Paul Hartmann AG

Patent Trials and Appeals Board

Feb 22, 2022

IPR2020-01477 (P.T.A.B. Feb. 22, 2022)

Trials@uspto.gov Paper 30 571-272-7822 Date: February 22, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ATTENDS HEALTHCARE PRODUCTS, INC., Petitioner, v. PAUL HARTMANN AG, Patent Owner. IPR2020-01477 Patent 8,152,788 B2 Before PATRICK R. SCANLON, HYUN J. JUNG, and NEIL T. POWELL, Administrative Patent Judges. JUNG, Administrative Patent Judge. JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a) IPR2020-01477 Patent 8,152,788 B2 2 I. INTRODUCTION 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 below, we determine that Attends Healthcare Products, Inc. (“Petitioner”) has shown by a preponderance of the evidence that claims 1- 21 of U.S. Patent No. 8,152,788 B2 (Ex. 1001, “the ’788 patent”) are unpatentable. A. Background and Summary Petitioner filed a Petition (Paper 12,1 “Pet.”) requesting institution of an inter partes review of claims 1-21 of the ’788 patent. Paul Hartmann AG (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1-21 of the ’788 patent on all presented challenges. Paper 13 (“Inst. Dec.”), 2, 19, 22. After institution, Patent Owner filed a Response (Paper 18, “PO Resp.”), to which Petitioner filed a Reply (Paper 22, “Pet. Reply”), and Patent Owner thereafter filed a Sur-reply (Paper 26, “PO Sur-reply”). An oral hearing in this proceeding was held on December 2, 2021; a transcript of the hearing is included in the record. Paper 29. B. Real Parties in Interest Petitioner identifies Attends Healthcare Products, Inc. and Domtar Corporation as real parties in interest (Pet. 1), and Patent Owner identifies Paul Hartmann AG as a real party in interest (Paper 4, 1). 1 With our authorization (Paper 8), Petitioner filed a Motion to File Corrected Petition (Paper 9), to which Patent Owner filed an Opposition (Paper 10). We granted Petitioner’s motion (Paper 11), and Petitioner filed a Corrected Petition (Paper 12), which we cite to in this Decision. IPR2020-01477 Patent 8,152,788 B2 3 C. Related Matters The parties identify IPR2013-00173, IPR2020-01478, IPR2020- 01479, and IPR2020-01480 as matters that may affect or be affected by the present proceeding. Pet. 1; Paper 4, 1. According to the parties, the ’788 patent was previously challenged in IPR2013-00173, but the proceeding was terminated due to settlement. Pet. 1; Paper 4, 1. D. The ’788 Patent (Ex. 1001) The ’788 patent issued on April 10, 2012 from an application filed October 18, 2007 and claims priority to a foreign application filed on October 27, 2006. Ex. 1001, codes (22), (30), (45), 1:4-6. The ’788 patent relates to absorbent incontinence diapers. Ex. 1001, 1:10. Figure 1 of the ’788 patent is reproduced below. Figure 1 shows a top view of an outer face of an incontinence diaper. Ex. 1001, 11:54-55, 12:9-10. Incontinence diaper 2 has main part 4 that IPR2020-01477 Patent 8,152,788 B2 4 consists of front area 6, crotch area 12, and rear area 8. Id. at 12:11-13. Absorbent body 14 is between liquid-permeable topsheet 11 and liquid- impermeable backsheet 10. Id. at 12:14-18. Incontinence diaper 2 also includes front side parts 16 and rear side parts 17 attached to main part 4. Ex. 1001, 12:23-25. Side parts 16, 17 can connect to each other by closure means 32 with mechanical closure aides 31 when incontinence diaper 2 is worn. Id. at 12:33-39. “The over-abdomen retaining forces between the closure means 32 and the outer face of the side parts 16 . . . are higher than the over-abdomen retaining forces between the closure means 32 and the outer face of the backsheet nonwoven material component.” Id. at 13:34-38. E. Illustrative Claim The ’788 patent includes claims 1-21, all of which Petitioner challenges. Claim 1, reproduced below, is the only independent claim. 1. An absorbent incontinence diaper comprising: a main part having an inner face directed toward a user body and an outer face directed away from the user body, said main part having an absorption body and a backsheet on a side of said absorption body directed away from the user body, said absorption body having a smaller width than said backsheet, said main part also having a rear area, a front area and a crotch area lying between said rear area and said front area, said main part further defining first and second side edges; side parts joined to said first and said second side edges, said side parts having an inner face and an outer face; and mechanical closure means having mechanical closure aids, said closure means cooperating with said side parts at said rear area, said closure means being structured and dimensioned for detachable fastening to said outer face of said main part and to said outer face of said side parts in said front area, wherein retaining forces between said mechanical closure means and said outer face of said main part are lower than retaining forces between said mechanical closure means and said outer face of IPR2020-01477 Patent 8,152,788 B2 5 said side parts in said front area, wherein said side parts in said front and/or said rear area are folded upon themselves at least about one folding line extending in a longitudinal direction. Ex. 1001, 15:51-16:8 (emphasis added). F. Asserted Prior Art and Proffered Testimonial Evidence Petitioner identifies the following references as prior art in the asserted grounds of unpatentability: Name Reference Exhibit Jacobs US 5,814,178, issued Sept. 29, 1998 1007 Kleinschmidt US 6,547,773 B2, issued Apr. 15, 2003 1006 Anderson US 6,605,172 B1, issued Aug. 12, 2003 1008 Fernfors US 2002/0193776 A1, published Dec. 19, 2002 1045 Karami ’626 US 2003/0220626 A1, published Nov. 27, 2003 1004 Miyamoto ’499 US 2004/0016499 A1, published Jan. 29, 2004 1005 Benning US 2005/0256496 A1, published Nov. 17, 2005 1002 Karami ’772 US 2006/0058772 A1, published Mar. 16, 2006 1003 Stupperich DE 10 2004 053 469 A1, published May 4, 2006 1009 Petitioner further provides a Declaration of Arrigo D. Jezzi (Ex. 1012), and Patent Owner provides a Declaration of G.A.M. (Tony) Butterworth (Ex. 2004). Deposition transcripts for both Mr. Jezzi and Mr. Butterworth were filed. Ex. 1054; Ex. 2003. IPR2020-01477 Patent 8,152,788 B2 6 G. Asserted Grounds Petitioner asserts that claims 1-21 are unpatentable on the following grounds: Claim(s) Challenged 35 U.S.C. § References/Basis 1-4, 6, 7, 10, 11, 14-20 103(a)2 Karami ’772, Benning 1-4, 6, 7, 10, 11, 14-20 103(a) Benning, Karami ’626 5 103(a) Karami ’772, Benning, Miyamoto ’499 5 103(a) Benning, Karami ’626, Miyamoto ’499 7-9 103(a) Karami ’772, Benning, Kleinschmidt 7-9 103(a) Benning, Karami ’626, Kleinschmidt 12 103(a) Karami ’772, Benning, Jacobs 12 103(a) Benning, Karami ’626, Jacobs 13, 15 103(a) Karami ’772, Benning, Anderson 13, 15 103(a) Benning, Karami ’626, Anderson 21 103(a) Karami ’772, Benning, Fernfors 21 103(a) Benning, Karami ’626, Fernfors 1-4, 6, 7, 10, 14, 16, 17, 19, 20 103(a) Benning, Karami ’626, Stupperich Pet. 4-5. Petitioner also contends that all the grounds are supported by the general knowledge of one of ordinary skill in the art. Id. at 4 n.1. 2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16, 2013. Because the ’788 patent claims priority to an application filed before that date, our citations to 35 U.S.C. § 103(a) are to its pre-AIA version. IPR2020-01477 Patent 8,152,788 B2 7 II. ANALYSIS A. Legal Standards In an inter partes review, Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). The U.S. Supreme Court set forth the framework for applying the statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966): Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As explained by the Supreme Court in KSR International Co. v. Teleflex Inc.: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. IPR2020-01477 Patent 8,152,788 B2 8 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). “Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360-61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068-69 (Fed. Cir. 2012)). As described below, the parties’ disputes are related to the scope and content of the asserted prior art and the differences between claims 1-3 and the asserted prior art. After reviewing the complete record, we conclude that Petitioner has shown by a preponderance of the evidence that the proposed combinations including Benning and Karami ’626 teach or suggest the limitations of claims 1-21 and that a person of ordinary skill in the art would have had a reason to combine the references in the manner asserted with a reasonable expectation of success. B. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have had a bachelor’s degree in chemistry, physics, mechanical, chemical, or process engineering, or a related degree and 2-3 years of experience designing diapers” and “would have been familiar with different diaper wing IPR2020-01477 Patent 8,152,788 B2 9 configurations (e.g., integral- and separate-wing), nonwoven materials, cloth-like backsheets, and hook-and-loop fastening systems.” Pet. 16-17 (citing Ex. 1012 ¶ 18). In our Decision granting institution, we preliminarily adopted Petitioner’s unopposed proposal. Inst. Dec. 7. Patent Owner does not challenge Petitioner’s proposed level of ordinary skill and does not propose a level of ordinary skill. See generally PO Resp.; PO Sur-reply. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation and internal quotation marks omitted). Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “would have had a bachelor’s degree in chemistry, physics, mechanical, chemical, or process engineering, or a related degree and 2-3 years of experience designing diapers” and “would have been familiar with different diaper wing configurations (e.g., integral- and separate-wing), nonwoven materials, cloth-like backsheets, and hook-and-loop fastening systems.” Pet. 16-17; Inst. Dec. 7; Ex. 1012 ¶ 18. This level of skill in the art is consistent with the disclosure of the ’788 patent and the prior art of record. C. Claim Construction In an inter partes review based on a petition filed on or after November 13, 2018, the claims are construed IPR2020-01477 Patent 8,152,788 B2 10 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) (2020); see Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). Petitioner proposes interpretations for “mechanical closure means having mechanical closure aids,” “foil,” “reinforcing means,” and “over abdomen retaining forces” with citations to the ’788 patent and declarant testimony. Pet. 20-22. Petitioner contends that formal interpretations of “mechanical closure means having mechanical closure aids,” “reinforcing means,” and “over abdomen retaining forces” are not required. Id. at 21, 22. In our Decision granting institution, we preliminarily adopted Petitioner’s proposed interpretations for the asserted means-plus-function limitations “mechanical closure means having mechanical closure aids” and “reinforcing means.” Inst. Dec. 8-9. We determined that the preliminary record supported Petitioner’s asserted functions and corresponding structures for “mechanical closure means having mechanical closure aids” and “reinforcing means.” Pet. 20 (citing Ex. 1001, 4:29-62, 12:33-45, 15:24- IPR2020-01477 Patent 8,152,788 B2 11 29; Ex. 1012 ¶¶ 50-52), 21-22 (citing Ex. 1001, 11:10-22, 18:4-11; Ex. 1012 ¶ 54). Patent Owner does not challenge Petitioner’s proposed interpretations and does not provide expressly any proposed interpretation. See generally PO Resp.; PO Sur-reply. Patent Owner, however, argues that claim 1’s recitations “said closure means . . . for detachable fastening to said outer face of said main part and to said outer face of said side parts in said front area” and “wherein retaining forces between said mechanical closure means and said outer face of said main part are lower than retaining forces between said mechanical closure means and said outer face of said side parts in said front area” “necessarily means that the retaining forces between the closure means and the main part and between the closure means and side parts be sufficient to hold the diaper on the wearer so that the diaper is fastened.” PO Resp. 10. Patent Owner also contends that “Petitioner recognizes this throughout the Petition.” Id. (citing Pet. 36). In our analysis of claim 1, we consider the parties’ dispute in view of Patent Owner’s reading of claim 1 and determine that Petitioner still shows that its proposed combination teaches or would have rendered obvious the above-quoted limitations. Thus, we determine that an express interpretation of these limitations is not necessary to resolve the parties’ dispute. Vivid Techs., 200 F.3d at 803; Nidec Motor, 868 F.3d at 1017. Based on the full record, we maintain and affirm our preliminary interpretations for “mechanical closure means having mechanical closure aids” and “reinforcing means.” Specifically, for “mechanical closure means having mechanical closure aids,” we determine that (1) the “function is to ‘detachabl[y] fasten[]’ to outer faces of a diaper’s main and side parts” and (2) the “corresponding structure is a ‘strip [of] material’ including ‘hooks of IPR2020-01477 Patent 8,152,788 B2 12 a hook-and-loop fastener,’ optionally with one or more adhesive regions.” Pet. 20 (alterations in original); Ex. 1001, 4:29-62, 12:33-45, 15:24-29, claim 1; Ex. 1012 ¶¶ 50-52. For “reinforcing means,” we determine that (1) the “function is to provide a ‘reinforce[ed]’ connection between a diaper’s side part and main part by overlapping both” and that (2) the “corresponding structures include ‘additional material added to the side part’ such as ‘a section of a strip shaped []or ribbon-shaped material’ (e.g., ‘a nonwoven material, textile material, or foil [(film)]’).” Pet. 21-22 (alterations in original); Ex. 1001, 11:10-22, 18:4-11; Ex. 1012 ¶ 54. We also determine that no other claim term requires express interpretation. See Nidec Motor, 868 F.3d at 1017. D. Scope and Content of the Asserted Prior Art 1. Benning (Ex. 1002) Benning “relates to an absorbent incontinence article.” Ex. 1002 ¶ 2. Figure 4 of Benning is reproduced below. IPR2020-01477 Patent 8,152,788 B2 13 Figure 4 “shows a plan view of a hygienic article . . . in a schematic representation.” Ex. 1002 ¶ 13. Main body portion 20 includes back region 24, crotch region 26, front region 22, and absorbent core 28. Id. ¶ 53. Around absorbent core 28 are underlayer 30 that can form an outer side of the article and topsheet 32. Id. Material sections 34 that form side flaps or lateral sections are attached to an edge of main body portion 20. Id. ¶ 54. Material sections 34 on the right of the figure are unfolded. Id. ¶ 55. Material section 34 can have two closures 42 in the form of closing tapes 44 that can “interact in a releasably adherent manner with an outside 46 of the front region 22.” Id. IPR2020-01477 Patent 8,152,788 B2 14 2. Karami ’626 (Ex. 1004) Karami ’626 relates to “an absorbent article having a fastener element which does not require a special loop providing landing zone.” Ex. 1004 ¶ 2. Figure 1 of Karami ’626 is reproduced below. Figure 1 shows a top plan view of a disposable absorbent article. Ex. 1004 ¶ 24. Absorbent article 10 has back portion 20, crotch portion 24, front portion 22, frontsheet 30, backsheet 32, and an absorbent core between frontsheet 30 and backsheet 32. Id. ¶¶ 35, 36. Wings 40 extend laterally from back portion 20, and one wing 40 has at least one hook-type fastener element 41. Id. ¶ 37. Frontsheet 30 has fastener elements 42. Id. “[F]astener elements 41, 42 do not require landing zones and may engage directly with any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 or wings 40.” Ex. 1004 ¶ 40. One wing 40 can contact both fasteners 42 on frontsheet 30; both wings 40 can be secured to each other to form a belt; or each wing 40 can be secured to a respective fastener element 42. Id. ¶¶ 39, 40. IPR2020-01477 Patent 8,152,788 B2 15 3. Miyamoto ’499 (Ex. 1005) Miyamoto ’499 “relates to a method for forming a plurality of pairs of fastening members, each fastening assembly comprising a base panel and a tab having fastening materials spacedly positioned.” Ex. 1005 ¶ 1. Figure 4 of Miyamoto ’499 is reproduced below. Figure 4 shows “an enlarged top plan view of the fastening member.” Ex. 1005 ¶ 13. Miyamoto ’499 states that “ear panel 49 may comprise any material such as a plastic film, woven or nonwoven webs of natural fibers,” “ear panel 49 is preferably compliant, soft feeling, and non-irritating to the wearer’s skin as the ear panel 49 touches the wearer’s skin when in use,” and “at least a portion of the ear panel 49 may be vapor pervious, permitting vapor to readily penetrate through its thickness.” Ex. 1005 ¶ 31. Miyamoto ’499 also states that “fastening material 100 is provided on the shaped tab 51.” Ex. 1005 ¶ 33. “[F]astening material 100 comprises a first fastening material 106,” and “first fastening material 106 comprises a IPR2020-01477 Patent 8,152,788 B2 16 first hook fastening material comprising a plurality of hooks 102 and the base substrate 104 to support the hooks 102.” Id. “[F]astening material 100 may also have a second fastening material 108,” and “second adhesive material 108 may comprise the adhesive means 63 of the connective portion 59 or may comprise a different adhesive means” to “provide[] a supplemental fastening means.” Id. ¶ 34. 4. Kleinschmidt (Ex. 1006) Kleinschmidt is related to “hygienic absorbent articles, such as diapers, training pants and the like” and, particularly, “a disposable diaper including cuffs that are integral with the side panels.” Ex. 1006, 1:6-9. Figure 1 of Kleinschmidt is reproduced below. Figure 1 shows “a plan view of a disposable diaper.” Ex. 1006, 2:48. Diaper 20 has chassis 22 that comprises the main body of diaper 20, and chassis 22 includes an outer covering of liquid pervious topsheet 24 and liquid impervious backsheet 26. Id. at 4:19-22; see also id. at 1:17-19 IPR2020-01477 Patent 8,152,788 B2 17 (describing similar components for known disposable diapers). At least a portion of absorbent core 28 is between topsheet 24 and backsheet 26. Id. at 4:22-24; see also id. at 1:17-19 (describing absorbent core for known disposable diapers). Diaper 20 also includes side panels 30. Id. at 6:48. Side panels 30 can be “in the first waist region 36 or in both the first waist region 36 and the second waist region 38.” Id. at 6:59-63. Diaper 20 “preferably further includes leg cuffs 32 which provide improved containment of liquids and other body exudates.” Ex. 1006, 6:7- 9. Barrier leg cuffs 32 function “to inhibit loose fecal material or gushes of urine or liquids from soiling the wearer’s clothing.” Id. at 8:64-66. “[A] pair of barrier leg cuffs 32 [can be] disposed on opposing sides of the longitudinal axis 100 of the diaper 20 along with a pair of side panels 30, disposed outboard of the barrier leg cuffs 32, integrally formed such that a combination of one barrier leg cuff 32 and one side panel 30 is made from a single nonwoven ply.” Id. at 7:64-8:4. Kleinschmidt states that “single nonwoven ply design reduces the amount of material required resulting in a savings in material costs as well as a product design that is less bulking and potentially lighter in weight.” Id. at 8:7-10. 5. Jacobs (Ex. 1007) Jacobs “is related to a laminate containing a fibrous layer and a film layer.” Ex. 1007, 1:6-7. Jacobs states that there are “[v]arious disposable articles, e.g., diapers . . . and incontinence care products, that contain an outer layer of a liquid impervious or barrier material” and “a bonded nonwoven fabric can be placed in juxtaposition with a film and then bonded to form a composite” that has “soft, cloth-like textural properties [that] are highly useful outer cover materials for various garments, such as diapers.” Id. at 1:10-13, 1:26-30. According to Jacobs, “there remains a need for IPR2020-01477 Patent 8,152,788 B2 18 further improving tactile properties and thermal stability of liquid resistant composites.” Id. at 1:45-46. Jacobs summarizes its process as having: the steps of placing the fibrous layer and the liquid resistant layer in juxtaposition to form a laminate, attaching the fibrous layer and the liquid resistant layer at a plurality of spaced-apart bond locations, heating the bonded laminate to a temperature that activates the latent shrinkability of the liquid resistant layer, and allowing the heated laminate to retract such that the liquid resistant layer shrinks and said fibrous layer forms gathers between said bond locations, thereby forming a three dimensional texture and heat annealing the laminate. Ex. 1007, 1:54-64. Jacobs also provides “three dimensionally texturized laminate having a fibrous layer and nonelastic liquid resistant layer.” Id. at 1:65-66. In Jacobs, “a three dimensionally texturized liquid resistant laminate containing at least one fibrous layer and at least one liquid resistant layer . . . are placed in juxtaposition and bonded to impart spaced-apart bond sites, forming a unitary laminate” that is “thermally annealed.” Ex. 1007, 2:66- 3:6. “The laminate provides highly desirable properties including improved loft, softness, cloth-like texture and pleasing gathered appearance.” Id. at 3:7-9. “[T]he liquid resistant layer exhibits a higher level of latent shrinkability than the fibrous layer” and the “thin thermoplastic material (e.g., film or microfiber web) is drawn or oriented to improve strength properties of the material in the oriented direction” and to achieve “vapor transmittability and a more economical use of the material.” Id. at 3:46-56. The film is passed through heated rollers “desirably between the softening temperature and the melting point,” and “particularly desirable stretching temperatures for the liquid resistant layer are in the range between IPR2020-01477 Patent 8,152,788 B2 19 about 60° C. and about 120° C.” Ex. 1007, 4:9-21. The film is passed through more rollers “to apply a stretching tension to stretch and orient the molecules of the film.” Id. at 4:21-39. The stretched film is cooled “below the softening temperature of the film” by chilled rollers and placed juxtaposed with a fibrous web to form a laminate. Id. at 4:46-53. The bonded laminate is “thermally annealed” via heated rollers to “a suitable range for the annealing temperature . . . between about 5° C. and about 30° C. higher than the stretching temperature.” Id. at 5:24-43. While traveling through subsequent rollers and nip, “the heated film layer of the laminate shrinks and thermally anneals” with a “sequentially further shrinking and annealing.” Id. at 5:48-63. “During the annealing process, the shrinkage of the film layer causes the fibrous layer, which has a lower latent shrinkage than the film layer, to gather and bulk up between adjacent bond sites, forming a three dimensionally texturized laminate and improving textural properties of the laminate.” Ex. 1007, 6:6-11. “The resulting annealed laminate is three dimensionally texturized and thermally stable, and the laminate exhibits highly desirable textural and visual properties.” Id. at 6:23-26. Jacobs’s “laminate 60 has a plurality of spaced-apart bond sites 62 that attach the fibrous layer 64 and the liquid resistant layer 66,” and “the fibrous layer 64 of the texturized laminate 60 is gathered between the bond sites 62” to form “loop-like gathers that impart the three dimensional texture in the laminate.” Ex. 1007, 6:30-38. Jacobs states that “[t]he three dimensionally texturized laminate of the present invention exhibits soft, drapable, lofty characteristics,” “provides improved breathability when a breathable liquid resistant layer is utilized,” and “is highly useful for various IPR2020-01477 Patent 8,152,788 B2 20 applications where, for example, cloth-like texture and liquid resistance are required,” such as a “diaper outer cover.” Id. at 9:32-43. 6. Anderson (Ex. 1008) Anderson “relates to an improved breathable web and an economical method for advantageously modifying the physical properties of a web for use as a component of a disposable absorbent article, and to disposable articles incorporating such modified webs.” Ex. 1008, 1:8-12. Anderson states that “[i]t is further desirable that the improved material has a soft, cloth-like outer surface and extensibility useful for comfort and fit provided by absorbent articles containing such a material.” Ex. 1008, 2:41-44; see also id. at 1:28-34 (describing that passage of moisture vapor improves comfort). Anderson also states that “webs may be films, nonwovens, or composites of films and nonwoven webs, such as laminates.” Id. at 3:8-9. Anderson’s method modifies the web, and “the resultant microporous web is breathable to air or vapor, but acts as a liquid barrier under the impact pressure commonly imposed by the wearer of an absorbent article.” Id. at 2:65-3:1. Anderson’s “modified web can have a soft, cloth like surface and extensibility for improved fit and wearer comfort.” Id. at 3:5-7. Anderson describes web 5 being drawn or extruded and fed to opposed forming rolls 8, 9. Ex. 1008, 5:49-6:17, Figs. 1, 3, 4. Figure 2 of Anderson is reproduced below. IPR2020-01477 Patent 8,152,788 B2 21 Figure 2 shows “a fragmentary perspective view of a pair of closely- spaced forming rolls each having alternating and interengaging peripheral teeth and grooves.” Ex. 1008, 3:29-31. Anderson states that its process modifies the physical properties of a web, and “[w]hen the web materials, such as nonwoven webs, films, or laminates thereof, are incorporated in a disposable absorbent article,” the properties can be modified such that the “web more easily . . . conforms with and adapts to the contours of the body of a wearer of a disposable article, both during application of the article to the body as well as while being worn and being subjected to loads as a result of body movements of the wearer.” Id. at 11:1-11:11, 11:23-46. Anderson states that “[t]he improved fit and adaptability to changing wearing conditions leads to greater wearer comfort.” Id. at 11:46-48. According to Anderson, its “modification process and apparatus . . . advantageously impart breathability to the modified film while imparting minimal adverse effect on the leakage performance of the modified web.” Ex. 1008, 12:12-17; see also id. at 16:4-5 (stating that “such a microporous web has good breathability and good fluid impermeability”). IPR2020-01477 Patent 8,152,788 B2 22 In another embodiment, Anderson joins nonwoven web 5 with polymeric film 11 “to provide a composite web 12 that can be utilized as a backsheet for a disposable absorbent article, such as a disposable diaper, or the like,” and film 11 can “form[] one layer of a composite backsheet that includes a liquid-impervious barrier film and at least one layer of a thin, nonwoven sheet that is attached to at least one surface of the film.” Ex. 1008, 17:49-58; see also id. at 17:65-18:51 (describing how the film and nonwoven can be joined). 7. Fernfors (Ex. 1045) Fernfors “relates to an absorbent article, such as a diaper or an incontinence guard, which is provided with a belt.” Ex. 1045 ¶ 2. Figure 1 of Fernfors is reproduced below. Figure 1 “schematically and with a cut-away portion shows an absorbent article.” Ex. 1045 ¶ 16. Absorbent article 1 includes liquid- IPR2020-01477 Patent 8,152,788 B2 23 pervious topsheet 2, substantially liquid-impermeable backsheet 3, absorbent body in between, and belt 9, 9’ attached to back portion 6 to be attached to front portion 5. Id. ¶¶ 22, 27, 33. “[B]elt halves 9, 9 can be attached to the topsheet 2 within the bonding areas 13, 13'.” Ex. 1045 ¶ 32. “[P]ieces of reinforcement material (only shown in FIG. 6) are permanently attached to opposite edge portions of the topsheet, wherein the insides of one end of the belt halves within bonding areas are attached to the topsheet via the pieces of reinforcement material.” Id. ¶ 30. E. Obviousness Based on Benning and Karami ’626 Petitioner provides a chart with labels for the limitations of each challenged claim. Pet. vii-x. Petitioner challenges claims 1-4, 6, 7, 10, 11, 14, and 16-20 as unpatentable over Benning and Karami ’626 with citations to the asserted references and declarant testimony. Pet. 48-68. Petitioner also challenges, with citations to the record, claims 5, 7-9, 12, 13, 15, and 21 as unpatentable over Benning, Karami ’626, and at least one of Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, and Fernfors. Id. at 69-86. Petitioner further challenges claims 1-4, 6, 7, 10, 14, 16, 17, 19, and 20 as unpatentable over Benning, Karami ’626, and Stupperich. Id. at 86-91. For the challenges based on Benning and Karami ’626, Patent Owner responds that Petitioner fails to show that one of ordinary skill in the art would have modified Benning with the teachings of Karami ’626 in the manner asserted by Petitioner. PO Resp. 41-50. Patent Owner also responds that the proposed modification lacks “retaining forces between said mechanical closure means and said outer face of said main part are lower than retaining forces between said mechanical closure means and said outer face of said side parts in said front area” and that the retaining forces would IPR2020-01477 Patent 8,152,788 B2 24 not be sufficient to hold and fasten the diaper. Id. at 50-56. Patent Owner further responds that one of ordinary skill in the art would not have modified Benning in view of Stupperich as proposed by Petitioner and that the other relied-upon references fail to cure the deficiencies asserted by Patent Owner. Id. at 56-58, 62. Patent Owner additionally provides separate arguments for claims 2 and 3. Id. at 59-61. For the reasons below, a preponderance of the evidence persuades us that Petitioner’s proposed combinations including Benning and Karami ’626 teach or suggest the limitations of claims 1-21 and that one of ordinary skill in the art would have combined these references in the manner asserted by Petitioner with a reasonable expectation of success. 1. Analysis of Claim 1 a) An absorbent incontinence diaper comprising: Petitioner argues, and Patent Owner does not dispute, that Benning teaches “an absorbent incontinence diaper for adults.” Pet. vii (labeling as “1[p]”), 56 (citing Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶¶ 62-63); PO Resp. 41- 62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches an “incontinence article” with “absorbent core 28,” as illustrated in Benning’s Figure 4. Ex. 1002 ¶ 53. We also credit Petitioner’s declarant testimony regarding the preamble because the cited portions of Benning support it. Ex. 1012 ¶¶ 62-63 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). Based on the full record, because Benning describes an incontinence article with absorbent core 28, Petitioner persuades us that Benning teaches the preamble of claim 1. IPR2020-01477 Patent 8,152,788 B2 25 b) a main part having an inner face directed toward a user body and an outer face directed away from the user body, Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 teaches the above-quoted limitation. Pet. vii (labeling the limitation as “1[a]”), 56 (citing Ex. 1002 ¶ 53, Figs. 5, 6; Ex. 1012 ¶¶ 62- 63); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches main body portion or chassis 20 with crotch region 26 that is “positioned between the legs of a wearer when the hygienic article is applied to a wearer” and fluid- impermeable underlayer 30 that can “form the outer visible side of the incontinence article.” Ex. 1002 ¶ 53, Fig. 4. We also credit Petitioner’s declarant testimony regarding the recited main part because the cited portions of Benning support it. Ex. 1012 ¶¶ 62-63 (citing Ex. 1002 ¶¶ 2, 3, 29, 30, 33, 53-55, Figs. 4, 5). Based on the full record, because Benning’s incontinence article has main body portion 20 with crotch portion 26 applied to a wearer and fluid- impermeable underlayer 30 forming an outer visible side, Petitioner persuades us that Benning teaches “a main part having an inner face directed toward a user body and an outer face directed away from the user body.” c) said main part having an absorption body and a backsheet on a side of said absorption body directed away from the user body, Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 includes absorbent core 20 and underlayer 30 on the side of absorbent core 28 away from a user, thereby teaching the above-quoted limitation. Pet. vii (labeling the limitation as “1[b]”), 56-57 (citing Ex. 1002 IPR2020-01477 Patent 8,152,788 B2 26 ¶ 53, Figs. 4-6; Ex. 1012 ¶ 63); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches main body portion or chassis 20 with absorbent core 28 having fluid-impermeable underlayer 30 that can “form the outer visible side of the incontinence article.” Ex. 1002 ¶ 53, Fig. 4. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 63 (citing Ex. 1002 ¶¶ 3, 33, 53, Figs. 4, 5). Based on the full record, because Benning’s incontinence article includes main body portion 20 having absorbent core 28 with fluid- impermeable underlayer 30 forming an outer visible side, Petitioner persuades us that Benning teaches “said main part having an absorption body and a backsheet on a side of said absorption body directed away from the user body.” d) said absorption body having a smaller width than said backsheet, Petitioner argues, and Patent Owner does not dispute, that Benning shows that absorbent core 28 has a smaller width than underlayer 30 and thus teaches the above-quoted limitation. Pet. vii (labeling the limitation as “1[c]”), 57 (citing Ex. 1002, Figs. 4-6; Ex. 1012 ¶ 63); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that Benning shows that absorbent core 28 has a smaller width than underlayer 30. Ex. 1002, Figs. 4-6. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 63 (citing Ex. 1002 ¶¶ 3, 33, 53, Figs. 4, 5). IPR2020-01477 Patent 8,152,788 B2 27 Based on the full record, because Benning’s incontinence article has absorbent core 28 with a smaller width than underlayer 30, Petitioner persuades us that Benning teaches “said absorption body having a smaller width than said backsheet.” e) said main part also having a rear area, a front area and a crotch area lying between said rear area and said front area, Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 has front region 22, back region 24, and crotch region 26 in between, thereby teaching the above-quoted limitation. Pet. vii (labeling the limitation as “1[d]”), 57 (citing Ex. 1002 ¶ 53, Fig. 4; Ex. 1012 ¶ 62); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portions of Benning teach and show that “main body portion 20 comprises a front region 22, a back region 24 and a crotch region 26.” Ex. 1002 ¶ 53, Fig. 4. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 62 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). Based on the full record, because Benning’s incontinence article includes main body portion 20 having back region 24, front region 22, and crotch region 26 in between, Petitioner persuades us that Benning teaches “said main part also having a rear area, a front area and a crotch area lying between said rear area and said front area.” f) said main part further defining first and second side edges; Petitioner argues, and Patent Owner does not dispute, that Benning’s chassis 20 defines lengthwise edge 40 on its sides, thereby teaching the above-quoted limitation. Pet. vii (labeling the limitation as “1[e]”), 57 IPR2020-01477 Patent 8,152,788 B2 28 (citing Ex. 1002 ¶ 55, Fig. 4; Ex. 1012 ¶ 62); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portion of Benning teaches and shows “matching lengthwise edge 40 of the main body portion 20.” Ex. 1002 ¶ 55, Fig. 4. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 62 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). Based on the full record, because Benning’s incontinence article includes main body portion 20 having lengthwise edges 40, Petitioner persuades us that Benning teaches “said main part further defining first and second side edges.” g) side parts joined to said first and said second side edges, said side parts having an inner face and an outer face; and Petitioner argues, and Patent Owner does not dispute, that Benning’s material sections or wings 34 attached to edge sections 36 of chassis 20 teach the above-quoted limitation. Pet. vii (labeling the limitation as “1[f]”), 57 (citing Ex. 1002 ¶¶ 3, 29, 54-56, Figs. 4-6; Ex. 1012 ¶ 62); PO Resp. 41- 62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portions of Benning teach that “[i]n the back region 24 on both sides of the main body portion 20, a material section 34 forming side flaps or lateral sections is attached to a lengthwise edge section 36 of the main body portion 20.” Ex. 1002 ¶ 54; see also id. ¶¶ 3 (stating that “the material section forming the side parts on the incontinence article, often described as ‘wings,’ can breathe”), 29 (describing “[t]he extension of a material section attached to the main body portion”), 55 IPR2020-01477 Patent 8,152,788 B2 29 (describing that material sections 34 are shown “folded over themselves” in Figs. 4, 5), 56 (describing how material section 34 are folded to be grasped and unfolded). Figure 4 shows that edge 36 is a portion of edge 40 that overlaps with material section 34. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 62 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). Based on the full record, because Benning’s incontinence article has material sections 34 attached to both sides of main body portion 20 and material sections 34 have opposite faces, Petitioner persuades us that Benning teaches “side parts joined to said first and said second side edges, said side parts having an inner face and an outer face.” h) mechanical closure means having mechanical closure aids, Petitioner argues, and Patent Owner does not dispute, that Benning’s closures 42 teach the above-quoted limitation. Pet. vii (labeling the limitation as “1[g]”), 58 (citing Ex. 1002 ¶¶ 30, 55); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that a relied-upon portion of Benning teaches that “material section 34 has two closures 42 in the form of closing tapes 44” and that “tapes 44 interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20.” Ex. 1002 ¶ 55. We also find that Benning teaches that “[t]o close the incontinence article when it is worn by a user, the material sections have closures which can be designed to grip mechanically.” Id. ¶ 30. We further find that material sections 34 “form[] side flaps or lateral sections” that can be folded and extended. Id. ¶¶ 29, 54- 56, Figs. 4, 5. IPR2020-01477 Patent 8,152,788 B2 30 As discussed in more detail below, Petitioner argues that one of ordinary skill in the art would have been motivated to use Karami ’626’s hook-type fasteners for Benning’s fasteners 42, 44. Pet. 54 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶¶ 114-116); see also id. at 52-54 (asserting what Karami ’626 teaches regarding its hook-type fasteners) (citing Ex. 1004 ¶¶ 3, 4, 6- 11, 37-41, 55, Figs. 9, 10; Ex. 1012 ¶¶ 104-107, 114-116). Regarding what Karami ’626 teaches about its hook-type fasteners, we find that the relied- upon portions teach “a disposable absorbent article which, in one preferred embodiment, incorporates a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional non-woven material” and that “the fastener assembly provides size adjustability.” Ex. 1004 ¶¶ 7, 10. We credit Petitioner’s declarant testimony that minihooks can releasably engage with conventional nonwovens because Karami ’626 supports it. Ex. 1012 ¶ 112 (citing Ex. 1004 ¶¶ 57-60, 70). Because Benning’s incontinence article includes closures 42 that can “interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20” and Benning’s closures “can be designed to grip mechanically” (Ex. 1002 ¶¶ 30, 55), we find that Benning’s closures 42, in accordance with our interpretation of “mechanical closure means” determined above, perform the function of “‘detachabl[y] fasten[ing]’ to outer faces of a diaper’s main and side parts” and are each “a ‘strip [of] material’ . . . with one or more adhesive regions.” Ex. 1001, 4:29- 62, 12:33-45, 15:24-29, claim 1; Ex. 1012 ¶¶ 50-52. Also, because Karami ’626’s “disposable absorbent . . . article incorporates a fastener assembly consisting exclusively of a minihook fastener element,” we find that Karami ’626’s fastener assembly performs IPR2020-01477 Patent 8,152,788 B2 31 the function of “‘detachabl[y] fasten[ing]’ to outer faces of a diaper’s main and side parts” and are each “a ‘strip [of] material’ including ‘hooks of a hook-and-loop fastener.” We address below whether one of ordinary skill in the art would have made Petitioner’s proposed modification. Based on the full record, Petitioner persuades us that Benning and Karami ’626 teach “mechanical closure means having mechanical closure aids.” i) said closure means cooperating with said side parts at said rear area, Petitioner argues, and Patent Owner does not dispute, that Benning’s closures 42 attach to its back wings 34. Pet. vii (labeling the limitation as “1[h]”), 58 (citing Ex. 1002 ¶¶ 30, 54, 55, Fig. 4; Ex. 1012 ¶ 62); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portions of Benning teach and show closure means 42 attached to edges of main body portion 20. Ex. 1002 ¶¶ 54 (“In the back region 24 on both sides of the main body portion 20, a material section 34 forming side flaps or lateral sections is attached to a lengthwise edge section 36 of the main body portion 20.”), 55 (“[M]aterial section 34 has two closures 42 in the form of closing tapes 44”), Fig. 4. We also credit Petitioner’s declarant testimony because the cited portions of Benning support it. Ex. 1012 ¶ 62 (citing Ex. 1002 ¶¶ 2, 29, 30, 53-55, Figs. 4, 5). Based on the full record, because Benning’s incontinence article has material section 34 attached to main body portion 20 at back region 24 and material section 34 has closures 42, Petitioner persuades us that Benning teaches “said closure means cooperating with said side parts at said rear area.” IPR2020-01477 Patent 8,152,788 B2 32 j) said closure means being structured and dimensioned for detachable fastening to said outer face of said main part and to said outer face of said side parts in said front area, wherein retaining forces between said mechanical closure means and said outer face of said main part are lower than retaining forces between said mechanical closure means and said outer face of said side parts in said front area, For “said closure means being structured and dimensioned for detachable fastening to said outer face of said main part and to said outer face of said side parts in said front area,” Petitioner argues that Benning’s closures 42 interact with outside 46 of front region 22. Pet. vii (labeling the limitation as “1[i]”), 58 (citing Ex. 1002 ¶ 55). Petitioner also argues that Karami ’626 teaches fasteners designed to fasten detachably to conventional nonwovens. Id. (citing Ex. 1004 ¶¶ 7, 62-64, 70, 78; Ex. 1012 ¶¶ 113, 115). For “wherein retaining forces between said mechanical closure means and said outer face of said main part are lower than retaining forces between said mechanical closure means and said outer face of said side parts in said front area,” Petitioner argues that Benning teaches wings made of a nonwoven having a basis weight of 25-50 gsm and Karami ’626 teaches wings made of a nonwoven having 20-40 gsm, “optimally 34 gsm.” Pet. vii (labeling the limitation as “1[j]”), 59 (citing Ex. 1002 ¶ 32; Ex. 1004 ¶ 65). Petitioner also argues that Karami ’626’s backsheet or underlayer is a nonwoven having “15-30 gsm (optimally 20 gsm).” Id. (quoting Ex. 1004 ¶ 65). Petitioner further refers to its proposed modification of the Benning diaper in view of Karami ’626 so that the backsheet would have a lower basis weight nonwoven than the wings. Pet. 59. Petitioner contends that the higher basis weight nonwoven would have a greater retaining force because more loops would be available to engage hook fasteners. Id. (citing IPR2020-01477 Patent 8,152,788 B2 33 Ex. 1012 ¶ 120; Ex. 1040, 2:35-39; Ex. 1044, 5:3-7). Petitioner notes that the ’788 patent describes the same correlation. Id. (citing Ex. 1001, 7:19- 26, 13:34-41). As discussed below in more detail, Petitioner contends that it would have been obvious to use Karami ’626’s fastener in Benning and to use Karami ’626’s film nonwoven backsheet for Benning’s underlayer 30. Pet. 58. According to Petitioner, the modified Benning diaper would have fasteners that interact with an outer face of the backsheet and an outer face of front wings 34 with the claimed differing retaining forces. The parties dispute whether Petitioner’s proposed modification would have sufficient retaining forces to fasten and hold the modified diaper on a wearer and the recited difference in retaining forces. Because Petitioner contends that its proposed combination of Benning and Karami ’626 has the claimed retaining forces, we analyze these limitations below together with Petitioner’s proposed modifications to Benning in view of Karami ’626. k) wherein said side parts in said front and/or said rear area are folded upon themselves at least about one folding line extending in a longitudinal direction. Petitioner argues, and Patent Owner does not dispute, that Benning’s wings 34 are folded in the manner recited by the above-quoted limitation. Pet. vii (labeling the limitation as “1[k]”), 60 (citing Ex. 1002, Abstract, ¶¶ 6-8, 22, 24, 25, 29, 56-61; Ex. 1012 ¶ 65); PO Resp. 41-62 (disputing other limitations for proposed combinations including Benning and Karami ’626 and the asserted modifications to Benning). We find that the relied-upon portions of Benning teach “material sections which are folded over themselves at least along one fold line” (Ex. 1002 ¶ 6), “material sections folded over each other” (id. ¶¶ 7, 24, 25), IPR2020-01477 Patent 8,152,788 B2 34 “folded partial sections of the material sections” (id. ¶ 8), “any material section [that] is folded over itself along a fold line” (id. ¶ 22), “material section [that] is folded over itself along at least two fold lines so that a configuration with a Z-shaped cross section results” (id.), folder material sections being “advantageous” (id. ¶ 29), “material section 34 . . . folded over itself in a gate-fold format along three fold lines 50, 52, 54 extending in the lengthwise direction” (id. ¶ 56), “gripping area 58 for manually grasping the folded material section 34 to unfold” (id. ¶ 57), and “folded partial sections 60 of the material sections 34 [that] are releasably attached to each other in the folded configuration” (id. ¶ 58). We also credit the cited portion of Petitioner’s declarant testimony because the record supports it. Ex. 1012 ¶ 65 (citing Ex. 1002 ¶¶ 6-8, 19-21, 25, 34, 55-60, Figs. 4-6, 8). Because Benning’s incontinence article has material sections at back region 24 that are folded over themselves about at least one folding line extending in a longitudinal direction, Petitioner persuades us that Benning teaches “wherein said side parts in said front and/or said rear area are folded upon themselves at least about one folding line extending in a longitudinal direction.” l) Proposed Modifications (1) Film-Nonwoven Backsheet Petitioner argues that “Karami ’626’s diaper has a film-nonwoven backsheet” and such a backsheet prevented leakage because of the film and “promote[d] wearer comfort and visual appeal” because of its “cloth-like outer surface.” Pet. 51 (citing Ex. 1004 ¶¶ 62, 64; Ex. 1008, 1:51-67; Ex. 1012 ¶¶ 30, 31, 108, 112, 113; Ex. 1019, 1:55-2:32; Ex. 1023, 8:3-28; Ex. 1037 ¶ 60). According to Petitioner, one of ordinary skill in the art would have understood Karami ’626’s film-nonwoven laminate to be “particularly IPR2020-01477 Patent 8,152,788 B2 35 suited to the above benefits given its nonwoven’s lower (e.g., ‘optimally 20 gsm’) basis weight, which was known to promote ‘a generally cloth-like texture.’” Id. (citing Ex. 1012 ¶ 113; Ex. 1023, 8:18-24; Ex. 1037 ¶ 60). Petitioner, thus, argues that the ordinarily skilled artisan “would have been motivated to use a film-nonwoven laminate like Karami ’626’s for Benning’s underlayer 30” because the film-nonwoven laminate would “a) provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper; and b) improve adjustability by enabling fasteners like Karami ’626’s to ‘[e]ngage directly with any portion of [a diaper’s] nonwoven surface[s]’ to secure the diaper on a wearer.” Pet. 52 (alterations in original) (citing Ex. 1004 ¶ 40; Ex. 1012 ¶ 112). (2) Fasteners According to Petitioner, Karami ’626 explains that the fasteners used in Benning were disadvantageous because they required landing zones that limited where they could be secured and, thus, limited size adjustability. Pet. 52 (citing Ex. 1004 ¶¶ 3, 4, 6; Ex. 1012 ¶ 114). Petitioner contends that Karami ’626’s hook-type fasteners can engage directly with a conventional nonwoven that can be used for a diaper’s backsheet and wings and, thus, accommodate small- and large-waisted wearers. Id. (citing Ex. 1004 ¶¶ 6- 11, 39-41, 55; Ex. 1012 ¶¶ 104, 107, 114, 115). Petitioner specifically points to Karami ’626’s T-shaped diaper to explain how Karami ’626’s hook-type fasteners can be used for small- and large-waisted users. Pet. 53-54 (citing Ex. 1004 ¶¶ 37, 38, Figs. 1, 7; Ex. 1012 ¶¶ 105-107, 116). Petitioner also argues that Karami ’626 explains that similar or analogous improvements in fit can be achieved for Karami ’626’s integral-chassis diaper 14 with rear wings that would have been understood to be able to engage with front wings for a larger-waisted IPR2020-01477 Patent 8,152,788 B2 36 wearer or a central portion of the front for a smaller-waisted wearer. Id. at 54 (citing Ex. 1004 ¶¶ 37-40, 55, Figs. 9, 10; Ex. 1012 ¶¶ 106, 107, 116). Petitioner, thus, argues that one of ordinary skill in the art would have been motivated to use Karami ’626’s hook-type fasteners for Benning’s fasteners 42, 44 “at least to improve size-adjustability by directly engag[ing] with a backsheet nonwoven . . . or its nonwoven wings 34.” Pet. 54 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶¶ 114-116). Petitioner also argues that Benning’s wings 34 are “preferably spunbond material” with a surface weight of 25-50 gsm, which is like Karami ’626’s film-nonwoven backsheet, so that Karami ’626’s hook-type fasteners can engage Benning’s preferred wing material. Id. (citing Ex. 1004 ¶¶ 39, 40; Ex. 1012 ¶ 115). Petitioner further argues that “implementing Karami ’626’s teachings would have involved attaching hook-type fasteners in place of Benning’s tapes 44 such that the hooks would engage either of the front wings 34 for larger-waisted users, or backsheet for smaller-waisted users (like Karami ’626’s T-shaped and integral diapers, supra).” Id. at 55 (citing Ex. 1012 ¶¶ 115, 116). (3) Lower Basis Weight Nonwoven for a Backsheet Petitioner argues that modifying the Benning diaper to include a film- nonwoven backsheet like Karami ’626’s would have resulted in the backsheet being “optimally 20 gsm” and wings 34 being 25-50 gsm. Pet. 55 (citing Ex. 1002 ¶ 32; Ex. 1004 ¶ 65; Ex. 1012 ¶ 112, 113, 117, 118). Petitioner also argues that Karami ’626 teaches the use of different basis weight nonwovens for its wings and backsheet, specifically noting that Karami ’626’s T-shaped diaper has “20-40 gsm (optimally 34 gsm)” preferred for its wings and “15-30 gsm (optimally 20 gsm)” preferred for its backsheet. Id. (citing Ex. 1004 ¶ 65; Ex. 1012 ¶ 118). Petitioner, thus, argues that one of ordinary skill in the art would have understood that a IPR2020-01477 Patent 8,152,788 B2 37 higher basis weight nonwoven for the wings of Benning’s diaper is preferred, “given that, like Karami ’626’s T-shaped diaper, its wings were separate from the backsheet, would encircle a wearer’s waist when worn, and would be engaged by fasteners.” Id. at 55-56 (citing Ex. 1012 ¶ 118). Petitioner further argues that one of ordinary skill in the art would have “recognized that higher-basis-weight (e.g., 18-60 gsm, such as 30 gsm) wings would have desirably promoted diaper-strength while lower-basis- weight nonwovens (e.g., 10-30 gsm, such as 20 gsm) for backsheets would have desirably promoted wearer-comfort.” Pet. 56 (citing Ex. 1012 ¶ 118). (4) Patent Owner’s Response Patent Owner responds that Petitioner fails to show that Benning discloses “said closure means being structured and dimensioned for detachable fastening to said outer face of said main part and to said outer face of said side parts in said front area” (limitation 1[i]) and “wherein retaining forces between said mechanical closure means and said outer face of said main part are lower than retaining forces between said mechanical closure means and said outer face of said side parts in said front area” (limitation 1[j]) because the relied-upon fasteners would not have the claimed differing forces. PO Resp. 41, 50. Patent Owner also responds that one of ordinary skill in the art would not have modified Benning in view of Karami ’626 in the manner Petitioner asserts. Id. at 42-43 (citing Pet. 51- 52, 55-56; Ex. 2004 ¶¶ 158-170). According to Patent Owner, Petitioner proposes engaging the side flaps of Benning with the front of Karami ’626’s T-shaped diaper, but those portions were not designed to engage fasteners. PO Resp. 41 (citing Ex. 2004 ¶¶ 158-162). Patent Owner argues that Benning teaches making IPR2020-01477 Patent 8,152,788 B2 38 its side flaps more flexible, so they would not be heavier and more rigid than its underlayer. Id. at 41-42. In Patent Owner’s view, Benning’s diaper and Karami ’626’s T- shaped diaper “are designed differently and operate fundamentally differently,” and one of ordinary skill in the art would not have replaced Benning’s underlayer which engages fasteners with Karami ’626’s backsheet which does not engage fasteners. PO Resp. 43 (citing Ex. 2004 ¶¶ 97, 158-170). Patent Owner provides its understanding of how Karami ’626’s T-shaped diaper has fasteners that engage wings or a belt. Id. (citing Ex. 1004 ¶¶ 37, 35, Fig. 1; Ex. 2003, 163:18-164:18; Ex. 2004 ¶¶ 81, 82, 160-162, 165, 167). Patent Owner also explains how it understands the fasteners of Benning’s diaper engage the front, not side flaps. Id. at 43-44 (citing Ex. 1002 ¶¶ 28, 54, 55; Ex. 2004 ¶¶ 76, 165). Patent Owner, thus, argues that one of ordinary skill in the art would not have made Petitioner’s proposed modification because “modifying the underlayer does not turn Benning’s diaper into a T-shaped diaper or alter the function of the side flaps, which were not designed to engage fasteners.” Id. at 44 (citing Ex. 2004 ¶¶ 165-167). Patent Owner also contends that Petitioner’s declarant did not understand how Karami ’626’s T-shaped diaper worked and erroneously thought its fasteners engaged the backsheet. PO Resp. 44 (citing Ex. 2003, 143:7-149:3, 151:1-158:13). According to Patent Owner, Petitioner’s declarant agreed with Patent Owner’s understanding of how Karami ’626’s T-shaped diaper worked. Id. (citing Ex. 2003, 163:18-21, 164:13-19). Patent Owner also responds that one of ordinary skill in the art would have understood that Karami ’626 does not teach fasteners engaging the front of its T-shaped diaper, does not care if a nonwoven is used for the IPR2020-01477 Patent 8,152,788 B2 39 front, and “is only concerned about the wings because that is the only surface that engages fasteners.” PO Resp. 45 (citing Ex. 1004 ¶ 16; Ex. 2003, 163:18-21, 164:13-19; Ex. 2004 ¶¶ 81-86, 159, 160, 165-167). Patent Owner, thus, argues that one of ordinary skill in the art would not have used Karami ’626’s front portion which does not engage fasteners as Benning’s underlayer which does engage fasteners. Id. (citing Ex. 2004 ¶ 167). Regarding size adjustability as a reason for modifying, Patent Owner responds that one of ordinary skill in the art would not have made the proposed modification because Karami ’626 does not teach fasteners that can engage anywhere on a diaper and “expressly ties size adjustability to the T-shaped diaper and use of the wings.” PO Resp. 45-46 (citing Pet. 52-55; Ex. 1004 ¶¶ 40, 41, 50, 51; Ex. 1012 ¶¶ 107, 115, 116; Ex. 2003, 161:21- 163:11, 163:18-21, 164:13-19; Ex. 2004 ¶¶ 83-86, 168-170). According to Patent Owner, one of ordinary skill in the art would have understood Karami ’626 to be teaching that “fasteners can engage any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 of wings 40.” Id. at 46- 47 (citing Ex. 1004 ¶¶ 40, 47, 49, 74; Ex. 2003, 203:4-19; Ex. 2004 ¶¶ 85- 86). Patent Owner, thus, argues that one of ordinary skill in the art would not have considered size adjustability as a reason for modifying Benning because Karami ’626 teaches size adjustability based on fasteners engaging different parts of wings, not an underlayer. Id. at 47 (citing Ex. 2004 ¶ 169). Patent Owner also argues that size adjustability would not have been a reason to use nonwovens with different basis weights because one of ordinary skill in the art would have understood that size adjustability is provided by fasteners engaging the same nonwoven, not nonwovens of different basis weights. PO Resp. 47 (citing Ex. 2004 ¶ 143). IPR2020-01477 Patent 8,152,788 B2 40 Regarding the use of higher basis weight nonwovens for the side flaps, Patent Owner responds that one of ordinary skill in the art would not have used a higher basis weight because “Benning expressly teaches that the side flaps should be designed for comfort” which “would lead to a lower basis weight nonwoven at the sides, not a higher one.” PO Resp. 48 (citing Pet. 55-56; Ex. 1002 ¶ 33; Ex. 1012 ¶ 118; Ex. 2004 ¶¶ 182-183). Patent Owner also argues that Benning teaches that the sides should be less rigid than the backsheet, and, thus, one of ordinary skill in the art would not have made the sides heavier and more rigid than the underlayer. Id. (citing Ex. 1002 ¶ 33; Ex. 2004 ¶¶ 182, 183). Patent Owner further argues that Benning teaches that the side flaps are wider than a belt in a T-shaped diaper, which would make the side flaps even heavier in Petitioner’s modified Benning diaper, and that higher basis weight nonwovens would have been more expensive. Id. at 49 (citing Ex. 1002 ¶ 28; Ex. 1012 ¶ 118; Ex. 2004 ¶ 183). Patent Owner contends that Petitioner does not address these teachings. Id. Patent Owner also responds that Petitioner’s citation to Karami ’626 relates to T-shaped diapers with fasteners that do not engage the front of the diaper. PO Resp. 49 (citing Pet. 55; Ex. 1004 ¶ 65; Ex. 2003, 163:18-21, 164:13-19; Ex. 2004 ¶¶ 89-91). Patent Owner asserts that one of ordinary skill in the art would have understood Karami ’626’s preference for different basis weight nonwovens applied to T-shaped diapers, not diapers like Benning’s. Id. at 49-50 (citing Ex. 2004 ¶ 184). In Patent Owner’s view, one of ordinary skill in the art seeking to modify Benning’s underlayer in view of Karami ’626 would have used higher basis weight nonwoven for Benning’s underlayer because Karami ’626’s fasteners engage a higher basis weight nonwoven wing or belt. PO IPR2020-01477 Patent 8,152,788 B2 41 Resp. 50 (citing Ex. 2004 ¶ 184). Patent Owner argues that Petitioner has not established that Karami ’626’s backsheet can engage fasteners “to fasten and hold the modified diaper” because the front of the T-shaped diaper does not engage fasteners. Id. at 50-51 (citing Ex. 2003, 163:18-164:18; Ex. 2004 ¶¶ 82-86, 159-162, 171-173). Patent Owner also argues that “Karami ’626’s mention of using a 20 gsm nonwoven at the front of that diaper is not evidence that the nonwoven could engage fasteners or engage them sufficiently to fasten and hold the diaper.” Id. at 51. According to Patent Owner, Petitioner does not allege that its asserted fasteners are “structured and dimensioned for detachable fastening to said outer face of said main part” and does not explain why those fasteners would necessarily be able to fasten detachably because the proposed combination has “a nonwoven from Karami ’626 that does not engage fasteners a[t] the outer face.” PO Resp. 51 (citing Pet. 58). Patent Owner also argues that Petitioner merely contends that the fasteners can detachably fasten to conventional nonwovens, not the nonwoven from Karami ’626. Id. (citing Pet. 58). Patent Owner further argues that Petitioner only contends that the fasteners would engage the outer face of underlayer 30, not detachably fasten to the outer face, as claimed. Id. (citing Pet. 58). Patent Owner additionally argues that Karami ’626’s nonwoven includes interstices or holes that would make it hard for a hook fastener to engage the nonwoven. Id. (citing Ex. 1004 ¶ 63; Ex. 2004 ¶ 92). Regarding the retaining forces being sufficient to fasten and hold the diaper, Patent Owner argues that Petitioner does not show or explain that the retaining forces of its proposed combination are sufficient to fasten and hold the diaper, as acknowledged to be required by the claim. PO Resp. 51-52 (citing Pet. 36, 59). Patent Owner also argues that, because fasteners do not IPR2020-01477 Patent 8,152,788 B2 42 engage Karami ’626’s 20 gsm backsheet, one of ordinary skill in the art would not have expected fasteners to engage such a nonwoven sufficiently to fasten and hold a diaper. PO Resp. 52 (citing Ex. 2004 ¶ 173). Patent Owner turns to Karami ’772 to argue that Karami ’772 did not even test an untreated 20 gsm nonwoven with fastener Binder 25445 and that one of ordinary skill in the art would have understood from Karami ’772 that a 20 gsm backsheet would need to be treated to engage a fastener to fasten and hold a diaper. Id. (citing Ex. 1003 ¶ 41, Table 1; Ex. 1004 ¶¶ 5, 13, 78; Ex. 2004 ¶ 173). Patent Owner, thus, argues that one of ordinary skill in the art would have understood that Petitioner’s modified Benning diaper with an untreated 20 gsm nonwoven would not have sufficient retaining forces to fasten and hold the diaper. Id. (citing Ex. 2004 ¶ 173). Regarding “closure means being structured and dimensioned for detachable fastening to said outer face of said main part and to said outer face of said side parts in said front area,” Patent Owner responds that Benning’s “side flaps were not designed to fasten and hold the diaper” and that “Benning’s diaper is designed to have closures engage the front of the diaper,” not any other location. PO Resp. 53 (citing Pet. 55, 57; Ex. 1002 ¶¶ 3, 30, 55; Ex. 1012 ¶ 117; Ex. 2004 ¶¶ 76, 174, 175). In Patent Owner’s view, “[t]he side flaps in Benning were designed for comfort, not for engaging fasteners or securing the diaper.” Id. (citing Ex. 1002 ¶ 30). Patent Owner argues that “Petitioner has not shown that the side flaps necessarily would have been able to engage closures/fasteners to fasten and hold the diaper.” Id. Regarding Petitioner’s modified diaper having fasteners able to engage front wings 34 or backsheet with different retaining forces, Patent Owner responds that “Petitioner never directly alleges that the modified IPR2020-01477 Patent 8,152,788 B2 43 Benning diaper could be fastened and held on the wearer” and “has not shown that the claimed features of detachable fastening and holding the diaper and differing retaining forces are necessarily present in the modified Benning diaper or the natural result of the Benning-’626 combination, as required for inherency.” PO Resp. 53-54 (citing Pet. 55, 59). Patent Owner also argues that, even if different basis weight nonwovens provided different retaining forces, “that does not mean the forces would be sufficient to fasten and hold the diaper.” Id. at 54. Patent Owner further argues that other factors affect how well a nonwoven engages a fastener, and that Petitioner does not address those other factors. PO Resp. 54 (citing Ex. 2004 ¶¶ 95-118, 176-181). Patent Owner contends that (1) Petitioner’s declarant acknowledged, (2) Karami ’626 teaches, and (3) Karami ’772 shows that other variables can affect how well a fastener engages a nonwoven. Id. at 54-55 (citing Ex. 1003, Table 1; Ex. 1004 ¶ 69; Ex. 1012 ¶ 133; Ex. 2003, 170:10-172:8). Patent Owner also contends that the challenged patent does not provide evidence that “differing retaining forces would have been inherent in the modified diaper,” and the challenged patent is being misread if it is relied on for that teaching. Id. at 55 (citing Pet. 59; Ex. 1001, 12:62-13:49, 14:47-15:52; Ex. 2004 ¶¶ 111- 118). Patent Owner, thus, argues that Petitioner fails to show “the claimed retaining forces are inherent or the requirement that the retaining forces fasten and hold the diaper are the natural result of the modified Benning diaper.” Id. at 56. (5) Petitioner’s Reply Petitioner replies that claim 1 does not have a requirement that the retaining forces are sufficient to hold the diaper on a wearer. Pet. Reply 1 (citing PO Resp. 10). Petitioner argues that the claim requires “detachable IPR2020-01477 Patent 8,152,788 B2 44 fastening” of the closure means to diaper parts, not the diaper to a wearer. Id. Petitioner also argues that “fastening” between the closure means and diaper parts is not necessarily the fastening between diaper and wearer because making such a correlation between those two types of fastenings requires knowledge of, for example, the closure mean’s size, type, and number; who the wearer is; and what activities the wearer engages in. Id. (citing Ex. 1054, 12:11-14:7). Petitioner further argues that the ’788 patent does not claim, leaves open, and does not disclose such parameters. Id. Petitioner also replies that Patent Owner’s declarant only found support for retaining forces sufficient to hold the diaper on a wearer in the “general narrative” and claim 2 of the ’788 patent. Pet. Reply 1-2 (citing Ex. 1054, 6:7-7:24). Petitioner contends that, because Patent Owner’s declarant finds support in claim 2, his testimony confirms that the requirement for retaining forces to be sufficient to hold the diaper on a wearer is not in claim 1. Id. at 2 (citing Ex. 1054, 9:22-10:7, 11:9-12:11). Petitioner also contends that, if the requirement is implicit, it must necessarily be broad. Id. (citing Ex. 1054, 13:19-14:1, 14:25-16:12). Regarding Patent Owner’s argument that the Benning and Karami ’626 diapers are designed and operate differently, Petitioner replies that the argument relies on an incorrect premise that fasteners cannot engage Karami ’626’s backsheet and relies on testimony directed to Karami ’626’s specific illustration. Pet. Reply 15-16 (citing PO Resp. 43-45; Ex. 1004 ¶ 42; Ex. 2003, 147:16-148:11, 157:11-158:13, 163:18-21, 197:15-198:2). Petitioner argues that Patent Owner’s references to Karami ’626’s “belt backsheet” does not defeat Karami ’626’s other teaching that separately addresses wings 40 and backsheet 32. Id. at 16 (citing PO Resp. 46-47; Ex. 1004 ¶¶ 36, 47, 49, 74). IPR2020-01477 Patent 8,152,788 B2 45 Petitioner also argues that Karami ’626 teaches a fastener with minihook elements and a nonwoven that provides size adjustability and that teaching extends beyond Karami ’626’s T-shaped diaper. Pet. Reply 16-17 (citing Ex. 1004 ¶¶ 8, 10, 11, 55, Figs. 9, 10; Ex. 1012 ¶¶ 104-107, 115, 116). Petitioner further argues that “[t]he prior art recognizes Karami ’626’s fastening system is not limited to wing-only attachment” and, as explained by Petitioner’s declarant, one of ordinary skill in the art would have modified Benning in view of Karami ’626 for size adjustability. Id. at 17 (citing Pet. 52-55; PO Resp. 45-47; Ex. 1012 ¶¶ 113-116; Ex. 1028 ¶¶ 6, 7). Petitioner also replies that Patent Owner does not contest that an ordinarily skilled artisan would have wanted and could have achieved the proposed modification of Benning in view of Karami ’626 for size adjustability. Pet. Reply 17 (citing PO Resp. 42-47; Ex. 1054, 130:24- 131:9, 141:18-24; Ex. 2004 ¶ 96). Petitioner argues that fasteners engaging the front, but not side flaps, “underscores the desirability of adding wing- fastener engagement to achieve size adjustability as Karami ’626 indisputably teaches.” Id. at 17-18 (citing PO Resp. 43-47; Ex. 1012 ¶¶ 114-116). Petitioner further replies that Patent Owner’s argument that size adjustability is best achieved through same basis weight wing and backsheet nonwovens relies on conclusory declarant testimony and does not dispute that different basis weight wing and backsheet nonwovens can also achieve size adjustability. Pet. Reply 18 (citing PO Resp. 47). Petitioner additionally argues that “Petitioner’s argument is that the Benning-Karami ’626 diaper would have obviously-not inherently-included such fastener- engaging nonwovens for size adjustability” and Patent Owner does not IPR2020-01477 Patent 8,152,788 B2 46 dispute the ordinarily skilled artisan’s ability or motivation to modify Benning in view of Karami ’626. Id. (citing Pet. 52-55; PO Resp. 50-54). Regarding the claimed diaper holding requirement, Petitioner replies that Patent Owner’s arguments are not credible in view of the Benning- Karami ’626 diaper’s size adjustability. Pet. Reply 18-19 (citing PO Resp. 51-53). Petitioner contends that fasteners can engage Karami ’626’s backsheet. Id. at 19 (citing PO Resp. 50-51; Ex. 1004, Figs. 9, 10). Petitioner also contends that the modified underlayer would be Karami ’626’s backsheet which is a conventional nonwoven. Id. (citing Pet. 58; PO Resp. 51). Petitioner further contends that Karami ’626’s nonwovens are for engaging hook-type fasteners, and so their interstice size must be sufficient for hooks to engage fibers. Id. at 19-20 (citing PO Resp. 51; Ex. 1004, Abstract, ¶¶ 13-15, 63, 67; Ex. 1054, 43:3-44:21, 48:3-50:7, 51:14-16). Regarding Patent Owner’s argument that Karami ’626’s nonwoven would need to be treated to engage fasteners, Petitioner replies that Patent Owner makes a comparison of values with different units and Patent Owner’s declarant testifies that one of ordinary skill in the art would not rely on those values. Pet. Reply 20 (citing PO Resp. 52; Ex. 1004 ¶¶ 5, 13, 78; Ex. 2004 ¶¶ 68-72). Petitioner also argues that Karami ’626 teaches an untreated nonwoven that can securely engage fasteners when used in a diaper’s wings. Id. at 20-21 (citing PO Resp. 43; Ex. 1004 ¶ 65; Ex. 1054, 57:13-21). Regarding higher-basis-weight wings, Petitioner replies that Patent Owner’s declarant agreed that one of ordinary skill in the art would have used a heavier-basis-weight nonwoven for the wings of a diaper to prevent tearing. Pet. Reply 21 (citing Pet. 55-56; Ex. 1012 ¶¶ 92-94, 118; Ex. 1054, 97:15-24, 125:15-127:15, 141:25-143:19). Petitioner also replies that IPR2020-01477 Patent 8,152,788 B2 47 Benning teaches that nonwovens up to 150 g/m2 and specifically 25-50 g/m2 can be skin friendly and less rigid, that those teachings are consistent with Petitioner’s proposed modification of the side flaps of Benning’s diaper, and that stronger wings would have led to using heavier nonwoven in the side flaps because additional softness would be pointless. Id. at 21-22 (citing Pet. 55-56; Ex. 1002 ¶ 32; Ex. 1012 ¶¶ 92-94, 118; Ex. 1054, 97:15-24, 106:12-107:1, 125:15-127:15, 141:25-143:19, 171:6-172:7). Petitioner further replies that Patent Owner’s argument that Karami ’626 teaches heavier wings and lighter backsheets only for T-shaped diapers is based on conclusory declarant testimony. Pet. Reply 22 (citing PO Resp. 49-50; Ex. 1004 ¶ 65; Ex. 2004 ¶ 184). Petitioner argues that Patent Owner does not address analogous features in the modified Benning diaper that would have made T-shaped diaper teachings applicable. Id. (citing Ex. 1012 ¶¶ 117-118). Petitioner finally replies that, in its proposed combination, both the wings and backsheet can engage with fasteners and the wing nonwoven has no film, thus needing a heavier weight for strength. Pet. Reply 22 (citing Pet. 51-52, 54; PO Resp. 50; Ex. 1054, 126:13-127:2). Petitioner argues that Patent Owner’s declarant indicated that the wings would need a heavier and stronger nonwoven. Id. at 22-23 (citing Ex. 1012 ¶¶ 19-21, 58; Ex. 1054, 97:15-24). Regarding other factors that may affect basis weight and retaining forces, Petitioner replies that Patent Owner “lacks even an allegation that a [person of ordinary skill in the art] implementing Karami ’626’s teachings in Benning’s diaper would have selected any one of these parameters in a way that brought a higher-basis-weight wing-nonwoven’s fastener-retaining forces below a lower-basis-weight backsheet-nonwoven’s fastener-retaining IPR2020-01477 Patent 8,152,788 B2 48 forces.” Pet. Reply 23 (emphasis omitted) (citing PO Resp. 53-56, 59-61; Ex. 2004 ¶¶ 99-110). Petitioner also argues that it has provided the only evidence that the claimed retaining forces would have naturally resulted from its proposed modification of Benning’s diaper with Karami ’626. Id. at 23-24. Petitioner points to the ’788 patent’s description of only basis weight, and not any other parameter, for ensuring the required retaining forces. Id. at 24 (citing Ex. 1001, 4:29-31, 6:17-30, 14:4-10). Petitioner also argues that the ’788 patent indicates that the claimed retaining forces are a necessarily present property, not an additional requirement. Id. (citing Ex. 1051, 44:25-45:7). Regarding hindsight, Petitioner replies that Karami ’626 teaches the materials and basis weights for Petitioner’s proposed modification of the Benning diaper. Pet. Reply 24-25 (citing PO Resp. 61; Ex. 1002 ¶ 32; Ex. 1003 ¶¶ 28, 31; Ex. 1004 ¶¶ 58, 60, 62-65). (6) Patent Owner’s Sur-Reply Patent Owner replies that, because “claim 1 recites a user body and presents diaper elements in the context of the user body,” “the claimed detachably fastening” should not be read apart from “the claimed user body.” PO Sur-reply 1-2. Patent Owner also argues that “Petitioner does not dispute that claim 1 requires that the retaining forces be sufficient to hold or secure the diaper on the user” and “acknowledges that at least claim 2 requires that the retaining forces be sufficient to hold the diaper on the user.” Id. at 2 (citing Pet. 36, 37, 44, 52, 54, 64, 86; Pet. Reply 1-2). According to Patent Owner, “Petitioner also alleges for the first time that such a requirement is ‘necessarily broad’” and proposes a construction that would read out a limitation of the claim. Id. (citing Pet. Reply 2). IPR2020-01477 Patent 8,152,788 B2 49 Patent Owner also replies that the asserted references do not teach the claimed differing retaining forces sufficient to hold a diaper on a wearer, and that Petitioner must rely on inherency for such differing retaining forces. PO Sur-reply 2 (citing Pet. 30-37, 52-60; Prelim. Resp. 29-42, 47-51; PO Resp. 16-18, 25-35, 50-56). Patent Owner contends that size adjustability does not demonstrate the claimed differing retaining forces and would not have led one of ordinary skill in the art to the claimed differing forces. Id. at 3 (citing Pet. Reply 2, 7-9, 15-21). Patent Owner also contends that “Karami ’626’s reference to size adjustability is not a teaching of differing retaining forces, let alone differing retaining forces that are sufficient to secure the diaper.” Id. Patent Owner further contends that the relied-upon portion of Karami ’626 says nothing about differing retaining forces and nothing about such forces for size adjustability. Id. at 3-4 (citing Pet. Reply 7, 16-17; Ex. 1004 ¶ 40). Patent Owner further replies that size adjustability does not provide a reason and would not have led one of ordinary skill in the art to make the proposed combination. PO Sur-reply 3 (citing Pet. Reply 2, 7-9, 15-21). Patent Owner argues that the fasteners of Karami ’626’s T-shaped diaper only engage the wings, as acknowledged by Petitioner’s declarant. Id. at 4 (citing Ex. 1004 ¶¶ 37, 38; Ex. 2003, 163:18-21, 164:13-19). In Patent Owner’s view, Karami ’626’s reference to size adjustability was for the T- shaped diaper, and Petitioner does not explain how fasteners could engage the backsheet at the front of a T-shaped diaper. Id. (citing Pet. Reply 6; Ex. 1004 ¶¶ 40, 41, 50, 51). Patent Owner argues that size adjustability is not mentioned in connection with Karami ’626’s Figures 9 and 10 and, thus, “would not provide a reason to use differing retaining forces to achieve size adjustability.” Id. at 4-5 (citing Pet. Reply 7-9; Ex. 1004 ¶ 55). Patent IPR2020-01477 Patent 8,152,788 B2 50 Owner also argues that “seeking size adjustability would not have led one of ordinary skill to use nonwovens having different basis weights to generate different retaining forces sufficient to secure a diaper.” Id. at 5. Patent Owner additionally replies that “Petitioner has not identified any prior art that teaches using different basis weight nonwovens to achieve size adjustability” and “Patent Owner demonstrated that the prior art only teaches size adjustability by using the same basis weight nonwoven.” PO Sur-reply 5-6 (citing PO Resp. 24-25, 47; Pet. Reply 18). Patent Owner argues that, for using the same nonwoven for size adjustability, Patent Owner’s declarant “testified based on his experience as to what one of ordinary skill would have understood and explained that was also what the references showed.” Id. at 6 (citing Ex. 2004 ¶¶ 85, 86, 131, 143, 168, 169). Patent Owner also argues that “merely arguing [that size adjustability using different basis weight nonwovens for the wings and backsheet] is achievable is not sufficient for obviousness.” Id. (citing Pet. Reply 18). According to Patent Owner, the challenged patent shows how to achieve size adjustability with different basis weight nonwovens, but “Petitioner has not shown that prior art teaches such an arrangement or that it would have been obvious.” Id. Also, Patent Owner replies that the asserted references do not teach using a higher basis weight nonwoven on the sides of a traditional diaper nor do they teach that using different basis weight nonwovens would provide differing retaining forces that can secure the diaper to the wearer. PO Sur- reply 7. Patent Owner argues that, even though Petitioner relies on Karami ’626’s preference for a “slightly higher” basis weight nonwoven for the wings of a T-shaped diaper, Karami ’626 “never says why that is preferred,” IPR2020-01477 Patent 8,152,788 B2 51 and, in the T-shaped diaper, “the fasteners only engage the wings.” Id. (citing Pet. 55; PO Resp. 30-31, 49-50; Ex. 1004 ¶ 65). Regarding Figures 9 and 10 of Karami ’626, Patent Owner replies that Petitioner appears to have dropped its reliance on the T-shaped diaper, Karami ’626 “never suggests making it from nonwovens having different basis weights,” and “Petitioner’s reasons for using a higher basis weight nonwoven on the sides of a diaper are based on hindsight.” PO Sur-reply 7- 8 (citing Ex. 1004 ¶ 55). Patent Owner also argues that its declarant “merely explained that this side piece needed to be heavy enough not to be pulled off” and “how a heavier nonwoven could have lower retaining forces than a lighter nonwoven.” Id. at 8 (citing Ex. 1001, 14:19-41; Ex. 1054, 125:9- 126:12, 127:25-129:3). Patent Owner further argues that its declarant “did not reference the front side-parts, which are the relevant parts for having the claimed retaining forces for engaging fasteners” and “did not suggest that the main body did not need to be as strong or that one of ordinary skill would have sought higher retaining forces on the sides.” Id. Patent Owner replies that Petitioner relies on inherency for the claimed differing retaining forces because Petitioner’s arguments are not based on what the references teach. PO Sur-reply 8-9 (citing Prelim. Resp. 29-42; PO Resp. 16-18, 25-35, 50-56). Patent Owner argues that Petitioner did not acknowledge that its challenges are premised on inherency, only addresses inherency to disavow it, and fails to carry its burden if the Board agrees that inherency is required. Id. at 9 (citing Pet. Reply 6-7, 18). Regarding the proposed combination of Benning and Karami ’626 and inherency, Patent Owner replies that Petitioner disavows inherency but characterizes the factual issue as inherent obviousness. PO Sur-reply 10 IPR2020-01477 Patent 8,152,788 B2 52 (citing Pet. Reply 23-24). Patent Owner contends that Petitioner must provide substantial evidence, not merely allege obviousness, and, thus, fails to establish that the claimed differing retaining forces are necessarily present in its proposed combination. Id. at 10-11. Regarding Petitioner’s proposed combination of Benning and Karami ’626 in particular, Patent Owner replies that “Petitioner has not shown that the combination necessarily would have resulted in the claimed retaining forces” and relies on the challenged patent. PO Sur-reply 20 (citing Pet. Reply 24). Patent Owner argues that Petitioner has the burden to show obviousness based on prior art, not the challenged and related patents. Id. Patent Owner also argues that the challenged and related patents “do not state that a higher basis weight nonwoven necessarily and always has higher retaining forces than a lower basis weight nonwoven” nor “suggest this was some universal principal that applied based solely on basis weight, regardless [of other factors].” Id. at 20-21 (citing Ex. 1001, 12:54-13:41). Patent Owner contends that the challenged and related patents “teach factors that impact retention and how to engineer a nonwoven to engage fasteners.” Id. at 21 (citing Ex. 1001, 5:16-9:36; Ex. 2004 ¶ 36). Patent Owner additionally replies that Petitioner “improperly modifies Benning-Karami ’626” because “Petitioner asserted that one of ordinary skill would have used the 20 gsm backsheet from Karami ’626’s T-shaped diaper for Benning’s backsheet because it was identified as optimal.” PO Sur-reply 21. According to Patent Owner, Petitioner shifted its position when it “contends that it could instead use a 20 gsm nonwoven from the wings of the T-shaped diaper even though Karami ’626 describes that nonwoven as optimally 34 gsm,” thus, “show[ing] that it has no meaningful reason for IPR2020-01477 Patent 8,152,788 B2 53 selecting nonwovens and basis weights other than the roadmap the claims provide.” Id. (citing Pet. Reply 20-22; Ex. 1004 ¶ 65). Regarding Petitioner’s declarant testimony, Patent Owner replies that Petitioner’s declarant has admitted that he cannot tell if retaining forces would be sufficient based on Karami ’626 or Karami ’772, and that he did not understand how Karami ’626’s T-shaped diaper worked. PO Sur-reply 21-24 (citing Pet. Reply 10; Ex. 1012 ¶¶ 68-70; Ex. 2003, 117:6-15, 119:8- 9, 143:7-149:3, 151:1-158:13, 175:11-20, 185:9-10, 195:12-17). Patent Owner argues that Petitioner’s declarant “agreed that all fasteners engage the belt and do not engage the backsheet of the main part” in Karami ’626 and his testimony is not “unequivocal.” Id. at 23 (citing Ex. 2003, 184:4-185:2, 185:11-186:1), 24 (citing Ex. 2003, 163:18-21, 164:13-19). (7) Petitioner Shows that One of Ordinary Skill in the Art Would Have Been Motivated to use a Film-Nonwoven Laminate like Karami ’626’s for Benning’s Underlayer 30 Based on the full record, we find that a relied-upon portion of Karami ’626 states that “fastener elements 41, 42 do not require landing zones and may engage directly with any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 or wings 40 of the brief.” Ex. 1004 ¶ 40. We also find that other relied-upon portions state that “nonwoven 50, which defines an exposed outer surface of at least one of the frontsheet 30, backsheet 32, and wing 40, contains a plurality of bonded fibers” and “[i]t will be appreciated that the backsheet may be formed of the above-identified nonwoven with a polypropylene or polyethylene film backing or as a laminate or like composite of a plurality of nonwovens.” Id. ¶¶ 62, 64. Karami ’626, thus, expressly teaches fastener elements that can engage IPR2020-01477 Patent 8,152,788 B2 54 directly with any portion of a nonwoven surface that may be formed with a film or laminate and that such a nonwoven can form a backsheet. We further find that Karami ’626 states that: While the nonwoven is preferably a spunbond having a basis weight of 13-50 grams per square meter (gsm), slightly higher basis weights of 20-40 gsm (optimally 34 gsm) are preferred for use on the wings of a T-shaped brief, while relatively lower basis weights of 15-30 gsm (optimally 20 gsm) are preferred for the backsheet of the front and back portions. Ex. 1004 ¶ 65. Karami ’626, thus, expressly teaches a preference for “relatively lower basis weights of 15-30 gsm (optimally 20 gsm)” for a backsheet. Taking these express teachings together, we determine that Karami ’626 provides factual support for Petitioner’s asserted motivation to use a film-nonwoven laminate like Karami ’626’s for Benning’s underlayer 30 because the film-nonwoven laminate would “improve adjustability by enabling fasteners like Karami ’626’s to ‘[e]ngage directly with any portion of [a diaper’s] nonwoven surface[s]’ to secure the diaper on a wearer.” Pet. 52 (alterations in original) (citing Ex. 1004 ¶ 40; Ex. 1012 ¶ 112). Petitioner also contends that one of ordinary skill in the art would have been motivated to use Karami ’626’s film-nonwoven laminate for Benning’s underlayer 30 because Karami ’626’s film-nonwoven laminate would “provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper.” Pet. 52 (citing Ex. 1004 ¶ 40; Ex. 1012 ¶ 112). Record evidence also supports Petitioner’s additional asserted motivation. Ex. 1012 ¶ 113; Ex. 1019, 1:55-2:32; Ex. 1023, 8:3-28; Ex. 1037 ¶ 60. IPR2020-01477 Patent 8,152,788 B2 55 Regarding whether these teachings are limited to Karami ’626’s T- shaped diaper, Karami ’626 expressly states that “absorbent article 10 is in the form of a T-shaped brief 12, although it may alternatively be in the form of a diaper 14 (as illustrated in FIGS. 9 and 10) or a pull-up 16 (as illustrated in FIG. 8)” and that “[t]he disposable article may be a diaper, a T-shaped brief, or a pull-up.” Ex. 1004 ¶¶ 35, 78. Karami ’626 also states that: Referring now to FIGS. 9 and 10, it will be appreciated by those skilled in the art that the same or analogous improvements in the fit, appearance and economy of diapers 14 according to the present invention, with tape tab or patch fastener elements 76 (adjacent opposed lateral edges of the back portion 20), may be realized. Id. ¶ 55. Karami ’626 further states that “an object of the present invention to provide a disposable absorbent article which, in one preferred embodiment, incorporates a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material.” Id. ¶ 7. Karami ’626, thus, indicates that “the same or analogous improvements” mentioned in paragraph 55 include, at least, “a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material” of paragraph 7. We, therefore, find that Karami ’626 does not limit application of its fastener assembly of minihook fastener elements and conventional nonwoven material to its T-shaped brief. Ex. 1012 ¶ 107. Moreover, Karami ’626 states that “[p]referably the nonwoven is the article backsheet or, in the case of a T-shaped brief, the article wings.” Ex. 1004 ¶ 16. Karami ’626, thus, indicates that its nonwoven, in articles other than T- shaped briefs, would be preferably the backsheet. IPR2020-01477 Patent 8,152,788 B2 56 In view of our findings above, we determine that Karami ’626 provides factual support for Petitioner’s asserted motivation “to use a film- nonwoven laminate like Karami ’626’s for Benning’s underlayer 30.” Pet. 52; Ex. 1004 ¶¶ 40, 62, 64. Furthermore, because Benning and Karami ’626 indicate that Petitioner’s proposed modification amounts to using one known material for another, Petitioner persuades us that one of ordinary skill in the art would have modified Benning’s underlayer 30 to use a film- nonwoven laminate like Karami ’626’s with a reasonable expectation of success. Ex. 1012 ¶ 122. (8) Petitioner Shows that One of Ordinary Skill in the Art Would Have Been Motivated to use Karami ’626’s Hook- Type Fasteners in Benning Based on the full record and as discussed above for the recited “mechanical closure means,” we find that Benning teaches that “right material section 34 has two closures 42 in the form of closing tapes 44” and that “tapes 44 interact in a releasably adherent manner with an outside 46 of the front region 22 of the main body portion 20.” Ex. 1002 ¶ 55. Benning also describes that “[t]o close the incontinence article when it is worn by a user, the material sections have closures which can be designed to grip mechanically or adhesively” and “[i]t proves expedient if the material sections in the back region have closures of a type which can act in concert in a releasably gripping or adhering fashion with a landing zone on the main part of the diaper.” Id. ¶ 30 (emphasis added). A relied-upon portion of Benning further describes that “[t]he material sections attached to the main body portion are preferably of a non-woven material, specifically and preferably spunbond materials.” Id. ¶ 32. IPR2020-01477 Patent 8,152,788 B2 57 Turning to Karami ’626, we find that relied-upon portions of Karami ’626 state that “VELCRO fastener assemblies” have a “primary limitation on their widespread use” because they “need for each minihook fastener element to have a corresponding miniloop fastener element to engage with” or “a loop-type ‘landing zone’ for the minihook fastener element.” Ex. 1004 ¶ 3. Karami ’626 explains that “it has been necessary for the two articles or article portions to be designed such that, during use, the minihook and miniloop fastener elements will be appropriately positioned opposite one another for engagement with one another” and that “[t]he need to provide a miniloop fastener element-whether as a landing zone, as a strip, or as an entire surface-has stifled the development of uses for the minihook fastener element in various situation where it might prove advantageous.” Id. ¶¶ 4, 6. We also find that other relied-upon portions of Karami ’626 describe “a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material,” “minihook fastener element and a nonwoven (preferably a spunbond nonwoven and optimally an elastic composite thereof),” “the fastener assembly provides size adjustability or other features at the cost of only additional minihook fastener elements,” and “fastener elements 41, 42 do not require landing zones and may engage directly with any portion of the nonwoven surface constituting the frontsheet 30, backsheet 32 or wings 40 of the brief” to accommodate small, large, and extra-large waisted wearer. Ex. 1004 ¶¶ 7, 8, 10, 40, 41, 55; see also id. ¶ 2 (stating that Karami ’626 relates “more particularly to an absorbent article having a fastener element which does not require a special loop-providing landing zone”). Moreover, as already indicated elsewhere, Karami ’626 expressly states that its IPR2020-01477 Patent 8,152,788 B2 58 “improvements are made possible by the ability of the fastener element to make an engagement without the presence of a landing zone.” Id. ¶ 42. We further find that Karami ’626 expressly teaches that its “fastener assembly provides size adjustability or other features at the cost of only additional minihook fastener elements.” Ex. 1004 ¶ 10. Karami ’626 later similarly states that its “fastener assembly . . . provides size adjustability and/or other features at the cost of only additional minihook fastener elements.” Id. ¶ 78. Based on our findings above, we determine that Karami ’626 provides factual support for Petitioner’s assertion that one of ordinary skill in the art would have been motivated to use Karami ’626’s hook-type fasteners for Benning’s fasteners 42, 44 “at least to improve size-adjustability by directly engag[ing] with a backsheet nonwoven . . . or its nonwoven wings 34.” Pet. 54 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶¶ 114-116); Ex. 1002 ¶ 32; Ex. 1012 ¶ 115. Karami ’626 specifically teaches that its fastener assembly “consisting exclusively of a minihook fastener element, without any miniloop fastener element beyond a conventional nonwoven material” “provides size adjustability.” Ex. 1004 ¶¶ 7, 10, 78. Karami ’626 also teaches that its hook-type fasteners engage Benning’s material sections made of a “non-woven material, specifically and preferably spunbond materials.” Ex. 1002 ¶ 32 (“The material sections attached to the main body portion are preferably of a non-woven material, specifically and preferably spunbond materials.”); Ex. 1004 ¶ 8 (“In one preferred embodiment, the fastener assembly is composed exclusively of minihook fastener element and a nonwoven (preferably a spunbond a nonwoven and optimally an elastic composite thereof).”), ¶ 70 (“When the preferred fastener element is used with a conventional nonwoven, especially IPR2020-01477 Patent 8,152,788 B2 59 the preferred nonwoven spunbond described hereinafter, the fastener assembly according to the present invention has a shear strength substantially higher (and frequently several times higher) than that obtained by a conventional VELCRO-like hook-type fastener element with a comparable conventional nonwoven.”); Ex. 1012 ¶ 115. Petitioner’s proposed modification of Benning with Karami ’626’s hook-type fasteners, thus, would improve size adjustability by allowing the fasteners to engage a nonwoven (preferably spunbond) backsheet and Benning’s nonwoven (preferably spunbond) material sections 34. Ex. 1002 ¶ 32; Ex. 1004 ¶ 8. By allowing hook-type fasteners to engage the front portion of the backsheet or the material sections 34 extending from the front portion, the modified Benning diaper would be able to accommodate smaller- and larger-waisted users. Ex. 1012 ¶¶ 115, 116; see also Ex. 1004 ¶ 41 (stating that “[f]or the extra-large waisted wearer, the wings 40 . . . are secured by the wearer to opposite lateral edges of the front portion 22 by fastener elements 42 so that the wings 40 form a belt 44 including both the front and back portions 22, 20”). Also, as discussed above, we determine that Karami ’626’s “fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material” can be applied to a T-shaped brief, diaper, or pull-up. Ex. 1004 ¶¶ 7, 11, 55. Moreover, because Karami ’626 expressly teaches the use of its hook-type fastener to engage with its backsheet material to provide the described advantages and improvement, Karami ’626 additionally evidences that one of ordinary skill in the art would have considered both Karami ’626’s hook- type fastener and backsheet material when modifying Benning’s diaper. IPR2020-01477 Patent 8,152,788 B2 60 Furthermore, because Benning and Karami ’626 indicate that Petitioner’s proposed modification amounts to using one known fastener assembly for another, Petitioner persuades us that one of ordinary skill in the art would modify Benning’s fasteners 42, 44 to use Karami ’626’s hook-type fasteners with a reasonable expectation of success. Ex. 1012 ¶ 115. (9) Petitioner Shows that One of Ordinary Skill in the Art Would Have Been Motivated to use a Lower Basis Weight Nonwoven for a Backsheet As discussed above, we find that a relied-upon portion of Karami ’626 teaches “slightly higher basis weights of 20-40gsm (optimally 34 gsm) are preferred for use on the wings of a T-shaped brief, while relatively lower basis weights of 15-30 gsm (optimally 20 gsm) are preferred for the backsheet of the front and back portions.” Ex. 1004 ¶ 65. Based on the full record, we also find that the a relied-upon portion of Benning teaches that “material sections attached to the main body portion are preferably of a non- woven material” and “advantageously have a surface weight of 10 to 150 g/m2, in particular 20-100 g/m2, and specifically of 25-50 g/m2.” Ex. 1002 ¶ 32. Thus, if, as Petitioner argues, one of ordinary skill in the art modifies Benning to use Karami ’626’s film-nonwoven laminate for Benning’s underlayer 30, then the modified diaper would have material sections “of a non-woven material” with “a surface weight of 10 to 150 g/m2, in particular 20-100 g/m2, and specifically of 25-50 g/m2” and a backsheet with “relatively lower basis weights of 15-30 gsm (optimally 20 gsm).” Pet. 55; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Based on these express teachings, we determine that one of ordinary skill in the art would have modified Benning’s diaper to have material sections made of nonwoven material of IPR2020-01477 Patent 8,152,788 B2 61 “25-50 g/m2” and an underlayer or backsheet of “optimally 20 gsm.” Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. In other words, one of ordinary skill in the art following the express preferences of Benning and Karami ’626 would have modified Benning’s diaper to have a lower basis weight nonwoven for the underlayer or backsheet (“20 gsm”) with the already relatively heavier basis weight nonwoven for the material sections or wings (“25-50 g/m2”). Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Turning to whether the stated preferences in paragraph 65 of Karami ’626 relate only to Karami ’626’s T-shaped diaper, we find that Karami ’626 in other paragraphs repeatedly describes its improved and preferred minihook fastener element together with a preferred nonwoven having a “basis weight of 13-50 gsm.” Ex. 1004 ¶¶ 14, 15, 63; see also id. at claims 16, 17, 20, 54. Karami ’626, thus, teaches that its preferred minihook fastener element would engage an “optimally 20 gsm” backsheet, regardless of whether it was used in its T-shaped brief 12 or diaper 14, because it would still be a preferred nonwoven having a “basis weight of 13-50 gsm.” See Ex. 1004 ¶¶ 14, 15, 63. Karami ’626 also does not further limit its preferred nonwoven to those that have a film backing or laminate. See id. ¶ 64 (“It will be appreciated that the backsheet may be formed of the above- identified nonwoven with a polypropylene or polyethylene film backing or as a laminate or like composite of a plurality of nonwovens.”) (emphasis added); see also id. ¶¶ 15, 63 (describing a preferred nonwoven with particular fibers and interstice size but not specifying any film or laminate). Having determined above that the full record supports Petitioner’s asserted motivations of “provid[ing] a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper” and “improv[ing] adjustability by enabling fasteners like Karami ’626’s” for using Karami IPR2020-01477 Patent 8,152,788 B2 62 ’626’s film-nonwoven laminate, we determine that Petitioner shows that one of ordinary skill in the art would have been motivated to use a lower basis weight nonwoven, such as a “20 gsm” nonwoven, because (1) such a nonwoven is described as “optimal[],” (2) would be in a lower part of the “13-50 gsm” range for the preferred nonwoven to use with Karami ’626’s preferred minihook fastener element, and (3) would “provide a more comfortable and visually appealing cloth-like outer surface for Benning’s diaper.” Ex. 1004 ¶ 65; Ex. 1019, 1:55-2:32; Ex. 1023, 8:3-28; Ex. 1037 ¶ 60; see also Ex. 1004 ¶¶ 14, 15, 63. In view of the full record, Patent Owner’s responsive argument that the Benning and Karami ’626 diapers are designed and operate differently (PO Resp. 43-45, 49-51) does not show a deficiency in Petitioner’s proposed combination because, for the reasons above, we find that Karami ’626 teaches applying its hook-type fastener and nonwoven to both diaper’s like Benning and a T-shaped diaper. Patent Owner’s responsive argument that one of ordinary skill in the art would not have used a higher basis weight nonwoven for the material sections or wings (PO Resp. 48-51) also does not show a deficiency in Petitioner’s challenge because, as discussed above, the proposed combination does not require modifying the relatively heavier nonwoven material that Benning already uses for its material sections or wings. Accordingly, after considering the full record in view of each party’s arguments and cited evidence, we determine that Petitioner persuades us that Karami ’626 teaches the use of different basis weight nonwovens for its wings and backsheet, and, thus, the proposed modification of Benning in view of Karami ’626 would have a nonwoven for its underlayer or backsheet that is of relatively lower basis weight than the nonwoven for its material IPR2020-01477 Patent 8,152,788 B2 63 sections or wings. Pet. 55-56, 59; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65; Ex. 1012 ¶ 118. (10) The Proposed Combination of Benning and Karami ’626 would have Retaining Forces Sufficient to Fasten and Hold the Modified Diaper Claim 1 does not require expressly that the recited retaining forces must be sufficient to fasten and hold the diaper on a user. Ex. 1001, 15:51- 16:8. Patent Owner, however, argues that claim 1 necessarily requires that the recited retaining forces must “be sufficient to hold the diaper on the wearer so that the diaper is fastened.” PO Resp. 10. We do not find support for retaining forces sufficient to hold the diaper on a wearer in the language of claim 1 itself. Patent Owner does not point us to, and we do not find express support in, any part of the Specification or prosecution history. At best, support for retaining forces sufficient to hold the diaper on a wearer may be in the “general narrative” and claim 2 of the ’788 patent. Pet. Reply 1-2; Ex. 1054, 6:7-7:24. Thus, we determine that retaining forces “sufficient to hold the diaper on the wearer so that the diaper is fastened” is not an express requirement of claim 1. To the extent that claim 1 requires retaining forces sufficient to hold the diaper on the wearer to fasten the diaper, Karami ’626 repeatedly specifies the same peel strength of, at least, 60 grams per square inch and shear strength of, at least, 1300 grams per square inch. See Ex. 1004 ¶¶ 5, 13, 57, 61, claims 1, 36, 55. For example, Karami ’626 states that previous “[d]isposable absorbent articles . . . have different requirements as to the peel strength and shear strength of the various engagements depending, for example, on whether the engagement is about a waist or elsewhere, whether IPR2020-01477 Patent 8,152,788 B2 64 its fastening power is to be supplemented.” Ex. 1004 ¶ 5. Karami ’626 also states that “[g]enerally a peel strength of at least 60 grams per square inch and a shear strength of at least 1300 grams per square inch is preferred.” Id. Karami ’626 further states that “[t]hose skilled in the art will appreciate that not all of the fastener assemblies according to the present invention will require a peel strength of 60 grams per square inch and a shear strength of 1300 grams per square inch.” Ex. 1004 ¶ 61. “For example, in FIG. 2, the auxiliary fastener element 51 . . . may have lower peel and shear strengths” because it and other fasteners like it “are not relied upon for maintenance of the T-shaped brief 12 in its basic essential orientation on the wearer.” Id. These statements indicate that a peel strength of 60 grams per square inch and a shear strength of 1300 grams per square inch would keep “the T- shaped brief 12 in its basic essential orientation on the wearer” or keep brief 12 on the wearer. See Ex. 1004 ¶ 61. Thus, to any extent that claim 1 requires retaining forces “sufficient to hold the diaper on the wearer so that the diaper is fastened,” we find that engaging Karami ’626’s minihook fastener element with its preferred nonwoven, as they would be in Petitioner’s proposed modifications of Benning, provides retaining forces sufficient to keep the modified diaper “in its basic essential orientation on the wearer,” and thus, have retaining forces sufficient to, at least, fasten and hold the modified diaper on the user. Based on the full record, we determine that Benning’s diaper modified with Karami ’626’s hook-type fastener would have “said closure means being structured and dimensioned for detachable fastening to said outer face of said main part and to said outer face of said side parts in said front area.” Ex. 1002 ¶ 55; Ex. 1004 ¶¶ 7, 8, 10, 40, 41, 55; Ex. 1012 ¶¶ 115, 122. IPR2020-01477 Patent 8,152,788 B2 65 (11) Petitioner Shows that the Proposed Combination of Benning and Karami ’626 has the Recited Differing Retaining Forces Karami ’626 states that “[t]he number of fibers and the extent to which they are bonded together in the nonwoven provide the nonwoven with the strength necessary to provide a high level of shear strength.” Ex. 1004 ¶ 68. Karami ’626 also states that “[t]he pore size in the nonwoven (that is, the size of the interstices formed by the fibers) typically affects the peel strength, a higher pore size providing greater peel strength for the fastener elements according to the present invention.” Id. ¶ 69. Karami ’626 further states that “[t]he size of the spacing between adjacent surfaces of the pins of the fastener element at the exposed outer surface thereof is a factor of major significance providing the high level of shear strength.” Id. ¶ 68. Karami ’626 does not describe any other parameter that would affect shear strength or peel strength. As discussed above, based on the full record, Petitioner persuades us that the proposed modification of Benning in view of Karami ’626 would have a nonwoven for its underlayer or backsheet that is of relatively lower basis weight than the nonwoven for its material sections or wings. Pet. 55- 56; Ex. 1002 ¶ 32; Ex. 1004 ¶ 65. Thus, in Petitioner’s proposed combination with Karami ’626’s fastener engaging with its described nonwoven material for the backsheet but a relatively heavier basis weight nonwoven for the material sections of Benning’s diaper, the one difference between the nonwoven materials of the backsheet and material sections would be number of fibers. If the extent to which the fibers are bonded together and pore size is the same between the two nonwoven materials, then the relatively lower basis weight nonwoven of the backsheet must have a IPR2020-01477 Patent 8,152,788 B2 66 lesser number of fibers than the relatively heavier basis weight nonwoven of the wings because of the relatively lighter basis weight, and because the relatively lower basis weight nonwoven of the backsheet has a smaller number of fibers, according to Karami ’626, an engagement of its fastener element with the backsheet would have a smaller shear strength than engagement with the relatively heavier basis weight material sections of Benning. See Ex. 1004 ¶¶ 68, 69; Ex. 1012 ¶ 120 (“Because higher basis weight nonwovens have more fibers per unit area with which a mechanical fastener can interact, the retaining forces (e.g., peel and/or shear strength) between the fastener and such a nonwoven are higher than those between the fastener and a lower basis weight but otherwise similar nonwoven.”). Petitioner’s proposed combination of Benning and Karami ’626 would thereby meet the recitation “wherein retaining forces between said mechanical closure means and said outer face of said main part are lower than retaining forces between said mechanical closure means and said outer face of said side parts in said front area.” Moreover, to the extent that the proposed combination of fastener and different basis weight nonwovens do not necessarily provide the recited difference in retaining forces, we determine that such a difference is, at least, suggested because Karami ’626 shows that, for its fastener assembly, there was a known relationship between shear strength and number of fibers. Ex. 1004 ¶¶ 68, 69. One of ordinary skill in the art modifying Benning in the manner asserted by Petitioner would have known from Karami ’626 alone that engaging Karami ’626’s fastener with Benning’s relatively higher basis weight spunbond nonwoven would exhibit greater shear strength for two nonwovens that otherwise have the same extent of bonding and pore size. See id.; see also PO Resp. 6 (arguing that “[f]or adult incontinence IPR2020-01477 Patent 8,152,788 B2 67 diapers, it is important that the diaper be comfortably secured on a wearer and prevent leaking” and that “[s]killed artisans designing a diaper would consider their objectives and then engineer the materials and manufacturing processes based on the design and performance requirements”); Ex. 2004 ¶¶ 32 (testifying that “it is . . . important that the diaper be secured on the wearer”), 95 (testifying that “[i]t is also important that diapers be sufficiently secured for both ambulatory and non-ambulatory wearers”), 98 (testifying that “[w]hen a person of ordinary skill in the art designs an incontinence diaper, they must consider their design objectives at the start, including the type of diaper” and that “[t]hese objectives will drive the materials selected and the manufacturing processes used”). 2. Analysis of Claim 2 Claim 2 depends from claim 1 and recites “wherein said retaining forces, determined as over-abdomen retaining forces between said closure means having said mechanical closure aids and said outer face of said main part, are 57-20 N/25 mm or 50-25 N/25 mm.” Ex. 1001, 16:9-13. Petitioner argues that, by using Karami ’626’s preferred fastener with its preferred dimensions and optimal 20 gsm spunbond nonwoven for the backsheet, the modified Benning diaper would have yielded the same retaining forces as the claimed diaper, because the challenged patent describes a test with the same fastener and nonwoven that recorded a retaining force of 48.6 N/25 mm and 65.3 N/25 mm, both of which are within the claimed range. Pet. 63-67 (citing Ex. 1001, 7:19-26, 13:34-41, 14:39-15:49; Ex. 1003 ¶¶ 28, 31, 41; Ex. 1004 ¶¶ 38, 58, 60, 62-65; Ex. 1009 ¶¶ 38, 46; Ex. 1012 ¶¶ 123-130). Patent Owner responds that “Petitioner fails to address the actual claim language that retaining forces are determined as over-abdomen IPR2020-01477 Patent 8,152,788 B2 68 retaining forces.” PO Resp. 59; see also id. at 36 (arguing that “[t]he claims require that retaining forces be determined as over-abdomen retaining forces, yet Petitioner does not address that requirement when evaluating claims 2 and 3”). Patent Owner argues that Petitioner relies only on the basis weight, not on the other “detailed information about the examples” in the challenged patent, and ignores many other identified properties that impact the retaining force discussed in Karami ’626. Id. at 59-60 (citing Pet. 64-68; Ex. 1001, 14:44-15:24; Ex. 1004 ¶ 63; Ex. 2004 ¶¶ 92, 99-110). According to Patent Owner, “[b]ecause Petitioner did not establish that the Karami ’626 nonwoven and Benning side flaps included all characteristics of [the nonwoven materials], it cannot establish that they necessarily would have the claimed retaining force values.” Id. at 60. Patent Owner also responds that the challenged and related patents “never state that retaining forces are determined solely by basis weight” and “provide detailed information on how to engineer nonwovens to make them receptive to fasteners.” PO Resp. 61 (citing Pet. 65; Ex. 2004 ¶¶ 111-118). Patent Owner argues that Petitioner’s analysis is hindsight driven because the arguments are conclusory and Petitioner’s declarant testimony merely states that it would have been obvious to use the disclosed fasteners and materials. Id. (citing Pet. 64-68; Ex. 1012 ¶¶ 123-131; Ex. 2004 ¶¶ 185- 187). Petitioner replies that the ’788 patent claims “do not actually require measuring retaining forces.” Pet. Reply 11. Petitioner also replies that Patent Owner fails to argue that one of ordinary skill in the art in making Petitioner’s proposed modifications would have selected any of the asserted parameters so that the retaining forces of the higher basis weight nonwoven would have been lower than those in the lower basis weight nonwoven. Id. IPR2020-01477 Patent 8,152,788 B2 69 at 23 (citing PO Resp. 53-56, 59-61; Ex. 2004 ¶¶ 99-110). Petitioner contends that its evidence remains the only evidence regarding whether the claimed retaining forces would have naturally resulted from the proposed modifications. Id. at 23-24 (citing Pet. 59; Ex. 1001, 7:19-26, 13:34-41; Ex. 1012 ¶¶ 120-121; Ex. 1040, 2:35-39; Ex. 1044, 5:3-7). Petitioner also points to the Specification of the ’788 patent. Id. at 24 (citing Ex. 1001, 4:29-31, 6:17-30, 7:59-65, 14:4-10). Petitioner finally replies that Patent Owner’s hindsight argument fails in view of the description in the references of “preferred,” “optimal,” or “advantageous” fasteners and materials. Id. at 24-25 (citing Ex. 1002 ¶ 32; Ex. 1003 ¶¶ 62-64; Ex. 1004 ¶¶ 58, 60, 62-65). Patent Owner replies that Petitioner fails to argue that the cited references teach the claimed retaining force ranges or that those forces would have been necessarily present in the proposed combinations. PO Sur- reply 24 (citing Pet. Reply 11-12, 23-25). Patent Owner argues that Petitioner does not meet its burden of showing obviousness because the argument that the claimed ranges are naturally resulting “workable” ranges is not enough for obviousness. Id. (citing Pet. Reply 11-12, 23-25). As discussed above for claim 1, we determine that one of ordinary skill in the art would have modified the Benning diaper to use Karami ’626’s film nonwoven laminate for its backsheet and minihook fastener to engage the backsheet and Benning’s spunbond nonwoven wings. Based on the full record, we additionally find that Karami ’626 teaches that its preferred fastener has a preferred size and teaches a spunbond 20 gsm nonwoven with a preferred fiber size and embossing area. Ex. 1004 ¶¶ 58, 60, 62-65; Ex. 1012 ¶¶ 124-126. We also find that Benning teaches a preferred 30 gsm basis weight nonwoven for its wings. Ex. 1002 ¶ 32; Ex. 1012 ¶ 125. We further credit Petitioner’s declarant testimony that the proposed combination IPR2020-01477 Patent 8,152,788 B2 70 would provide a retaining force within the claimed range. Ex. 1012 ¶¶ 123, 127-130. Petitioner persuades us that, in the proposed modifications of the Benning, one of ordinary skill in the art would have combined a known fastener with known nonwovens in a known way that would have been the same as what the ’788 patent describes. See Pet. 63-67. As discussed above for claim 1, Karami ’626 indicates that, if other parameters are unchanged, a higher basis weight nonwoven would provide a higher shear strength. Ex. 1004 ¶¶ 68, 69. Petitioner, thus, persuades us that the “commercially- available fastener known for use in diaper closures, engaging commercially- available nonwovens known for use in diaper backsheets and wings” would have had retaining forces within the claimed range. See Pet. 63-67. Patent Owner does not dispute that the fastener and nonwovens were known, that Karami ’626’s fastener can engage the nonwovens, that the fasteners and nonwovens used in the references match those described in the Specification, or that the challenged claims somehow exclude from their scope these fasteners and nonwovens. See PO Resp. 59-61; PO Sur-reply 24. Patent Owner, instead, contends that the undisputed same fastener and nonwovens may not have the same range of retaining forces, and that Petitioner fails to show that they must necessarily be present. See PO Resp. 59-61; PO Sur-reply 24. Petitioner, however, adequately shows that its proposed combination would have a retaining force within the claimed range. Ex. 1004 ¶¶ 68, 69; Ex. 1012 ¶¶ 123, 127-130. For the reasons above, based on the full record, Petitioner shows that Benning modified in view of Karami ’626 has a retaining force within the claimed range. IPR2020-01477 Patent 8,152,788 B2 71 3. Analysis of Claim 3 Claim 3 depends from claim 1 and recites “wherein said retaining forces, determined as over-abdomen retaining forces between said closure means having said mechanical closure aids and said outer face of said side parts in said front area, are 90-58 N/25 mm or 80-60 N/25 mm.” Ex. 1001, 16:14-18. The parties argue claims 2 and 3 together. See Pet. 67-68; PO Resp. 59-61; Pet. Reply 11; PO Sur-reply 24. Summarized above for claim 2 are the same arguments presented for claim 3. Based on the full record, for the same reasons given for claim 2, Petitioner shows that proposed combination of Benning and Karami ’626 has a retaining force within the claimed range. 4. Analysis of Claim 4 Claim 4 depends from claim 1 and recites “wherein said mechanical closure aids comprise hooks of a hook-and-loop fastener.” Ex. 1001, 16:19- 21. Petitioner argues that the proposed combination of Benning and Karami ’626 would have Karami ’626’s hook-and-loop fasteners as Benning’s closures 42. Pet. 60 (citing Ex. 1004 ¶¶ 7, 8, 37, 57, 78; Ex. 1012 ¶ 115). We find that the relied-upon portions of Karami ’626 teach “a fastener assembly consisting exclusively of a minihook fastener element without any miniloop fastener element beyond a conventional nonwoven material” or “a minihook fastener element and a nonwoven” (Ex. 1004 ¶¶ 7, 8, 78), “hook- type fastener element 4” (id. ¶ 37), and “preferred fastener elements” with “hooks hav[ing] a mushroom-like appearance” (id. ¶ 57). We also credit Petitioner’s declarant testimony regarding claim 4 because the record supports it. Ex. 1012 ¶ 115. IPR2020-01477 Patent 8,152,788 B2 72 Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 4. See PO Resp. 41- 62. Thus, based on the full record, Petitioner persuades us that Karami ’626 teaches the limitations of claim 4. For the reasons above, Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626. 5. Analysis of Claim 6 Claim 6 depends from claim 1 and recites “wherein the incontinence diaper has four discrete, not directly connected side parts, wherein one side part is attached to each of two side edges of said front area and a further side part is attached to each of two side edges of said rear area.” Ex. 1001, 16:26-29. Petitioner argues that Benning’s diaper has four wings 34 that are not connected directly to one another and certain wings 34 are attached to edges 40 of chassis 20 at back region 24. Pet. 60-61 (citing Ex. 1002 ¶¶ 54- 56, Figs. 4-6; Ex. 1012 ¶ 62). We find that the relied-upon portions of Benning teach and show four wings 34 that are not connected to each other and four wings 34 that are arranged so that two are on each side of a front area and another two are attached on each side of a rear area. Ex. 1002 ¶¶ 54-56, Figs. 4-6. We also credit Petitioner’s declarant testimony regarding claim 6 because the record supports it. Ex. 1012 ¶ 62. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent IPR2020-01477 Patent 8,152,788 B2 73 Owner does not provide a separate argument for claim 6. See PO Resp. 41- 62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 6. 6. Analysis of Claim 7 Claim 7 depends from claim 1 and recites “wherein the incontinence diaper has two discrete, not directly connected, side parts, wherein a first side part is attached to a first side edge and a second side part is attached to a second side edge.” Ex. 1001, 16:30-34. Petitioner refers to its arguments for claim 6 and also argues that either back wings 34 or front wings 34 meet the recitation for side parts attached to first and second side edges. Pet. 61. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 7. See PO Resp. 41- 62. For the reasons given for claim 6, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 7. 7. Analysis of Claim 10 Claim 10 depends from claim 1 and recites “wherein at least portions or an entire area of said outer face of said main part is constituted by a nonwoven material.” Ex. 1001, 16:41-43. Petitioner argues that Benning’s underlayer 30 forms the incontinence article’s outer side and, thus, chassis 20. Pet. 61 (citing Ex. 1002 ¶ 53). Petitioner also argues that it proposes to modify underlayer 30 to be a nonwoven. Id. (citing Ex. 1012 ¶¶ 112-113). IPR2020-01477 Patent 8,152,788 B2 74 We find that the relied-upon portions of Benning teach underlayer 30. Ex. 1002 ¶ 53. As discussed above for claim 1, Karami ’626 teaches the use of a nonwoven. Ex. 1004 ¶¶ 62-64. We also credit Petitioner’s declarant testimony regarding claim 10 because the record supports it. Ex. 1012 ¶¶ 112-113. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 10. See PO Resp. 41-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 10. For the reasons above, Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626 to use a nonwoven for underlayer 30. 8. Analysis of Claim 11 Claim 11 depends from claim 10 and recites “wherein said nonwoven material has a mass per unit area of 10-30 g/m2, 14-25 g/m2 or 18-22 g/m2.” Ex. 1001, 16:44-46. Petitioner argues that its proposed modified underlayer 30 has or it would have been obvious to have the recited mass per unit area. Pet. 61 (citing Ex. 1004 ¶ 65). We find that Karami ’626 teaches the use of a nonwoven of “optimally 20 gsm” for a backsheet, which would be within all the recited ranges of claim 11. Ex. 1004 ¶ 65. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 11. See PO Resp. 41-62. IPR2020-01477 Patent 8,152,788 B2 75 Thus, based on the full record, Petitioner persuades us that Karami ’626 teaches the limitations of claim 11. For the reasons above, Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626 to use a nonwoven of “optimally 20 gsm” for underlayer 30. 9. Analysis of Claim 14 Claim 14 depends from claim 1 and recites “wherein said backsheet is constituted by a nonwoven-foil laminate, wherein outside nonwoven material and inside foils seat facing said absorbent body, wherein said nonwoven material constitutes an outer face of said main part.” Ex. 1001, 16:55-59. Petitioner argues that its modified Benning diaper has Karami ’626’s film-nonwoven laminate that forms chassis 20’s outer, visible side with the film facing absorbent core 28. Pet. 62 (citing Ex. 1002, Figs. 5, 6). Petitioner also refers to previous arguments about the proposed modifications and claim 10. Id. For the reasons discussed for claim 1, Petitioner persuades us that its proposed modifications of Benning in view of Karami ’626 would have Karami ’626’s film nonwoven laminate. Petitioner also persuades us that it would form an outer visible side with the film facing core 28. Ex. 1002 ¶ 53, Figs. 5, 6; Ex. 1004 ¶¶ 62-64; Ex. 1012 ¶¶ 112-113. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 14. See PO Resp. 41-62. Thus, based on the full record, Petitioner persuades us that Benning and Karami ’626 teach the limitations of claim 14. For the reasons above, IPR2020-01477 Patent 8,152,788 B2 76 Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626. 10. Analysis of Claim 16 Claim 16 depends from claim 1 and recites “wherein said outer faces of said side parts in said front and/or said rear area are constituted by a nonwoven material.” Ex. 1001, 16:65-67. Petitioner argues that Benning’s wings attached to its chassis are preferably a non-woven material that defines their outer faces. Pet. 62 (citing Ex. 1002 ¶ 32). We find that the relied-upon portion of Benning teaches that “[t]he material sections attached to the main body portion are preferably of a non-woven material, specifically and preferably spunbond materials.” Ex. 1002 ¶ 32. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 16. See PO Resp. 41-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 16. 11. Analysis of Claim 17 Claim 17 depends from claim 1 and recites “wherein said side parts in said front and/or said rear area are constituted by a nonwoven material that is permeable to air and water vapor.” Ex. 1001, 17:1-4. Petitioner argues that Benning’s nonwoven wings 34 “are configured to breathe . . . , which allows an exchange of air as well [as] . . . vapor.” Pet. 62 (quoting Ex. 1002 ¶ 32) (also citing Ex. 1012 ¶¶ 64, 119) (alteration in original). IPR2020-01477 Patent 8,152,788 B2 77 We find that the relied-upon portion of Benning teaches that “[p]referably the material sections attached laterally to the main body portion are configured to breathe at least in sections, with microporosity, which allows an exchange of air as well permeability for moisture in the form of vapor, being regarded as advantageous.” Ex. 1002 ¶ 32. We also credit Petitioner’s declarant testimony regarding claim 17 because the record supports it. Ex. 1012 ¶¶ 64, 119. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 17. See PO Resp. 41-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 17. 12. Analysis of Claim 18 Claim 18 depends from claim 1 and recites “wherein a mass per unit area of said side parts in said front and/or said rear area is 18-60 g/m2, 25- 45 g/m2, 27-40 g/m2 or 28-35 g/m2.” Ex. 1001, 17:5-8. Petitioner refers to its arguments about the proposed modifications and argues that the side parts had or would have been modified to have the recited mass per unit area. Pet. 62 (citing Ex. 1002 ¶ 32; Ex. 1004 ¶ 65). We find that a relied-upon portion of Benning teaches that “[t]he material sections advantageously have a surface weight of 10 to 150 g/m2, in particular 20-100 g/m2, and specifically of 25-50 g/m2.” Ex. 1002 ¶ 32. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 18. See PO Resp. 41-62. IPR2020-01477 Patent 8,152,788 B2 78 Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 18. 13. Analysis of Claim 19 Claim 19 depends from claim 1 and recites “wherein a breathability of said side parts in said front and/or said rear area is greater than a breathability of said backsheet.” Ex. 1001, 17:9-11. Petitioner argues that its proposed modifications to Benning’s backsheet includes a film but the wings do not so as to be breathable. Pet. 63 (citing Ex. 1002 ¶ 32; Ex. 1012 ¶ 119). We find that the relied-upon portion of Benning teaches that “[p]referably the material sections . . . are configured to breathe at least in sections, with microporosity, which allows an exchange of air as well permeability for moisture in the form of vapor.” Ex. 1002 ¶ 32. We also credit Petitioner’s declarant testimony regarding claim 19 because the record supports it. Ex. 1012 ¶ 119. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 19. See PO Resp. 41-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 19. For the reasons above, Petitioner also persuades us that one of ordinary skill in the art would have modified Benning in view of Karami ’626 to use a film nonwoven laminate for the backsheet. 14. Analysis of Claim 20 Claim 20 depends from claim 1 and recites “wherein partial sections of said side parts are folded upon each other and lie against one another over IPR2020-01477 Patent 8,152,788 B2 79 an area, said partial sections being detachably fixed to each other in folded configuration at joining points or joining regions.” Ex. 1001, 17:12-18:3. Petitioner argues that Benning teaches wings folded in the manner recited by claim 20. Pet. 63 (citing Ex. 1002 ¶¶ 6, 56-60, Figs. 4-8; Ex. 1012 ¶ 65). We find that the relied-upon portions of Benning teach and show material sections that “are folded over themselves at least along one fold line,” “releasably attached to each other in the folded configuration by punctiform affixation points 62,” and lie against one another over an area. Ex. 1002 ¶¶ 6, 56-60, Figs. 4-8. We also credit Petitioner’s declarant testimony regarding claim 20 because the record supports it. Ex. 1012 ¶ 65. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 20. See PO Resp. 41-62. Thus, based on the full record, Petitioner persuades us that Benning teaches the limitations of claim 20. F. Obviousness Based on Benning, Karami ’626, and Miyamoto ’499 Analysis of Claim 5 Claim 5 depends from claim 4 and recites “wherein at least one said closure means also comprises an adhesive closure aid or a pressure-sensitive adhesive region.” Ex. 1001, 16:22-24. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 4 would have been rendered obvious. Pet. 71. Petitioner argues that Miyamoto ’499 teaches fastening material 100 attached to ear panel 49 and that fastening material 100 includes first and second materials 106, 108. Id. at 69 (citing Ex. 1005 IPR2020-01477 Patent 8,152,788 B2 80 ¶¶ 31, 33, 34, Figs. 1, 4, 5; Ex. 1012 ¶ 142). Petitioner also argues that first fastening material 106 comprises hooks 102 and second fastening material 108 comprises an adhesive. Id. (citing Ex. 1005 ¶¶ 23, 33, 34, Figs. 1, 3; Ex. 1012 ¶ 142). Petitioner contends that it would have been obvious to include adhesive material on closures 42 of the modified Benning diaper in addition to hooks as in Miyamoto ’499 because one of ordinary skill in the art “would have been motivated to do so to maintain the fasteners folded onto the wings before use as Miyamoto ’499 teaches.” Pet. 70 (citing Ex. 1005 ¶¶ 33, 34, Fig. 4; Ex. 1012 ¶¶ 143, 144). Petitioner also contends that Benning’s closures 42 are already folded “‘to facilitate folding of the wings’ and ‘mitigate the risk of the fasteners sustaining damage and/or unintentionally engaging with objects.’” Id. at 70-71 (citing Ex. 1002 ¶ 55, Fig. 4; Ex. 1012 ¶ 144). Petitioner further contends that the proposed modification “would have been straightforward and routine” for the ordinarily skilled artisan. Id. at 71 (citing Ex. 1012 ¶ 147). We find that the relied-upon portions of Miyamoto ’499 teach “ear panel 49” with “fastening material 100” that comprises “first fastening material 106” with “a plurality of hooks 102” and “second fastening material 108” with “adhesive means 63” to provide “supplemental fastening means.” Ex. 1005 ¶¶ 31, 33, 34, Figs. 1, 4, 5. We also credit Petitioner’s declarant testimony regarding claim 5 because the record supports it. Ex. 1012 ¶ 142. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Miyamoto ’499 for the asserted reasons with a reasonable expectation of success. Pet. 70-71; Ex. 1012 ¶¶ 143, 144, 147. IPR2020-01477 Patent 8,152,788 B2 81 Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 5. See PO Resp. 41- 61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Miyamoto ’499 teach the limitations of claim 5, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. G. Obviousness Based on Benning, Karami ’626, and Kleinschmidt 1. Analysis of Claim 7 Claim 7 depends from claim 1 and recites “wherein the incontinence diaper has two discrete, not directly connected, side parts, wherein a first side part is attached to a first side edge and a second side part is attached to a second side edge.” Ex. 1001, 16:30-34. Petitioner argues that Kleinschmidt teaches diaper 20 with chassis 22 and front and rear ear panels 30 made of a “single nonwoven ply” side part that “extends continuously between front and rear waist regions 36, 38, across crotch region 37 where it is narrowed.” Pet. 71 (citing Ex. 1006, 4:19-24, 6:7-15, 7:64-8:5, Figs. 1, 2; Ex. 1012 ¶ 148). Petitioner also argues that the side parts define integrally formed leg cuff 32 for “improved containment of liquids.” Id. at 71-72 (citing Ex. 1006, 6:7-15, 7:64-8:5, Figs. 1, 2; Ex. 1012 ¶ 148). According to Petitioner, one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 in IPR2020-01477 Patent 8,152,788 B2 82 view of Kleinschmidt “such that the wings attached to each side edge of containment assembly 120 or chassis 20 were formed by a side part that, like Kleinschmidt’s, extended continuously from the rear waist region to the front waist region, being narrowed in the crotch region.” Pet. 72-73 (citing Ex. 1006, 6:48, 6:59-64, 7:64-8:5, Figs. 1, 2; Ex. 1012 ¶ 149), 74 (citing Ex. 1006, 6:59-64, 7:64-8:5, Figs. 1, 2; Ex. 1012 ¶¶ 149-155). Petitioner also contends that the further modification “would have remained [a] separate-wings-and-chassis construction, maintaining manufacturability, material-selection flexibility, and wearer-comfortability benefits provided by the same.” Pet. 73 (citing Ex. 1012 ¶¶ 149-150). Petitioner further contends that its proposed modification “would have been straightforward and routine, and predictably yielded these benefits.” Id. at 74 (citing Ex. 1012 ¶ 152). Petitioner also contends that the further modification would have had integral cuffs to help the diaper to hold waste and “provided a less expensive, less bulky, and lighter means to include them.” Pet. 73 (citing Ex. 1006, 1:30--56, 6:7-9, 7:64-8:10, 8:64-66; Ex. 1012 ¶ 151). Petitioner additionally contends that, even without cuffs, “continuously-extending side parts like Kleinschmidt’s would have provided larger bonding areas at the side part-containment assembly/chassis connections . . . , advantageously increasing their strength.” Id. (citing Ex. 1006, Fig. 1; Ex. 1012 ¶ 150). We find that the relied-upon portions of Kleinschmidt teach that its diaper 20 includes side panels 30 that can be “in the first waist region 36 or in both the first waist region 36 and the second waist region 38.” Ex. 1006, 6:48, 6:59-63. Kleinschmidt also teaches “leg cuffs 32 which provide improved containment of liquids and other body exudates” and that can be “disposed on opposing sides of the longitudinal axis 100 of the diaper 20 IPR2020-01477 Patent 8,152,788 B2 83 along with a pair of side panels 30, disposed outboard of the barrier leg cuffs 32, integrally formed such that a combination of one barrier leg cuff 32 and one side panel 30 is made from a single nonwoven ply.” Id. at 6:7-9, 7:64-8:4. Kleinschmidt further teaches that the “single nonwoven ply design reduces the amount of material required resulting in a savings in material costs as well as a product design that is less bulking and potentially lighter in weight.” Id. at 8:7-10. We also credit Petitioner’s declarant testimony regarding claim 7 because the record supports it. Ex. 1012 ¶¶ 149-152. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Kleinschmidt for the asserted reasons with a reasonable expectation of success. Pet. 72-74; Ex. 1012 ¶¶ 149-152. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 7. See PO Resp. 41- 61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Kleinschmidt teach the limitations of claim 7, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. IPR2020-01477 Patent 8,152,788 B2 84 2. Analysis of Claim 8 Claim 8 depends from claim 7 and recites “wherein said first and said second side part each extend continuously from said front area across said crotch area to said rear area.” Ex. 1001, 16:35-37. Petitioner relies on the same teachings of Kleinschmidt and same asserted reasons for modification summarized above for claim 7. See Pet. 71-74; see also id. at 74 (citing also, for claim 8, Ex. 1006, 6:59-64, 7:64-8:5, Figs. 1, 2; Ex. 1012 ¶ 149). Our findings from Kleinschmidt and determinations regarding the asserted reason to combine provided above for claim 7 also apply to claim 8. We also find that Kleinschmidt teaches that side panels 30 can be “in both the first waist region 36 and the second waist region 38.” Ex. 1006, 6:59-64. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 8. See PO Resp. 41- 61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Kleinschmidt teach the limitations of claim 8, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. 3. Analysis of Claim 9 Claim 9 depends from claim 8 and recites “wherein said first and second side part have a leg cutout in said crotch area.” Ex. 1001, 16:38-40. IPR2020-01477 Patent 8,152,788 B2 85 Petitioner relies on the same teachings of Kleinschmidt and same asserted reasons for modification summarized above for claim 7. See Pet. 71-74; see also id. at 74-75 (citing also, for claim 9, Ex. 1006, 2:15-18, Figs. 1, 2; Ex. 1012 ¶¶ 149-150). Our findings from Kleinschmidt and determinations regarding the asserted reason to combine provided above for claim 7 also apply to claim 9. We also find that Kleinschmidt shows a leg cutout near a crotch area. Ex. 1006, Fig. 1. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 9. See PO Resp. 41- 61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Kleinschmidt teach the limitations of claim 9, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. H. Obviousness Based on Benning, Karami ’626, and Jacobs Analysis of Claim 12 Claim 12 depends from claim 10 and recites “wherein said nonwoven material or a nonwoven-foil laminate is subjected to temperature treatment above 60° C. to improve said over-abdomen retaining forces.” Ex. 1001, 16:47-50. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 10 would have been rendered obvious. Pet. 78. Petitioner argues that Jacobs teaches a process for IPR2020-01477 Patent 8,152,788 B2 86 producing a film-nonwoven laminate for a backsheet to have cloth-like tactile properties and thermal stability, and that the process includes heating the film to at least 60 ° C to improve strength and breathability and later annealing the film. Id. at 75-77 (citing Ex. 1003 ¶ 52; Ex. 1004 ¶ 64; Ex. 1007, Abstract, 1:10-46, 1:54-66, 2:66-3:20, 3:46-56, 4:9-39, 4:46-53, 5:24-43, 5:48-63, 6:6-11, 6:23-26, 6:30-38, 9:32-43, Figs. 1, 2; Ex. 1012 ¶¶ 153-156). Petitioner contends that “it would have been obvious to make backsheet 130’s or underlayer 30’s film-nonwoven laminate using Jacobs’s process, including subjecting the laminate to an annealing/temperature treatment in which it was heated to at least 60º C in view of its polyethylene or polypropylene film.” Pet. 77 (citing Ex. 1003 ¶ 52; Ex. 1004 ¶ 64; Ex. 1007, 4:18-22, 5:25-38; Ex. 1012 ¶ 157); see also id. at 78 (citing Ex. 1007, 4:18-22, 5:25-38; Ex. 1012 ¶¶ 157-159). According to Petitioner, one of ordinary skill in the art would have done so “to achieve the benefits Jacobs teaches, including an ‘improved cloth-like texture’ and ‘thermal stability.’” Id. at 77 (citing Ex. 1007, 2:66-3:15, 5:38-40, 6:23-26, 9:32-40; Ex. 1012 ¶ 157). Petitioner further contends that the proposed modification “would have been straightforward and routine” for the ordinarily skilled artisan. Id. (citing Ex. 1012 ¶ 159). We find that the relied-upon portions of Jacobs teach a film nonwoven laminate that is heated to “between about 60° C. and about 120° C” for stretching and then “between about 5° C. and about 30° C. higher than the stretching temperature” for annealing. Ex. 1007, 1:54-64, 4:9-21, 5:24-43. We also find that Jacobs teaches that “thin thermoplastic material (e.g., film or microfiber web) is drawn or oriented to improve strength properties of the material in the oriented direction.” Id. at 3:46-56. IPR2020-01477 Patent 8,152,788 B2 87 We also credit Petitioner’s declarant testimony regarding claim 12 because the record supports it. Ex. 1012 ¶¶ 153-156. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Jacobs for the asserted reasons with a reasonable expectation of success. Pet. 77; Ex. 1012 ¶¶ 157-159. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 12. See PO Resp. 41-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Jacobs teach the limitations of claim 12, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. I. Obviousness Based on Benning, Karami ’626, and Anderson 1. Analysis of Claim 13 Claim 13 depends from claim 10 and recites “wherein said nonwoven material or a nonwoven-foil laminate is subjected to ring-rolling to improve said over-abdomen retaining forces.” Ex. 1001, 16:51-54. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 10 would have been rendered obvious. Pet. 81. Petitioner argues that Anderson teaches a process to modify a film-nonwoven laminate to be “breathable” and have “a soft, clothlike surface and extensibility for improved fit and comfort.” Pet. 78 IPR2020-01477 Patent 8,152,788 B2 88 (citing Ex. 1008, Abstract, 2:51-3:23, 17:49-53; Ex. 1012 ¶¶ 160-161). Petitioner also argues that the process bonds a nonwoven and a film to result in a composite web that undergoes ring-rolling to improve the composite’s characteristics. Id. at 78-80 (citing Ex. 1008, 2:1-31, 5:49-6:17, 6:65-7:25, 10:64-11:11, 11:23-48, 12:12-22, 15:56-16:5, 17:46-58, 17:65-18:2, 18:14-65, Figs. 2, 3, 5, 9; Ex. 1012 ¶¶ 160-163, 165); see also id. at 81-82 (arguing that “to improve said over-abdomen retaining forces” is an intended result and that, due to the ’788 patent failing to identify any particular characteristic of ring-rolling, any ring-rolling would improve retaining forces). Petitioner contends that “[i]t would have been obvious to subject the modified film-nonwoven laminate backsheet of . . . the Benning-Karami ’626 diaper . . . to ring-rolling” because one of ordinary skill in the art “would have been motivated to achieve the benefits Anderson describes, including the comfort-promoting increase in ‘cross-web extensibility’ and breathability.” Pet. 81 (citing Ex. 1008, 1:28-34, 2:41-44, 11:23-48, 12:12-22, 15:56-16:5, 17:46-58, 18:56-65; Ex. 1012 ¶¶ 164-166). Petitioner also contends that “[r]ing-rolling was straightforward and routine for [a person of ordinary skill in the art], rendering the modification obvious.” Id. (citing Ex. 1012 ¶ 166). We find that the relied-upon portions of Anderson teach a process for modifying a web that “may be films, nonwovens, or composites of films and nonwoven webs, such as laminates” by being drawn or extruded and fed to opposed forming rolls 8, 9 and thereafter, used in “disposable absorbent article.” Ex. 1008, 1:8-12, 2:41-44, 3:8-9, 5:49-6:17, 17:49-58, Figs. 1, 3, 4. IPR2020-01477 Patent 8,152,788 B2 89 We also credit Petitioner’s declarant testimony regarding claim 13 because the record supports it. Ex. 1012 ¶¶ 160-163, 165. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Anderson for the asserted reasons with a reasonable expectation of success. Pet. 81; Ex. 1012 ¶¶ 164-166. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 13. See PO Resp. 41-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Anderson teach the limitations of claim 13, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. 2. Analysis of Claim 15 Claim 15 depends from claim 14 and recites “wherein said foil is constituted by a breathable one- or multi-layer foil that is impermeable to liquids.” Ex. 1001, 16:60-62. Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 14 would have been rendered obvious. Pet. 82. Petitioner relies on the same teachings of Anderson and same asserted reasons for modification summarized above for claim 13. See Pet. 78-81; see also id. at 82 (arguing for claim 15 that ring-rolling would have rendered the “film breathable yet liquid-impermeable”) (citing IPR2020-01477 Patent 8,152,788 B2 90 Ex. 1008, Abstract). Our findings from Anderson and determinations regarding the asserted reason to combine provided above for claim 13 also apply to claim 15. We also find that Anderson teaches that its “resultant microporous web is breathable to air or vapor, but acts as a liquid barrier under the impact pressure commonly imposed by the wearer of an absorbent article.” Ex. 1008, 2:65-3:1. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 15. See PO Resp. 41-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Anderson teach the limitations of claim 15, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. J. Obviousness Based on Benning, Karami ’626, and Fernfors Analysis of Claim 21 Claim 21 depends from claim 1 and recites wherein said side parts in said front and/or said rear area have a reinforcing means which, when viewed in a transverse direction, is narrower than each side part, said reinforcing means being provided in at least a region overlapping said side edge of said main part, thereby overlapping both a lateral side edge region of said main part and part of said side part in said transverse direction. Ex. 1001, 18:4-11. IPR2020-01477 Patent 8,152,788 B2 91 Petitioner refers to its arguments for the proposed combination of Benning and Karami ’626 to assert that claim 1 would have been rendered obvious. Pet. 86. Petitioner argues that Fernfors teaches a diaper with belt halves attached by reinforcement material to a back portion of a chassis. Pet. 82-84 (citing Ex. 1012 ¶¶ 167, 168; Ex. 1045 ¶¶ 25, 27, 30, 32, 33, 45, 46, Figs. 1, 6). According to Petitioner, one of ordinary skill in the art would have understood that the reinforcement material provides a stronger connection between the belt halves and back portion, as evidenced by Exhibit 1046. Id. at 84-85 (citing Ex. 1012 ¶¶ 168, 169; Ex. 1046 ¶¶ 65, 116-119, Fig. 15). Petitioner also contends that “it would have been obvious to add reinforcement material like Fernfors’s at the chassis-wing interfaces” and “such pieces of reinforcement material would have been transversely-narrower than the wings.” Pet. 85-86 (citing Ex. 1012 ¶¶ 170- 171; Ex. 1045, Fig. 6). We find that the relied-upon portions of Fernfors teach “belt halves 9, 9 can be attached to the topsheet 2 within the bonding areas 13, 13'” and “pieces of reinforcement material . . . are permanently attached to opposite edge portions of the topsheet, wherein the insides of one end of the belt halves within bonding areas are attached to the topsheet via the pieces of reinforcement material.” Ex. 1045 ¶¶ 30, 32. We also find that Fernfors shows that the pieces of reinforcement material would have been transversely-narrower than the belt-halves. Id. at Figs. 1, 6. We further credit Petitioner’s declarant testimony regarding claim 21 because the record supports it. Ex. 1012 ¶¶ 167-169. We also determine that one of ordinary skill in the art would have further modified the proposed combination of Benning and Karami ’626 with the teachings of Fernfors for IPR2020-01477 Patent 8,152,788 B2 92 the asserted reasons with a reasonable expectation of success. Pet. 85-86; Ex. 1012 ¶¶ 170-171. Because (1) one of ordinary skill in the art would have understood that Fernfors’s reinforcement material provides a stronger connection between the belt halves and back portion and (2) the reinforcement material is material “permanently attached to opposite edge portions of the topsheet,” we find that Fernfors’s reinforcement material, in accordance with our interpretation of “reinforcing means” determined above, (1) performs the function of “provid[ing] a ‘reinforce[ed]’ connection between a diaper’s side part and main part by overlapping both” and (2) is “‘additional material added to the side part’ such as ‘a section of a strip shaped []or ribbon-shaped material’ (e.g., ‘a nonwoven material, textile material, or foil [(film)]’).” Ex. 1001, 11:10-22, 18:4-11; Ex. 1012 ¶ 54. Other than the response described above for certain limitations of claim 1 and the proposed modifications of Benning for claim 1, Patent Owner does not provide a separate argument for claim 21. See PO Resp. 41-61. Patent Owner also responds that “[v]ery little analysis is provided” for this challenge, and that the challenge and its “scant analysis” do not cure the deficiencies of the proposed combination of Benning and Karami ’626. Id. at 62. Thus, based on the full record, Petitioner persuades us that Benning, Karami ’626, and Fernfors teach the limitations of claim 21, and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. K. Objective Indicia of Nonobviousness The parties do not rely on any objective indicia of nonobviousness for any of claims 1-21. See generally Pet.; PO Resp.; PO Sur-reply. IPR2020-01477 Patent 8,152,788 B2 93 L. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. Above, based on full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art, and (4) objective evidence of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the prior art of record, (2) Benning, Karami ’626, Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, and Fernfors teach or suggest all the limitations of claims 1-21, (3) one of ordinary skill in the art would have combined Benning and Karami ’626, and Benning and Karami ’626 with at least one of Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, and Fernfors with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to claims 1-21. Weighing these underlying factual determinations, a preponderance of the evidence persuades us that claims 1-21 of the ’788 patent are unpatentable over Benning and Karami ’626, and the same combination further modified by Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, or Fernfors. Arctic Cat, 876 F.3d at 1361. M. Remaining Challenges Petitioner also challenges claims 1-4, 6, 7, 10, 14, 16, 17, 19, and 20 as unpatentable over Benning, Karami ’626, and Stupperich. Pet. 86-91. Petitioner further challenges claims 1-4, 6, 7, 10, 11, and 14-20 as unpatentable over Karami ’772 and Benning, and claims 5, 7-9, 12, 13, 15, IPR2020-01477 Patent 8,152,788 B2 94 and 21 as unpatentable over Karami ’772, Benning, and at least one of Miyamoto ’499, Kleinschmidt, Jacobs, Anderson, and Fernfors. Id. at 22- 48, 69-86. Because we determine that the same claims are unpatentable over proposed combinations including Benning and Karami ’626, we do not reach these additional challenges to these claims. 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”). III. CONCLUSION3 In summary: 3 Should Patent Owner wish to pursue amendment of the challenged claim 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). 4 As explained above in Section II.M., we do not reach the challenges based on (1) Karami ’772 and Benning and (2) Benning, Karami ’626, and Stupperich, because we determined that the same claims are unpatentable over combinations based on Benning and Karami ’626. Claim(s) 35 U.S.C. §4 References/Basis Claim(s) Shown Unpatentable Claim(s) Not Shown Unpatentable 1-4, 6, 7, 10, 11, 14-20 103(a) Karami ’772, Benning 1-4, 6, 7, 10, 11, 14-20 103(a) Benning, Karami ’626 1-4, 6, 7, 10, 11, 14-20 IPR2020-01477 Patent 8,152,788 B2 95 5 103(a) Karami ’772, Benning, Miyamoto ’499 5 103(a) Benning, Karami ’626, Miyamoto ’499 5 7-9 103(a) Karami ’772, Benning, Kleinschmidt 7-9 103(a) Benning, Karami ’626, Kleinschmidt 7-9 12 103(a) Karami ’772, Benning, Jacobs 12 103(a) Benning, Karami ’626, Jacobs 12 13, 15 103(a) Karami ’772, Benning, Anderson 13, 15 103(a) Benning, Karami ’626, Anderson 13, 15 21 103(a) Karami ’772, Benning, Fernfors 21 103(a) Benning, Karami ’626, Fernfors 21 1-4, 6, 7, 10, 14, 16, 17, 19, 20 103(a) Benning, Karami ’626, Stupperich Overall Outcome 1-21 IPR2020-01477 Patent 8,152,788 B2 96 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that claims 1-21 of U.S. Patent No. 8,152,788 B2 have been shown, by a preponderance of the evidence, to be unpatentable; and FURTHER ORDERED that, because this is a Final Written Decision, the 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. FOR PETITIONER: Eagle H. Robinson Michael J. Pohl Jeremy B. Albright NORTON ROSE FULBRIGHT US LLP eagle.robinson@nortonrosefulbright.com michael.pohl@nortonrosefulbright.com jeremy.albright@nortonrosefulbright.com FOR PATENT OWNER: Joshua L. Goldberg Kathleen A. Daley Justin E. Loffredo FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP joshua.goldberg@finnegan.com kathleen.daley@finnegan.com justin.loffredo@finnegan.com