PTAB

IPR2015-01770

Zero Gravity Inside Inc v. FootBalance System Oy

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Individually Formed Footwear And A Related Method
  • Brief Description: The ’589 patent discloses a method for producing individually customized insoles. The method involves heating an insole preform containing a thermoplastic layer until it becomes pliable and then having a user stand on it to mold the insole to the unique shape of their foot as it cools and solidifies.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 are obvious over Cumberland in view of Dieckhaus.

  • Prior Art Relied Upon: Cumberland (Patent 5,027,461) and Dieckhaus (Patent 6,543,158).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cumberland taught the foundational method of creating custom insoles by heating a thermoplastic insert and having a user stand on it during the cooling process. Cumberland also disclosed using PVC, one of the thermoplastic materials recited in the ’589 patent’s Markush group. Petitioner contended that Dieckhaus supplied the remaining key limitations. Specifically, Dieckhaus disclosed a heat-responsive insole moldable in a temperature range of 54°C to 88°C, which satisfied the claimed range of "substantially under 95° C. and above 45° C." Furthermore, Dieckhaus taught a thermoplastic supportive core extending from the heel to "approximately just short of the ball section of the foot," which Petitioner mapped to the claimed limitation of the thermoplastic layer extending "only to the metatarsophalangeal joint of the foot."
    • Motivation to Combine: Petitioner asserted that a POSITA would combine these references for two primary reasons. First, Cumberland’s disclosure of using "preferable materials" that are moldable yet safe to handle would motivate a POSITA to look to a reference like Dieckhaus for specific, suitable low-temperature thermoplastics. Second, it would have been a simple substitution of Dieckhaus’s known 3/4-length supportive layer for Cumberland’s less specific arch support to achieve the predictable result of providing support to the transverse arch, a known objective in insole design.
    • Expectation of Success: A POSITA would have had a high expectation of success because both references operate in the same field of custom thermoplastic insoles and address the same goal of creating a form-fitting support structure using a user's foot as the mold.

Ground 2: Claims 1-3 are obvious over Cumberland in view of Eschweiler and Campbell.

  • Prior Art Relied Upon: Cumberland (Patent 5,027,461), Eschweiler (Patent 6,560,902), and Campbell (Application # 2004/0194352).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1. As before, Cumberland provided the base method for heat-molding an insole. Petitioner argued that Eschweiler and Campbell provided the specific limitations for the thermoplastic layer’s length and material properties. Eschweiler disclosed an orthopedic insole with a support core that "normally ends at the edge 7 in the metatarsal region," which Petitioner contended taught the claimed 3/4-length thermoplastic layer. Campbell disclosed a heat-malleable material with a glass-transition temperature between 45°C and 75°C, squarely meeting the claimed temperature range. Campbell also explicitly disclosed polyethylene terephthalate (PET), which Petitioner argued a POSITA would understand to include the claimed A-PET and PETG.
    • Motivation to Combine: Petitioner argued that a POSITA would have been motivated to combine these references through simple substitution to achieve predictable results. A POSITA would substitute the 3/4-length support core from Eschweiler into Cumberland’s method to predictably improve support. Likewise, a POSITA would substitute the specific, low-temperature thermoplastics from Campbell (e.g., PET) for the more general thermoplastic taught in Cumberland to predictably achieve a safe and effective molding process at a temperature comfortable for the user. Petitioner also advanced an "obvious to try" rationale, noting that Campbell provided a finite and identified set of predictable solutions for the material selection.
    • Expectation of Success: Success was expected because all three references address the design and fabrication of custom orthopedic insoles, and combining their respective features (base method, support length, material properties) involved applying known principles to achieve predictable improvements in comfort and support.

4. Key Claim Construction Positions

  • "said thermoplastic material becoming plastic above its glass transition temperature, which is substantially under 95° C. and above 45° C.": Petitioner argued this term should be construed as a thermoplastic material that "softens and has a glass transition temperature several degrees under 95° C. and above 45° C." This construction was critical to mapping the temperature ranges disclosed in Dieckhaus (54°C-88°C) and Campbell (45°C-75°C) to the claimed range.
  • "wherein the at least one layer of thermoplastic material is configured to reach out from under a heel of a foot only to the metatarsophalangeal joint of the foot": Petitioner proposed this be construed as "wherein the at least one layer of thermoplastic material extends from the heel to just before the toe area." This interpretation equated the claim language to a standard "3/4 length" support layer, which was essential for mapping the disclosures of Dieckhaus (extending "just short of the ball section of the foot") and Eschweiler (ending "in the metatarsal region") to this limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3 of the ’589 patent as unpatentable.