Tietex International Ltd.v.Precision Fabrics Group, Inc.

Patent Trial and Appeal Board

Feb 11, 2016

12172681 (P.T.A.B. Feb. 11, 2016)

Trials@uspto.gov Paper 7
571-272-7822 Entered: February 11, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TIETEX INTERNATIONAL, LTD.,
Petitioner,

v.

PRECISION FABRICS GROUP, INC.,
Patent Owner.
____________

Case IPR2015-01671
Patent 8,796,162 B2
____________

Before JAMES T. MOORE, GRACE KARAFFA OBERMANN, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
Tietex International, Ltd. (“Petitioner”) filed a Petition (“Pet.”) to
institute an inter partes review of claims 1–30 of U.S. Patent No. 8,796,162
B2 (“the ’162 patent,” Ex. 1001). Paper 1. Precision Fabrics Group, Inc.
(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 5.
We have jurisdiction under 35 U.S.C. § 314.
Upon consideration of the Petition, Preliminary Response, and the
evidence of record, we exercise our discretion not to institute, and also
determine that Petitioner has not established a reasonable likelihood of
prevailing with respect to the unpatentability of claims 1–30 of the ’162
patent. Accordingly, we deny the Petition and do not institute an inter
partes review.
A. Related Proceedings
Petitioner indicates that the ’162 patent is asserted in a civil action, to
which it is a party, titled Precision Fabrics Group, Inc. v. Tietex
International, Ltd., Case No. 1:14-cv-00650 (M.D. N.C.), which has been
consolidated with Precision Fabrics Group, Inc. v. Tietex International,
Ltd., Case No. 1:13-cv-00645 (M.D. N.C.). Pet. 1. Petitioner also identifies
IPR2014-01248 (the “1248 IPR”), also filed by Petitioner and directed to
U.S. Patent No. 8,501,639 B2 (“the ’639 patent”), as a related proceeding.
Id. A Final Written Decision (the “1248 Final Decision”) issued in the 1248
IPR on January 27, 2016. Tietex Int’l , Ltd. v. Precision Fabrics Group,
Inc., Case IPR2014-01248, slip op. at 22 (PTAB Jan. 27, 2016) (Paper 39).
B. The ’162 Patent
The ’162 patent, titled “Thermally Protective Flame Retardant
Fabric,” is directed to lightweight fabrics that provide protection from heat,
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flame, and electrical arc. Ex. 1001, 1:15–18. According to the ’162 patent,
the claimed fabric “provides a high degree of thermal protection compared
to conventional fabrics” (id. at 5:13–14) and is soft and flexible, yet durable
enough for long-term use and “inexpensive enough to be disposable and/or
suitable for limited use applications” (id. at 4:31–38). The fabric comprises
“a substrate treated with a combination of a flame retardant agent and an
intumescent agent.” Id. at 3:60–62. The ’162 patent lists a number of
commercially-available flame retardants that can be used in the claimed
fabric. Id. at 6:1–22, 6:50–7:23 (Table 2). The ’162 patent also describes
that a thermal barrier is provided by an intumescent finish that chars and
swells upon contact with a flame, and likewise lists a number of
commercially available intumescent finishes that can be used in the claimed
fabric. Id. at 7:24–27, 7:50–64 (Table 3).
The ’162 patent describes a number of embodiments of the claimed
fabric, including embodiments having basis weights ranging from 3.0 to 8.0
ounces per square yard (id. at 5:24–28) and fabric thicknesses ranging from
0.01 to 0.15 inches (id. at 5:31–33). The ’162 patent also describes an
embodiment where “the substrate comprises a nonwoven fabric chosen from
needlepunched, spunbonded, thermalbonded, spunlaced, resin bonded, stitch
bonded, and meltblown fabrics.” Id. at 5:35–38.
C. Illustrative Claim
Petitioner challenges claims 1–30 of the ’162 patent. Claim 1 is the
only independent claim, and reads as follows:
1. A fabric consisting of a single layer of a non-woven
substrate:
wherein the non-woven substrate comprises cellulosic fibers,
polyester fibers and aramid fibers,
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wherein the non-woven substrate is treated with an intumescent,
flame retardant finish comprising one or more
compounds comprising phosphorous and/or nitrogen,
wherein the non-woven substrate has a basis weight ranging
from 2.0 to 15.0 ounces per square yard,
wherein the non-woven substrate is a non-woven stitch-bonded
substrate, and
wherein the fabric has thickness ranging from 0.01 to 0.15
inches.
Ex. 1001, 12:6–20.
D. The Prior Art
Petitioner relies on the following prior art references:
Reference Patent Date Exhibit No.
Murch US 3,934,066 January 20, 1976 1007
Radwanski US 5,912,196 June 15, 1999 1006
Külper US 6,436,528 B1 August 20, 2002 1004
Rowan GB 2293572 A April 3, 1996 1005

E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–30 of
the ’162 patent on the following grounds:
References Basis Claims Challenged
Külper and Rowan § 103(a) 1–30
Radwanski, Rowan, and
Murch § 103(a) 1–30

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II. ANALYSIS
A. Claim Interpretation
We interpret claims of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[the claims] appear[].” 37 C.F.R. § 42.100(b). The Board, however, may
not “construe claims during IPR so broadly that its constructions are
unreasonable under general claim construction principles. . . . ‘[T]he
protocol of giving claims their broadest reasonable interpretation . . . does
not include giving claims a legally incorrect interpretation.’” Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citation
omitted). “Rather, ‘claims should always be read in light of the specification
and teaching in the underlying patent’” and “[e]ven under the broadest
reasonable interpretation, the Board’s construction ‘cannot be divorced from
the specification and the record evidence.’” Id. (citations omitted).
Petitioner states that “[t]he claims of the ’162 [patent] use the same
terminology as the claims in related US patent 8,501,639, which is the
subject of [the] previously instituted [1248 IPR]” and argues “that for
purposes of this proceeding, the same definitions should apply.” Pet. 7. In
the 1248 IPR, we determined that the broadest reasonable interpretation of
the term “intumescent” in light of the specification is “a substance that
swells and chars upon exposure to heat or flame.” Tietex Int’l, Ltd. v.
Precision Fabrics Group, Inc., Case IPR2014-01248, slip op. at 5–6 (PTAB
Jan. 30, 2015) (Paper 14); see id., slip. op. at 4–5 (PTAB Jan. 27, 2016)
(Paper 39). Petitioner and Patent Owner agree that “intumescent” as used in
claim 1 of the ’162 patent should be interpreted the same way in this
proceeding. Pet. 7; Prelim. Resp. 17. Therefore, for purposes of this
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Decision, we interpret “intumescent” to mean “a substance that swells and
chars upon exposure to heat or flame.”
B. Statutory Discretion to Institute
Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
instituted “unless . . . the information presented in the petition . . . and any
response . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” As we have recognized in other proceedings, “Congress did not
mandate that an inter partes review must be instituted under certain
conditions. Rather by stating that the Director—and by extension, the
Board—may not institute review unless certain conditions are met, Congress
made institution discretionary.” Intelligent Bio-Systems, Inc. v. Illumina
Cambridge, Ltd., Case IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013)
(Paper 19). Thus, in determining whether to institute an inter partes review,
the Board “may deny some or all grounds for unpatentability for some or all
of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).
In exercising our discretion, we are guided by the statutory
requirement, in promulgating regulations for inter partes review, to consider
the effect of any regulations on “the efficient administration of the Office
[and] the ability of the Office to timely complete proceedings,” 35 U.S.C.
§ 316(b), as well as the requirement to construe our rules to “secure the just,
speedy, and inexpensive resolution of every proceeding,” 37 C.F.R.
§ 42.1(b). The Board weighs petitioners’ desire to be heard against the
interests of patent owners, who seek to avoid harassment via repeated
administrative attacks. See H.R. Rep. No. 112-98, pt. 1, at 48 (2011) (“[AIA
proceedings] are not to be used as tools for harassment or a means to prevent
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market entry through repeated litigation and administrative attacks on the
validity of a patent. Doing so would frustrate the purpose of the section as
providing quick and cost effective alternatives to litigation.”).
With that guidance in mind, we turn to the question of whether the
Petition in this proceeding warrants inter partes review on the ground that
claims 1–30 would have been obvious under 35 U.S.C. § 103(a) over the
combination of Radwanski, Rowan, and Murch, given that similar issues
were the subject of our final decision in the 1248 IPR. In the 1248 IPR,
Petitioner challenged claims 1–22 of the ’639 patent as being unpatentable
under 35 U.S.C. § 103(a) as obvious over the combination of Radwanski,
Rowan, and Murch. 1248 Final Dec. 2. We determined, based on the record
developed during the trial, that Petitioner did not show by a preponderance
of the evidence that the challenged claims of the ’639 patent are
unpatentable. Id. at 22.
Petitioner and Patent Owner recognize that the ’162 patent and the
’639 patent have identical descriptive content. Pet. 5; Prelim. Resp. 3.
Petitioner also acknowledges that “[i]ndependent [c]laim 1 of the ’162
patent recites a combination that was already substantively considered by the
Board in instituting the inter partes review of claims 1 and 9” of the ’639
patent in the 1248 IPR. Pet. 29. Petitioner argues that
[i]ndependent claim 1 of the ’162 patent differs from claim 1 of
[the ’639 patent] only in the respect that it adds the feature of
aramid fibers (as recited in claim 9 of [the ’639 patent]) while
expanding a weight range from 3.0–8.0 osy to 2.0–15.0 osy and
removing several recited features. Since the weight range recited
in the ’162 patent fully encompasses the weight range recited in
claim 1 of [the ’639 patent], the expanded range actually
diminishes the likelihood of non-obviousness. Likewise,
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removing limitations also has the effect of rendering the claim
more likely to be obvious.
Id. Specifically, claims 1 of the ’639 and ’162 patents share at least the
following elements: (1) a fabric consisting of a single-layer, non-woven
substrate; (2) treatment with an intumescent finish comprising one or more
phosphorous compounds or nitrogen compounds; (3) a basis weight ranging
from 3.0 to 8.0 ounces per square yard; (4) a thickness ranging from 0.01 to
0.15 inches; and (5) a non-woven and stitch-bonded substrate. Compare
1248 Final Dec. 4 (reproducing claim 1 of the ’639 patent), with Ex. 1001,
12:6–20. Other limitations that appear in claim 1 of the ’639 patent can be
found in the dependent claims of the ’162 patent, such as a contact thermal
protective performance value of at least 4.5 (claim 6), and applying the
intumescent finish to the non-woven substrate in an amount ranging from 15
to 130 percent solids (claim 20). See Ex. 1001, 12:30–31, 12:64–67.
We approach our discretion to deny a petition on a case-by-case basis.
There are sufficient reasons under the specific facts of this case to exercise
our discretion to deny institution on Petitioner’s asserted ground that claims
1–30 of the ’162 patent would have been obvious over the combination of
Radwanski, Rowan, and Murch. Notably, in this proceeding, the claims of
the ’162 patent are so similar in scope and content to those in the ’639 patent
that Petitioner is relying on the same arguments that we found to be
unpersuasive in the 1248 Final Decision. See Pet. 29; 1248 Final Dec. 22.
We do not see how the efficient administration of the Office, or the just,
speedy, and inexpensive resolution of every proceeding, would be secured
by instituting an inter partes review in this proceeding when the same prior
art references and arguments are asserted against substantially the same
claim limitations as in the 1248 IPR.
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Prejudice to the parties also weighs against exercising our discretion
to institute an inter partes review in this proceeding. In particular, we are
not persuaded that Patent Owner should be forced to expend resources
defending the claims in the ’162 patent when it has already successfully
defended substantially similar claims in the ’639 patent against essentially
the same arguments raised with respect to the same prior art applied in the
1248 IPR. Based upon our review of the record, we do not perceive that
Petitioner has offered any argument or evidence that significantly differs
from that offered in the petition in the 1248 IPR that is likely to lead to a
different result and, thus, would justify instituting an inter partes review in
this proceeding.
We determine, under the circumstances, that instituting an inter partes
review on Petitioner’s asserted ground that claims 1–30 of the ’162 patent
would have been obvious over the combination of Radwanski, Rowan, and
Murch would not be an efficient use of administrative resources. Cf.
Heckler v. Chaney, 407 U.S. 821, 931 (1985) (acknowledging an agency
decision not to undertake permitted action “often involves a complicated
balancing of a number of factors which are peculiarly within its expertise”).
Therefore, we exercise our discretion under 35 U.S.C. § 314(a) and 37
C.F.R. § 42.108(b) and decline to institute an inter partes review of claims
1–30 of the ’162 patent based on the combination of Radwanski, Rowan,
and Murch.
C. Obviousness over Külper and Rowan
Petitioner contends that the subject matter of claims 1–30 would have
been obvious under 35 U.S.C. § 103(a) over the combination of Külper and
Rowan. Pet. 8–29. Petitioner provides claim charts and relies on the
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Declarations of Brian Callaway (Ex. 1002) and Dr. A. Richard Horrocks
(Ex. 1003) in support of its contentions. Id.
1. Overview of Külper
Külper is directed to an adhesive tape with a tapelike backing
comprising a nonwoven material that is coated on at least one side with an
adhesive. Ex. 1004, 1:4–8. Külper states that stitchbonded webs are
“suitable as an intermediate for forming an adhesive tape of the invention.”
Id. at 3:13–14. According to Külper, the stitchbonded web can be comprised
of polyester fibers, polypropylene fibers, viscose fibers, or cotton fibers. Id.
at 3:22–24.
Külper describes a preferred embodiment having “a web weight of
from 50 to 500 g/m2, in particular from 80 to 200 g/m2” and “a web
thickness of from 100 to 3000 µm, in particular from 200 to 1000 µm.” Id.
at 5:31–36. Külper states that the web backing can be “flameproofed by the
addition of flame retardants, preferably, ammonium polyphosphate and/or
the selection of suitable fibres of low or zero flammability.” Id. at 5:49–52.
Külper also states that “it is possible to introduce, for example, solid flame
retardants into binder dispersions, with the binder providing not only for
adhesive bonding but also binding the flame retardant permanently in the
web.” Id. at 5:53–56.
2. Overview of Rowan
Rowan is directed to a fire and heat-resistant fabric that includes a
laminate of first and second sheets of material connected together, where
each sheet comprises a mixture of an organic intumescent filler and an
adhesive. Ex. 1005, Abstract. The organic intumescent filler and adhesive
mixture is applied to a first side of each sheet of material in liquid form and
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partially penetrates into the sheet. Id. at 2. Upon drying, each sheet of
material will have “an inner layer formed of just the mixture, an intermediate
layer formed of that part of the sheet of material that has been penetrated by
the mixture, and an outer layer formed of that part of the sheet of material
that has not been penetrated by the mixture.” Id. In the Rowan fabric, the
first and second sheets are positioned such that the inner layers are touching,
and are at least partially connected together by the adhesive in the mixture.
Id.
Rowan states that the first and second sheets of material preferably are
non-woven fabric structures. Id. at 5. Rowan states that “[p]referably, the
first and the second sheets of material contain cellulose-based organic fibres,
together with a phosphorous-based flame retardant” and an organic
intumescent filler comprising an ammonium
phosphate/melamine/pentaerythritol system. Id. at 8.
3. Discussion
Petitioner contends that the combination of Külper and Rowan
discloses all of the elements of claim 1. Pet. 8–11, 22–23. For example,
Petitioner contends that Külper teaches “a single layer of a non-woven,
stitch bonded substrate containing cellulosic fibers and/or polyester fibers,”
having a basis weight and thickness within the ranges recited in claim 1, and
that Rowan teaches a non-woven, stitch-bonded substrate comprising
cellulosic and aramid fibers that is “treated with an intumescent flame
retardant finish comprising phosphorous compounds.” Id. at 9–10.
Patent Owner argues that Külper and Rowan do not disclose all of the
limitations of claim 1. Prelim. Resp. 19–26. Patent Owner argues that
Külper “is not directed to a single-layer, stitchbonded, non-woven fabric”
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because “the adhesive tape of Külper is not only ‘mechanically
preconsolidated,’ but is ‘additionally consolidated adhesively using a
chemical binder and is coated on at least one side with an adhesive.’” Id. at
21 (citing Ex. 1004, 1:6–8). Patent Owner also argues that Rowan teaches
away from the claimed invention because it “shows that a single-layer, non-
woven fabric would not function with an intumescent finish because at least
a second layer of non-woven fabric is needed to lock the intumescent
composition into place.” Id. at 24. According to Patent Owner, “[a] person
of ordinary skill in the art reading the teachings of Külper and Rowan in
combination would have been led to modify Külper to include multiple
sheets of fabric that are laminated together with an intumescent filler
sandwiched between the sheets to create a fabric.” Id. at 25.
A showing of obviousness must be supported by an articulated
reasoning with rational underpinning to support a motivation to combine the
prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (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.”)). An
analysis regarding an apparent reason to combine known elements “should
be made explicit.” Id.
Petitioner asserts that a person having ordinary skill in the art would
have combined the teachings of Külper and Rowan “because both disclose
non-woven, stitch-bonded, cellulose-containing webs that may include fibers
of low or zero flammability and which are coated with phosphorous-
containing flame retardants for heat and flame resistance.” Pet. 10–11
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(citing Ex. 1002 ¶ 82; Ex. 1003 ¶ 63). That statement of similarity,
however, does not constitute an articulated reasoning with rational
underpinnings as to why one of ordinary skill in the art would combine
elements of Külper with some elements of Rowan, and why one of ordinary
skill in the art would modify the teachings of Külper in view of Rowan’s
teachings to arrive at the claimed invention.
Petitioner also asserts that it would have been obvious to a person
having ordinary skill in the art to modify the non-woven substrate used in
Külper’s adhesive tape to include aramid fibers in combination with
cellulosic fibers, and then use an intumescent finish on the resulting
stitchbonded fabric for heat and fire resistance, as taught by Rowan. Pet. 11.
Petitioner, however, does not provide sufficient explanation as to why a
person having ordinary skill in the art would look to Rowan, which is
directed to a fire and heat-resistant fabric made by connecting together two
sheets of laminate, each of which comprises a mixture of an intumescent
filler and an adhesive (Ex. 1005, Abs.), for guidance in improving heat and
fire resistance of an adhesive tape such as the one described in Külper.
Petitioner does not direct us to, nor do we discern, statements in Külper with
respect to the degree of heat and fire protection provided by the described
adhesive tape.
Petitioner also does not explain why a person having ordinary skill in
the art would not use the two-layer laminate fabric described by Rowan to
improve the Külper adhesive tape’s heat and fire resistance. Rowan explains
that its two-layer laminate “advantageously enables the organic intumescent
filler to be locked into the fabric when the sheets of material are connected
together with the inner layers touching each other” and “helps to ensure that
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the organic intumescent filler does not fall out of the fabric when the fabric
is used and it starts to wear and become torn.” Ex. 1005, 2–3. The Petition
does not include sufficient explanation as to why a person having ordinary
skill in the art, when looking to improve the heat and fire resistance of the
Külper adhesive tape, would look to Rowan’s use of aramid fibers and an
intumescent finish, when Rowan emphasizes the importance of using two
sheets of laminate to lock an intumescent filler in the fabric.
Instead, Petitioner appears to contend that each element of the ’162
patent was known in the prior art. That is insufficient to establish that
the ’162 patent would have been obvious under a theory of obviousness
based on the combination of Külper and Rowan. See Cheese Sys. Inc. v.
Tetra Pak Cheese and Powder Sys., Inc., 725 F.2d 1341, 1352 (Fed. Cir.
2013) (“Obviousness cannot be based on the hindsight combination of
components selectively culled from the prior art to fit the parameters of the
patented invention.” (internal quotation marks omitted)). As explained 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, 550 U.S. at 418. Consequently, we are not persuaded that
the Petition establishes why a person having ordinary skill in the art would
attempt to improve Külper by looking at Rowan.
For these reasons, Petitioner has not established a reasonable
likelihood that it would prevail on the ground that claim 1, and claims 2–30
that depend, directly or indirectly, therefrom, would have been obvious
under 35 U.S.C. § 103(a) over the combination of Külper and Rowan.
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III. CONCLUSION
For the foregoing reasons, we conclude that, on the present record,
Petitioner has not established a reasonable likelihood that it would prevail on
its challenge that claims 1–30 of the ’162 patent are unpatentable.

IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Petition is denied.

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PETITIONER:

Neil C. Jones
NELSON MULLINS RILEY & SCARBOROUGH, LLP
Neil.Jones@nelsonmullins.com

James M. Robertson
J.M. ROBERTSON LLC
jrobertson@jmrpatents.com

PATENT OWNER:

Lynne A. Borchers
Peter D. Siddoway
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
lborchers@myersbigel.com
psiddoway@myersbigel.com