PTAB

IPR2015-01769

Zero Gravity Inside Inc v. FootBalance System Oy

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Individually Formed Footwear And A Related Method
  • Brief Description: The ’433 patent describes a customizable insole for footwear containing at least one thermoplastic layer. The layer is designed to soften within a specific temperature range (45° C to 95° C) that is low enough for a user to stand on the heated insole to mold it directly to their foot, after which it cools and retains its custom shape.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are obvious over Dieckhaus in view of Foss.

  • Prior Art Relied Upon: Dieckhaus (Patent 6,543,158) and Foss (Application # 2004/0209059).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Dieckhaus discloses a multi-layer, heat-responsive custom insole with all major structural features of claim 1. Dieckhaus teaches a moldable thermoplastic layer that becomes pliable in a temperature range (54° C to 88° C) suitable for direct foot molding, satisfying the claimed temperature limitation. Petitioner asserted Dieckhaus’s disclosure of a support core extending “from the back or the heel portion...to approximately just short of the ball section of the foot” teaches the 3/4-length thermoplastic layer recited in claim 1. Dieckhaus also expressly teaches "three-quarter length inserts" and a full-length lower layer. Foss was cited to disclose the specific thermoplastics (ABS, PVC, A-PET, and PETG) recited in claim 1, which Dieckhaus only described using general polymer types and trade names.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would be motivated to combine the references for several reasons. Dieckhaus teaches the general use of thermoplastics for its insoles but does not limit its disclosure to specific examples, which would motivate a POSITA to look to other art, like Foss, for suitable, known materials. Petitioner argued this combination amounts to a simple substitution of one known thermoplastic material (from Foss) for another (in Dieckhaus) to achieve the predictable result of a functional, moldable insole.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because both Dieckhaus and Foss operate in the same field of custom footwear insoles and teach using thermoplastics for this purpose. Substituting the specific, well-known thermoplastics from Foss into the insole structure of Dieckhaus would predictably result in a functional product.

Ground 2: Claims 1-7 are obvious over Eschweiler in view of Campbell.

  • Prior Art Relied Upon: Eschweiler (Patent 6,560,902) and Campbell (Application # 2004/0194352).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this ground as an alternative in case Dieckhaus was found not to teach a 3/4-length supportive layer. Eschweiler discloses a multi-layer orthopedic insole made entirely of thermoplastic material. Petitioner argued that Eschweiler’s support core, described as ending in the “metatarsal region,” corresponds to the claimed 3/4-length layer extending to the metatarsophalangeal joint. Eschweiler also discloses an option for its top and bottom covers to extend the full length of the foot, satisfying the full-length lower layer limitation. Campbell was cited to teach the use of specific low-temperature thermoplastics (including PET, ABS, and PVC) that have a glass-transition temperature between 45° C and 75° C, making them suitable for molding directly against a user's foot.
    • Motivation to Combine: The primary motivation was to improve Eschweiler's manufacturing process. Eschweiler’s insole was shaped by a "press mould," implying high temperatures, rather than by a user's foot. Campbell, in contrast, explicitly teaches using low glass-transition temperature thermoplastics to facilitate convenient shaping by the end-user. Petitioner argued a POSITA would be motivated to apply the known technique from Campbell (user-molding with low-temperature materials) to the insole structure of Eschweiler to create an improved, more user-friendly product that did not require a factory press mold.
    • Expectation of Success: A POSITA would expect success in this combination because it involves applying a known and advantageous fabrication technique (user-molding from Campbell) to a similar device (the insole of Eschweiler) to yield the predictable benefit of easier, point-of-sale customization.

4. Key Claim Construction Positions

Petitioner asserted several constructions as critical to its invalidity arguments, based on the patent and expert declarations regarding foot anatomy.

  • "becomes plastic substantially under 95° C. and above 45° C.": Construed to mean the thermoplastic layer has a glass transition temperature within this range, allowing it to soften for molding.
  • "configured to reach out from under a heel of a foot only to the metatarsophalangeal joint of the foot": Construed to mean a standard 3/4-length support layer that extends from the heel to just before the toe area, providing support to the transverse arch.
  • "wherein the lower layer is configured to reach from under the heel to the metatarsophalangeal joint and extend further to a toe of the foot": Construed to mean the lower layer is full-length, extending from the heel to the toe area.
  • "reaches out at least from under the heel of the foot to under a plantar arch of the foot" (Claim 3): Construed to mean a standard 2/3-length support layer, which provides support to the plantar arch.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-7 of the ’433 patent as unpatentable.