Curt G Joa Inc v. FamecCanica Data Spa

1. Case Identification

• Case #: IPR2016-00906
• Patent #: 6,994,761
• Filed: April 15, 2016
• Petitioner(s): Curt G. Joa, Inc.
• Patent Owner(s): Fameccanica.Data S.p.A.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Disposable Absorbent Garment such as a Diaper or Training Pants and a Process of Making the Same
• Brief Description: The ’761 patent describes a method for producing a breathable and stretchable section for a disposable absorbent garment. The method involves ultrasonically bonding a three-layer laminate (trilaminate) composed of two outer non-woven material layers sandwiching an inner stretchable elastic layer, creating an aperture through the elastic layer to provide breathability.

3. Grounds for Unpatentability

Ground 1: Anticipation over Kielpikowski - Claims 1-19 are anticipated under 35 U.S.C. §102(b) by Kielpikowski.

• Prior Art Relied Upon: Kielpikowski (Patent 4,842,596).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kielpikowski disclosed every element of the challenged claims. Specifically, Kielpikowski taught a method for making a breathable, elastic nonwoven laminar fabric by sandwiching an elastomeric film between two nonwoven facing sheets. It explicitly disclosed using ultrasonic bonding to join the facing sheets together through the elastomeric film at spaced-apart sites, thereby creating breathable apertures through the film. Petitioner asserted this process directly mapped onto the steps of claim 1, including selecting the layers, positioning them, and securing them with ultrasonic energy to form apertures for breathability. Arguments for dependent claims 2-19 followed, contending that Kielpikowski also disclosed using the laminate in a diaper's waist region (claim 6), stretching the elastic layer during bonding (claim 4), and that the inherent result of the described ultrasonic process would be the fragmentation of the elastic material (claims 9, 10, 18, 19) and the creation of a "Hole Vent Bond" where the aperture in the elastic layer is larger than holes in the outer layers (claims 8, 17).

Ground 2: Obviousness over Kielpikowski and Kling - Claims 1-19 are obvious under 35 U.S.C. §103(a) over Kielpikowski in view of Kling.

• Prior Art Relied Upon: Kielpikowski (Patent 4,842,596) and Kling (European Patent Application EP0494941).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Kielpikowski as the primary reference teaching the core trilaminate structure and the ultrasonic bonding process that forms breathable apertures, as detailed in Ground 1. Kling was introduced primarily through its prosecution history during a European opposition proceeding.
  • Motivation to Combine: Petitioner argued that the prosecution history of Kling demonstrated that a person of ordinary skill in the art (POSITA) understood that ultrasonic bonding could be used in two primary ways: (1) to perforate and bond all three layers together (as in Kielpikowski), or (2) to perforate only the intermediate elastic layer while bonding the two outer layers to each other through the perforations. Because the prior art, as interpreted during the Kling opposition, already taught both bonding outcomes, it would have been obvious for a POSITA to apply the well-known ultrasonic bonding process of Kielpikowski to achieve the specific bond configuration claimed in the ’761 patent. The different bond types were seen as predictable results of varying process parameters, which a POSITA could achieve through routine experimentation.
  • Expectation of Success: A POSITA would have a high expectation of success because ultrasonic bonding was a conventional technique for laminating nonwovens, and the prior art already demonstrated its ability to create breathable apertures in such structures.

Ground 3: Obviousness over Coslett and Kielpikowski - Claims 8 and 17 are obvious over Coslett in view of Kielpikowski.

• Prior Art Relied Upon: Coslett (European Patent Application EP0685586A3) and Kielpikowski (Patent 4,842,596).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targeted claims 8 and 17, which recite a "Hole Vent Bond" where holes are formed through all three layers and the hole in the central elastic layer is larger than the holes in the outer layers. Petitioner asserted that Coslett taught the creation of a "Fiber Covered Vent Bond," where ultrasonic energy forms an aperture in the elastic layer but the outer non-woven layers bond to each other through that aperture without being fully pierced. Kielpikowski, in contrast, was argued to teach the "Hole Vent Bond" claimed.
  • Motivation to Combine: A POSITA knew from the prior art that ultrasonically bonding a trilaminate could result in different bond types, including the "Fiber Covered Vent Bond" of Coslett and the "Hole Vent Bond" of Kielpikowski. Petitioner contended it would have been obvious to a POSITA to modify the known process of Coslett by applying the teachings of Kielpikowski to create the specific "Hole Vent Bond" structure. This was presented as a simple combination of known elements (a base process from Coslett) with a known technique (creating a specific bond type from Kielpikowski) to achieve a predictable result.
  • Expectation of Success: Success was expected because both references used ultrasonic bonding on similar trilaminate structures, and achieving either bond type was simply a matter of adjusting known process parameters.

• Additional Grounds: Petitioner asserted anticipation of claims 1-7, 9-16, and 19 by Coslett; anticipation of claims 1-3, 5, 7, 9, and 10 by Cree (Patent 6,255,236); and obviousness of claims 8 and 17 over Srinivasan (Patent 5,851,935) in view of Kielpikowski.

4. Key Claim Construction Positions

• "Fragmenting": Petitioner argued that since this term was not defined in the specification, it should be interpreted based on the patent's discussion of "fracturing." The specification explained that the level of ultrasonic energy sufficient to bond the non-woven layers also causes the elastic material (with its lower energy requirement) to "fracture and/or disintegrate." Therefore, "fragmenting" should be construed as the fracturing of the elastic material resulting from the ultrasonic bonding process.
• "Metered layers": Petitioner contended this phrase in claim 1 was a typographical error and should be construed as "material layers," consistent with the language used in independent claims 11 and 19.
• "Whereby" Clauses: Petitioner argued that the numerous "whereby" clauses in the claims (e.g., "whereby an aperture is formed...") simply stated the intended result of the preceding process step (ultrasonic bonding) and did not add a patentable limitation. Such clauses, being a function of the process itself, should be given no patentable weight.

5. Key Technical Contentions (Beyond Claim Construction)

• "Fiber Covered Vent Bond" vs. "Hole Vent Bond": Petitioner established a critical technical distinction between two possible outcomes of the ultrasonic bonding process. The "Fiber Covered Vent Bond" involves bonding the outer layers through an aperture in the middle elastic layer, but the outer layers themselves are not apertured. The "Hole Vent Bond," central to claims 8 and 17, involves creating an aperture through all three layers. Petitioner argued both bond types were known results of high-speed manufacturing processes and that the ’761 patent was an improper attempt to claim one of these known, inherent outcomes.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-19 of the ’761 patent as unpatentable.