary skill in the art “would have also naturally
applied the image transfer steps and image orientation taught by Oez-US.”
Id. at 75. According to Petitioner,
the purpose of adding the white pigment to Kronzer’s third layer
is to provide an opaque/white background for the image being
transferred. Oez-US, 1:27–31, 1:47–55. Thus, the first step
would be to peel off the [substrate10]. Wanat Decl., ¶ 304
(explaining that, otherwise, the white layer would be on top of
and blocking the image).
Id. Petitioner also argues that a person of ordinary skill in the art would
have understood Kronzer’s substrate layer could be peeled off first without
the need to apply heat because Kronzer expressly teaches that its substrate
layer has “cold release” properties. Id.

10 The Petition includes the word “heat” instead of the word “substrate.”
Pet. 75. We understand this to be a typographical error, as Dr. Wanat’s
testimony at paragraph 304 states “the first step would be to peel off the
substrate so that the image printed on Kronzer’s fourth/ink-receiving layer is
placed face-up (as a positive image) on top of the third/white layer before
applying heat.”
IPR2020-00915
Patent 7,766,475 B2
40
In addition to the arguments and evidence presented with regard to
claim 1, Patent Owner argues that Petitioner and Dr. Wanat cite no support
for the position that using the method from Oez-US with Kronzer’s sheet
would have been natural. Resp. 48. Patent Owner also argues that
Petitioner’s proposed modification constitutes a “complete re-engineering of
Kronzer” because it not only modifies Kronzer’s method of application, but
also reverses the order of the layers in Kronzer. Id. at 48–49 (citing
Ex. 2011 ¶ 318). Patent Owner further asserts that Petitioner’s re-
engineering is based on hindsight. Id. at 50. Additionally, Patent Owner
contends that this “complete reversal of the order of the layers would not
yield predictable results . . . given the numerous failures in Kronzer,” and
that Petitioner fails to explain why a person of ordinary skill in the art would
have expected the modified structure would be successful. Id.
In response to Patent Owner’s re-engineering argument, Petitioner
contends that Patent Owner and Dr. Ellison overlook Kronzer’s disclosure
that its third and fourth layers are largely the same, and can include similar
thermoplastic polymers/binders having similar characteristics. Reply 14
(citing Ex. 1018, 5:46–65, 6:1–8, 6:54–56, 7:12–41; Ex. 1062 ¶¶ 51–55). In
view of this, Petitioner asserts that a person of ordinary skill in the art would
have understood that reversing the order of the layers would result in the
same or similar functionality. Id. Petitioner also argues that “Kronzer
explicitly makes clear that any minor adjustments that might need to be
made to the characteristics of the third and/or fourth layer would have been
straightforward and trivial to a” person of ordinary skill in the art. Id. (citing
Ex. 1018, 6:57–59, 8:47–51; Ex. 1062 ¶ 54).
Patent Owner challenges Petitioner’s characterization of Kronzer’s
third and fourth layers as largely the same, asserting that Kronzer expressly
IPR2020-00915
Patent 7,766,475 B2
41
teaches that its third and fourth layers must have different molecular weights
and masses, and that the fourth layer “cannot be modified without creating
printability or washability problems.” Sur-reply 16 (citing Ex. 1018, 16:64–
17:6). Patent Owner also contends Petitioner ignores the impact that
compositional differences (e.g., Orgasol and pigment) in the layers would
have on the proposed modification. Id. at 17. Additionally, Patent Owner
contends that Petitioner’s admission that reversing the order of layers may
require adjustments, coupled with its failure to identify any specific
adjustments that would or could be made, further supports its arguments
regarding unpredictability and the lack of a reasonable expectation of
success. Id. at 17–18.
Petitioner’s arguments are persuasive. As Petitioner and Dr. Wanat
indicate, Kronzer teaches that its third and fourth layers may each comprise
similar types of thermoplastic polymers having similar characteristics,
including particle size and melting points. Ex. 1018, 5:46–65, 6:1–8, 6:54–
56, 7:12–41; Pet. 72; Reply 14; Ex. 1020 ¶ 258; Ex. 1062 ¶ 52 (including a
chart listing similarities between Kronzer’s third and fourth layers). Patent
Owner does not directly contest this evidence or testimony from Dr. Wanat
regarding the similarities between the two layers. Instead, Patent Owner
argues that Kronzer’s third and fourth layers cannot be “largely the same”
because Kronzer expressly states that the layers must have different
molecular weights and masses. Sur-reply 16. The language Patent Owner
relies upon for this assertion, however, appears in Kronzer’s discussion of
Table XIII, which lists data for six trial samples in Kronzer aimed towards
attempts to soften a transferred image, eliminate cracking, and retain good
washability. Ex. 1018, 16:32–54 (Table XIII titled “Trial Samples with Pilot
Second Layer-Coated Paper – Attempts to Soften Transferred Image”). We
IPR2020-00915
Patent 7,766,475 B2
42
discern no indication in Kronzer that the statements regarding the relative
molecular weights and masses of the third and fourth layers in these trial
samples apply to all of Kronzer’s embodiments, especially considering
Kronzer describes its third and fourth layers more generally elsewhere,
including in its claims, without requiring a specific relationship between the
molecular weights and masses of the third and fourth layers. E.g., id. at
5:46–6:31, 18:48–67 (claim 8); see Wesslau, 353 F.2d at 241.
Furthermore, we credit Dr. Wanat’s testimony that a person of
ordinary skill in the art would have known that adjustments could be made
to Kronzer’s layers, and that those adjustments would have been
straightforward. Ex. 1062 ¶ 54. Dr. Wanat’s testimony is supported by
Kronzer’s statement that “any of the foregoing film layers may contain other
materials, such as processing aids, release agents, pigments, deglossing
agents, antifoam agents, and the like. The use of these and similar materials
is well known to those having ordinary skill in the art.” Ex. 1018, 8:47–51.
In an obviousness analysis, we “must consider what the prior art as a whole
would have suggested to one skilled in the art.” Envtl. Designs v. Union Oil
Co., 713 F.2d 693, 698 (Fed. Cir. 1983) (citing In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971)). In this regard, Dr. Wanat’s testimony and the
language in Kronzer regarding what was well-known in the art undermine
Patent Owner’s arguments that compositional differences in the third and
fourth layers, and the failure to identify specific adjustments that could be
made, support a finding of unpredictability or a failure to show a reasonable
expectation of success.
For all of the foregoing reasons, we find Petitioner has demonstrated
sufficiently that Kronzer and Oez-US disclose the limitations in claim 19,
and that a person of ordinary skill in the art would have had reason to
IPR2020-00915
Patent 7,766,475 B2
43
combine the teachings of Kronzer and Oez-US and would have had a
reasonable expectation of successfully doing so. Accordingly, we find
Petitioner has established, by a preponderance of evidence, that claim 19 is
unpatentable as obvious in view of Kronzer and Oez-US.
5. Claims 2–12 and 14–18
Petitioner also alleges that the combined teachings of Kronzer and
Oez-US would have rendered obvious the subject matter of dependent
claims 2–12, 14–18, 20, and 21. Pet. 66–72, 75–76. Patent Owner does not
separately address these dependent claims and, therefore, has forfeited any
arguments based on these uncontested claims. See generally Resp. 21–42;
cf. NuVasive, 842 F.3d 1376, 1381 (Fed. Cir. 2016). Instead, Patent Owner
relies on the same arguments addressed above in our discussion of claims 1
and 13, challenging Petitioner’s arguments and evidence regarding whether
a person of ordinary skill in the art would have had reason to combine the
teachings of Kronzer and Oez-US, and whether a person of ordinary skill in
the art would have had a reasonable expectation of success.
We have reviewed the information Petitioner provides, including the
relevant portions of Dr. Wanat’s declarations, and agree with Petitioner’s
undisputed arguments and evidence that Kronzer and Oez-US teach or
suggest all of the limitations in claims 2–12, 14–18, 20, and 21.
Additionally, for the same reasons discussed above, Petitioner’s arguments
and evidence persuade us that a person of ordinary skill in the art would
have had reason to combine the disclosures set forth in Kronzer and Oez-US,
and that a person of ordinary skill in the art would have had a reasonable
expectation of success in achieving the claimed invention. We, therefore,
find Petitioner establishes, by a preponderance of the evidence, that claims
IPR2020-00915
Patent 7,766,475 B2
44
2–12, 14–18, 20, and 21 are unpatentable as obvious in view of the
combined teachings of Kronzer and Oez-US.
E. Remaining Unpatentability Challenges
Having determined that Petitioner establishes by a preponderance of
the evidence that claims 1–21 are unpatentable as obvious over the
combined teachings of Kronzer and Oez-US, we do not address Petitioner’s
additional grounds challenging claims 1–21. See SAS Inst. Inc. v. Iancu, 138
S. Ct. 1348, 1359 (2018) (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. CONCLUSION
After reviewing the complete record developed during the course of
the trial, we conclude that Petitioner satisfies its burden of demonstrating, by
a preponderance of the evidence, that claims 1–21 of the ’475 patent are
unpatentable.11

11 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).
IPR2020-00915
Patent 7,766,475 B2
45
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner establishes by a preponderance of the
evidence that claims 1–21 are 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. §
References/
Basis
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1–21 103 Kronzer, Oez-US 1–21
1–21 103 Oez-US, Meyer12
1–21 103 Oez-PCT, Oez-US
Overall
Outcome
1–21

12 As explained above, we do not reach this ground, or the ground
challenging claims 1–21 as obvious over Oez-PCT and Oez-US, in view of
our determination that claims 1–21 are unpatentable as obvious over
Kronzer and Oez-US.
IPR2020-00915
Patent 7,766,475 B2
46
For PETITIONER:
Joseph Richetti
Ethan Fitzpatrick
Abigail Cotton
BRYAN CAVE LEIGHTON PAISNER LLP
joe.richetti@bclplaw.com
ethan.fitzpatrick@bclpla.com
abigail.cotton@bcllaw.com

For PATENT OWNER:
Devan Padmanabhan
Michelle Dawson
PADMANABHAN & DAWSON, PLLC
devan@paddalawgroup.com
michelle@paddalawgroup.com