Saint-Gobain Abrasives, Inc.v.3M Innovative Properties Company

Patent Trial and Appeal Board

Feb 26, 2015

13181085 (P.T.A.B. Feb. 26, 2015)

Trials@uspto.gov Paper 7
571-272-7822 Entered: February 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAINT-GOBAIN ABRASIVES, INC.,
Petitioner,

v.

3M INNOVATIVE PROPERTIES COMPANY,
Patent Owner.
____________

Case IPR2014-01280
Patent 8,628,026 B2

Before RICHARD E. RICE, SCOTT E. KAMHOLZ, and
SCOTT A. DANIELS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
A. Background
Saint-Gobain (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–33 of U.S. Patent No. 8,628,026 B2 (“the ’026 patent”).
Paper 1 (“Pet.”). 3M (“Patent Owner”) filed a Preliminary Response. Paper
6 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
of the Petition and the Preliminary Response, we determine that Petitioner
has not established a reasonable likelihood of prevailing on the claims
challenged in the Petition. Accordingly, we do not institute an inter partes
review of claims 1–33 of the ’026 patent on any of the asserted grounds.
B. Additional Proceedings
In addition to this Petition, Petitioner has filed a Petition challenging
the patentability of claims 1–33 of U.S. Patent No. 8,424,780 B2 (“the ’780
patent”).
1
See IPR2014-01281. Petitioner states that the ’026 patent is
presently asserted against Petitioner in 3M Co. v. Saint-Gobain Abrasives,
Inc., Case No. 0:14-cv-00128-ADM-FLN, pending in the U.S. District Court
for the District of Minnesota. Pet. 1.
Petitioner also points out that Patent Owner has asserted patents
related to the ’026 patent in other lawsuits against other companies,
including, 3M Innovative Properties Co. v. Illinois Tool Works, Inc., 06-cv-
02459-JRT-FLN (“the ITW lawsuit”). Id. at 8.

1
The ’780 patent is related as a continuation of application no. 13/181,085,
now the ’026 patent.
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C. The ’026 Patent
The ’026 patent (Ex. 1001), titled “Apparatus for Spraying Liquids,
and Disposable Containers and Liners Suitable for use Therewith,” relates to
a spray gun for dispensing fluid such as paint. Ex. 1001, 1:41–59, Fig. 6.
The spray gun has a spray nozzle for dispensing the fluid and a container for
holding the fluid to be sprayed. Id. at 4:54–58. Figure 2 of the ’026 patent
is reproduced below.

Figure 2 depicts paint pot 11 for holding fluid or paint, which includes
container 12 and disposable liner 13, among other things. Id. at 5:25–8. The
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disposable liner simplifies the cleaning process of the spray gun. Id. at
2:33–39, Fig. 2. The complete reservoir structure holding the paint is
referred to in the ’026 patent as the “paint pot.” Id. at 2:26.
The ’026 patent describes liner 13 as “collapsible and, preferably, has
a comparatively rigid base 13A and comparatively thin side walls 13B so
that, when it collapses, it is in the longitudinal direction by virtue of the side
walls collapsing rather than the base.” Id. at 5:52–55. Figure 7 below,
illustrates the collapsed liner 13 removed from container 12 with lid 15,
following use. Id. at 6:43–45.

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As depicted by Figure 7 of the ’026 patent, above, removal of
collapsed liner 13 and lid 15 “leav[es] the container 12 . . . clean and ready
for re-use with a fresh liner and lid.” Id. at 6:46–47.

D. Illustrative Claim
Of the challenged claims, claims 1, 19, 24, and 30 are independent.
Each of dependent claims 2–18 depends, directly or indirectly, from claim 1.
Each of dependent claims 20–23 depends, directly or indirectly, from claim
19. Each of dependent claims 25–29 depends, directly or indirectly, from
claim 24. Each of claims 31–33 depends, directly or indirectly, from claim
30. Claim 1 illustrates the claimed subject matter and is reproduced below:

1. A method of preparing a batch of paint, the method
comprising:
(a) providing a receptacle having an open top end;
(b) providing a liner having an open end, a base, and a rim
at its open end that corresponds in shape to the open top end of the
receptacle, the liner being shaped to fit into the
open top end of the receptacle so that a batch of paint can
be added to the liner without coming into contact with
the receptacle,
wherein the liner is self-supporting;
(c) placing the liner into the open top end of the receptacle;
(d) adding a first volume of paint into the open end of the
liner; and
(e) fitting a lid on the open end of the liner to create a
reservoir containing a batch of paint, wherein the liner is
collapsible as paint is withdrawn from within the liner,
and wherein the liner is removable from the receptacle
together with the lid.

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E. The Alleged Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable on the
following specific grounds.
2

References Basis Claims Challenged
Mursa
3
and Packaging Digest
4
§ 103 1, 11–18, 30, 32, and 33
Mursa, Packaging Digest, and
Arndt
5

§ 103 2, 4–7, 19, 20, 24, 25, and
29
Mursa, Packaging Digest,
Arndt and Barr
6

§ 103 3, 23, and 28
Mursa, Packaging Digest, and
Deaton
7

§ 103 8 and 31
Mursa, Packaging Digest,
Deaton and Yotoriyama
8

§ 103 9
Mursa, Packaging Digest, and
Yotoriyama
§ 103 10
Mursa, Packaging Digest,
Arndt, and Deaton
§ 103 21, 22, 26, and 27
Sullivan
9
§ 102 1 and 15–18
Sullivan and Arndt § 103 2, 4–7, 19, and 20
Sullivan, Arndt, and Barr § 103 3 and 23
Sullivan and Deaton § 103 8
Sullivan, Deaton, and
Yotoriyama
§ 103 9
Sullivan and Yotoriyama § 103 10

2
Petitioner supports its challenge with a Declaration of Karl R. Leinsing,
MSME, PE (Ex. 1002). See infra.
3
Ex. 1011, U.S. Patent No. 5,094,543(Mar. 10, 1992).
4
Ex. 1012, PACKAGING DIGEST, A CAHNERS PUBLICATION (June 1996).
5
Ex. 1014, DE 2412743 (published Sept. 25, 1975).
6
Ex. 1015, U.S. Patent No. 3,834,570 (Sept. 10, 1974).
7
Ex. 1016, U.S. Patent No. 4,321,922 (Mar. 30, 1982).
8
Ex. 1017, U.S. Patent No. 4,383,635 (May 17, 1983).
9
Ex. 1018, U.S. Patent No. 5,727,878 (Mar. 17, 1998).
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Sullivan and Kaltenbach
10
§ 103 11–13, 30, 32, and 33
Sullivan, Kaltenbach, and
Mursa
§ 103 14
Sullivan, Arndt, and Deaton § 103 21 and 22
Sullivan, Arndt, and
Kaltenbach
§ 103 24, 25, and 29
Sullivan, Arndt, Kaltenbach,
and Deaton
§ 103 26 and 27
Sullivan, Arndt, Kaltenbach,
and Barr
§ 103 28
Sullivan, Kaltenbach, and
Deaton
§ 103 31

II. CLAIM CONSTRUCTION
A. Legal Standard
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC., No. 2014-01301, slip op. at 16, 19
(Fed. Cir. Feb. 4, 2015) (“Congress implicitly adopted the broadest
reasonable interpretation standard in enacting the AIA,” and “the standard
was properly adopted by PTO regulation.”). Claim terms are given their
ordinary and customary meaning as would be understood by a person of
ordinary skill in the art at the time of the invention and in the context of the
entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). If the specification “reveal[s] a special definition given to
a claim term by the patentee that differs from the meaning it would
otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v.

10
Ex. 1019, U.S. Patent No. 3,432,104 (Mar. 11, 1969).
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AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
We apply this standard to the claims of the ’026 patent.
1. The liner is collapsible as paint is withdrawn
Independent claims 1, 19, 24, and 30 recite the limitation that “the
liner is collapsible as paint is withdrawn.” According to Petitioner, the term
means: “a liner wherein the side walls are capable of distortion as paint is
withdrawn so that, by the application of moderate pressure, the rim of the
liner can be pushed towards the base of the liner, without the side walls
being ruptured.” Pet. 12 (citing Ex. 1002 ¶ 56). Patent Owner does not
present any claim constructions in the Preliminary Response. Prelim. Resp.
5 n.2.
As pointed out by Petitioner, the ’026 patent explains that:
The term “collapsible” as used herein with reference to
the side walls of a container/liner in accordance with the
invention indicates that the side walls can be distorted so that,
by the application of moderate pressure (e.g. hand pressure), the
rim of the container can be pushed towards the base of the
container, without the side walls being ruptured.

Ex. 1001, 3:60–65. Based on the record before us, Petitioner’s proposed
construction is reasonable and consistent with its plain meaning and its use
in the specification of the ’026 patent. Consequently, we construe this
phrase as “a liner wherein the side walls are capable of distortion as paint is
withdrawn so that, by the application of moderate pressure, the rim of the
liner can be pushed towards the base of the liner, without the side walls
being ruptured.”
2. The liner is self-supporting
Independent claims 1, 19, 24, and 30 each recite that “the liner is self-
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supporting.” Petitioner proposes that under the broadest reasonable
interpretation, this phrase means “a liner that can hold its shape.” Pet. 13–
14. Patent Owner does not propose its own construction.
The specification of the ’026 patent supports Petitioner’s construction.
Although it does not give a specific definition of “self-supporting,” the
specification does explain, however, that “the liner is self-supporting but is
also collapsible.” Ex. 1001, 5:51–52. It is further described in the
specification that during mixing of the paint prior to spraying, the liner must
retain its shape so that “it is less likely to be dragged around inside the
container during the mixing process.” Id. at 6:65–7:1.
For this reason, and for purposes of this Decision, we adopt
Petitioner’s construction.
3. Other Constructions Offered by Petitioner
Petitioner offers constructions for “the liner is removable from the
receptacle together with the lid” and “fitting a lid on the open end of the
liner to create a reservoir containing a batch of paint.” Pet. 14–16. We
determine that no express construction is needed for purposes of this
Decision for the noted terms or phrases.
III. ANALYSIS
A. Claims 1, 11–18, 30, 32, and 33 — Alleged obviousness over
Mursa and Packaging Digest
Petitioner asserts that claims 1, 11–18, 30, 32, and 33 would have
been obvious over Mursa in view of Packaging Digest. Pet. 21–34.
Petitioner has failed to establish a reasonable likelihood of prevailing on its
assertion that claims 1, 11–18, 30, 32, and 33 are obvious for the reasons
explained below.
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Petitioner argues that Mursa, which teaches liners for paint guns, and
Packaging Digest, which discloses liners for baby bottles, are analogous arts,
and that one of ordinary skill in the art “would have looked to liners in other
fields when developing paint gun products.” Pet. 21. Petitioner supports
this allegation by stating that during depositions in the ITW lawsuit certain
inventors of the subject matter of the ’026 patent testified that “the baby
bottle liner described in Packaging Digest . . . was considered in conceiving
their collapsible liner ‘invention.’” Id. at 22. Petitioner contends that
Packaging Digest teaches a broad range of uses for the disclosed
thermoformed baby bottle liners, and that the ’026 Specification is, itself,
evidence of analogous art because it contemplates the use of spray gun paint
pot liners in food applications. Id. at 22–23.
Petitioner specifically alleges the reason to combine Mursa and
Packaging Digest is that “[o]ne of skill in the art would have incorporated
Packaging Digest’s collapsibility in Mursa’s liner because it would enable
compact disposal of the liner after use.” Id. at 23; Ex. 1002 ¶ 120. Mr.
Leinsing testifies that “[m]odifying Mursa’s liner to incorporate Packaging
Digest’s collapsibility would be routine for one of skill in the art—one
would follow the manufacturing technique taught by Packaging Digest and
use a mold that corresponded to the internal configuration of Mursa’s
receptacle.” Pet. 23–24; Ex. 1002 ¶ 120.
We are not persuaded that Petitioner has explained adequately why an
ordinary artisan would have had a reason to modify Mursa’s liner in view of
Packaging Digest to include a liner that “is collapsible as paint is
withdrawn” as required by the independent claims. Petitioner’s arguments
that it would have been “routine,” and “predictable,” to use a collapsible
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liner with a paint pot in a paint spray gun are conclusory and unpersuasive.
Pet. 23, 25. Further, the asserted reason for the combination, i.e. compact
disposal of the liner, amounts to little more than an identification of an end-
benefit from the combination, not an explanation of why one of ordinary
skill would have modified a Mursa’s liner to be “collapsible as paint is
withdrawn” as the claims require. As stated in KSR, “a patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). “Although common sense directs
one to look with care” at patent claims that combine “two known devices
according to their established functions, it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements.” Id.; Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011) (internal quotations omitted)
(“Obviousness requires more than a mere showing that the prior art includes
separate references covering each separate limitation in a claim under
examination. Rather, obviousness requires the additional showing that a
person of ordinary skill at the time of the invention would have selected and
combined those prior art elements . . . .”).
Petitioner improperly relies on the disclosure of the ’026 patent itself
to justify its obviousness theory. For example, Petitioner argues that “the
’026 patent teaches that a liner in a spray gun during use can collapse onto a
siphon tube without rupturing; in the same way, the mixing implements of
Mursa would also not rupture the liner during mixing, for example, even if
the liner were to collapse onto the mixing elements.” Pet. 24. It is simply
impermissible to use the disclosure of the ’026 patent as a basis for what
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would have been known to those of ordinary skill in the art at the time of the
invention. See In re Shuman, 361 F.2d 1008, 1012 (C.C.P.A. 1966) (“It is
impermissible to first ascertain factually what appellants did and then view
the prior art in such a manner as to select from the random facts of that art
only those which may be modified and then utilized to reconstruct
appellants’ invention from such prior art.”).
Mr. Leinsing testifies that it would have been “routine” for one of
skill in the art to modify Mursa with a collapsible liner such as in Packaging
Digest. Ex. 1002 ¶ 120. Mr. Leinsing further states that the modification
could have been accomplished by following the thermoforming
manufacturing process disclosed in Packaging Digest “using a mold that
corresponded to the internal configuration of Mursa’s receptacle.” Id. This
may explain how to make a collapsible liner, but, does not explain why one
of skill in the art would have considered making the liner collapsible as paint
is withdrawn. Therefore, this evidence is not probative of obviousness.
Petitioner alleges that the inventors of the ’026 patent knew of the
Packaging Digest reference and that it “was considered in conceiving their
collapsible liner ‘invention.’” Pet. 22 (citing Ex. 1008, 12:9–17, 17:22–
18:13, 23:25–24:5). The cited “evidence” is attorney argument from a
hearing in open court during the ITW litigation. Ex. 1008, 1–3. It is hardly
evidence of what was known or relied upon by the inventors at the time of
conception. In any event, it is hindsight to show obviousness by relying on
the inventors’ insights in combining the prior art to reach the invention. See
Shuman, 361 F.2d at 1012.
Petitioner thus provides neither a sufficiently articulated reasoning nor
a rational evidentiary underpinning explaining why an ordinary artisan
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would have had reason, in light of Packaging Digest, to add a liner that is
collapsible as paint is withdrawn to Mursa’s paint pot and paint spraying
system. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S. at
419.)
Consequently, we are not persuaded that Petitioner has demonstrated a
reasonable likelihood that independent claims 1, 11–18, 30, 32, and 33 are
unpatentable over Mursa and Packaging Digest under 35 U.S.C. § 103(a).
B. Additional obviousness grounds based on Mursa, Packaging
Digest, and one or more of Arndt, Barr, Deaton, and
Yotoriyama
The challenges to the remaining claims 2–10, 19– 29, and 31, include
additional secondary references, Arndt, Barr, Deaton, and Yotoriyama,
applied to the underlying combination of Mursa and Packaging Digest. Pet.
17–18, 34–45. Petitioner, however, fails to remedy its lack of sufficiently
articulated reasoning having a rational evidentiary underpinning explaining
why a person of ordinary skill in the art, in light of Packaging Digest, would
have had reason to add a liner that is collapsible as paint is withdrawn to
Mursa’s paint pot and paint spraying system. Consequently, we are not
persuaded that Petitioner has demonstrated a reasonable likelihood that
claims 2–10, 19– 29, and 31 are unpatentable as obvious over Mursa,
Packaging Digest, and either one or more of Arndt, Barr, Deaton, and
Yotoriyama.
C. Claims 1 and 15–18 – Alleged anticipation by Sullivan
Petitioner alleges that claims 1 and 15–18 are anticipated by Sullivan.
Petitioner presents a claim chart to explain how Sullivan discloses all
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elements of these claims. Pet. 46–52. Petitioner contends, inter alia, that
Sullivan discloses a liner for a paint container which is “flexible and may be
folded into a relatively small volume of space, for disposal purposes.” Pet.
45 (citing Ex. 1018, 4:33–36). Petitioner asserts that as it is foldable,
Sullivan’s liner meets the limitation in claim 1 paragraph (e) requiring that
“the liner is collapsible as paint is withdrawn from within the liner.” Id. at
50. Because Sullivan’s liner can be folded, Petitioner argues, “the side walls
of Sullivan’s liner are capable of distortion as paint is withdrawn.” Id.
Petitioner’s expert, Mr. Leinsing, comes to the same conclusion, asserting
that “folding,” corresponds to distortion of the liner during withdrawal of
paint from the paint pot. Ex. 1002 ¶ 177. Patent Owner responds that the
ability of Sullivan’s liner to be “folded” does not meet the plain language of
claim 1 requiring the liner to be collapsible “as paint is withdrawn.” Prelim.
Resp. 11.
Patent Owner argues that Sullivan does not disclose a liner that
collapses as paint is withdrawn. Id. Patent Owner contends that the liner is
inserted into the container and then is pressed against the container as paint
is added. Id. at 12. In support, Patent Owner points to Sullivan’s disclosure
explaining that the paint “tends to cause liner 40 to be pressed against the
side and bottom end walls 12 of the container.” Id. at 12 citing Ex. 1018,
4:10–13. According to Patent Owner, following paint mixing, paint is
poured out of the liner and container, and contrary to the claimed
“collapsible” liner, Sullivan’s liner is then “stripped” from the container. Id.
at 11–12 citing Ex. 1018, 4:26–31.
Our review of Sullivan persuades us that Petitioner has not
demonstrated sufficiently that this reference explicitly, or inherently,
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discloses a liner that is collapsible as paint is withdrawn from the liner.
Petitioner does not direct us, with any specificity, to evidence demonstrating
that Sullivan’s foldable liner is capable of distortion during withdrawal of
paint from the container, as required by the independent claims. Rather, as
noted above, Sullivan describes the liner being pressed against the sides of
the container and having to be stripped from the container after the paint has
been emptied. Ex. 1018, 4:28–30.
Consequently, we are not persuaded that Petitioner has demonstrated a
reasonable likelihood that independent claims 1 and 15–18 are unpatentable
as anticipated by Sullivan.
D. Additional obviousness grounds based on Sullivan and one or
more of Arndt, Barr, Deaton, Yotoriyama, Kaltenbach, and
Mursa
The obviousness challenges to the remaining claims 2–14 and 19– 33,
include additional secondary references, Arndt, Barr, Deaton, Yotoriyama,
Kaltenbach, and Mursa, combined with Sullivan. Pet. 17–18. Petitioner,
however, fails with these additional references, to remedy the lack of a liner
that is collapsible as paint is withdrawn in the base reference to Sullivan.
See Pet. 52–59. Consequently, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood that claims 2–14 and 19– 33, are
unpatentable as obvious over Sullivan and one or more of Arndt, Barr,
Deaton, Yotoriyama, Kaltenbach, and Mursa.

IV. SUMMARY
For the foregoing reasons, based on the record presented, we
determine that Petitioner has not demonstrated a reasonable likelihood of
prevailing on any of the asserted grounds of unpatentability.
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that institution of inter partes review is denied.
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For PETITIONER:
Mehran Arjomand
Desmond O’Sullivan
MORRISON & FOERSTER LLP
marjomand@mofo.com
dosullivan@mofo.com

For PATENT OWNER:

Mark D. Sweet
Michele C. Bosch
Timothy McAnulty
Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.
Mark.sweet@finnegan.com
Michele.bosch@finnegan.com
timothy.mcanulty@finnegan.com