PTAB

IPR2018-00190

VF Outdoor LLC v. Cocona Inc

Title: Active Particle-Enhanced Membrane and Methods for Making and Using the Same
Brief Description: The ’287 patent is directed to improving waterproof garments by incorporating active particles into a membrane. This technology aims to enhance properties like the moisture vapor transmission rate (MVTR), addressing the "hot and humid" feeling common in non-breathable waterproof materials.

Prior Art Relied Upon: Dutta (WO 1995/033007).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Dutta, which was not considered during the original prosecution, discloses every limitation of the challenged claims. Dutta described a waterproof, air-permeable, non-porous polymer film made from a hydrophilic polyurethane solution (the "cured base material"). It explicitly taught increasing the film's MVTR by incorporating hydrophilic absorbent particles, such as Sephadex particles. Petitioner contended that Dutta’s examples disclose a film thickness and particle size (e.g., 76.2 microns and 20-50 microns, respectively) that meet the claimed thickness ratio, and an MVTR (6730 g/m²/day) that falls within the claimed range.

Prior Art Relied Upon: Dutta (WO 1995/033007) and Haggquist (Application # 2004/0018359).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that if the "absorbent particles" in Dutta were not considered "active particles" under the patent's definition, it would have been obvious to a POSITA to substitute them with the explicitly "active particles" taught by Haggquist. Haggquist, which shares an inventor with and is incorporated by reference into the ’287 patent, discloses using particles like activated carbon for moisture management.
- Motivation to Combine: A POSITA would combine the references to improve the performance of Dutta's membrane. Both references are analogous art, teaching the addition of porous, water-trapping particles to fabrics to enhance moisture management for garments. Dutta itself shows its Sephadex particles are interchangeable with other particle types.
- Expectation of Success: A POSITA would have had a reasonable expectation of success in substituting Haggquist's particles into Dutta's system, as both references employ particles with the same function (trapping water in pores) to achieve the same result (improved moisture management).

Prior Art Relied Upon: Halley (WO 2000/70975).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Halley, also not considered during prosecution, independently anticipates the claims. Halley discloses a composite material with a water-resistant, water-vapor-permeable polymer coating (a cured base material) that incorporates particulate solids like carbon to improve MVTR. Petitioner asserted that Halley's disclosed ranges for coating thickness (e.g., 5-100 microns) and particle size (e.g., less than 50,000 nm) satisfy the claimed thickness ratio and that its reported MVTR values (e.g., 6924-7736 g/m²/day) meet the claimed range.

Prior Art Relied Upon: Halley (WO 2000/70975) and Haggquist (Application # 2004/0018359).
Core Argument for this Ground:
- Prior Art Mapping: This ground targets claims 38-39, which require a "removable encapsulant" to protect the active particles. Petitioner argued that Haggquist explicitly teaches this missing element: a system for preserving the properties of active particles using a removable encapsulant to prevent premature deactivation.
- Motivation to Combine: A POSITA seeking to enhance the durability and performance of the active particle membrane taught by Halley would have been motivated to incorporate the protective encapsulant system from Haggquist. The references are analogous, and Haggquist addresses the known problem of particle deactivation.
- Expectation of Success: A POSITA would reasonably expect success because Haggquist teaches that its encapsulant technology works with the same types of particles (e.g., activated carbon, silica) disclosed in Halley.

"active particles": Petitioner argued for a broad construction meaning particles capable of causing chemical or physical reactions, including adsorption, absorption, or trapping substances. This construction, based on the ’287 patent's specification and its incorporation of Haggquist, was critical for asserting that the "absorbent particles" of Dutta meet the claim limitation.
"first thickness": Citing prosecution history, Petitioner asserted that "first thickness" refers to the thickness of the entire waterproof composition, including both the base material and the embedded active particles, not just the base material alone.
"second thickness": Based on statements made by the applicant during prosecution to support an amendment, Petitioner argued that "second thickness" means the particle size of the active particles.
"order of magnitude": Petitioner contended this term means "10 times," relying on an Examiner's definition proposed during prosecution that the applicant did not challenge.

Petitioner requests institution of an inter partes review and cancellation of claims 27, 28, 30, 32, 33, and 35-39 of Patent 8,945,287 as unpatentable.