YKK Corp v. 3M Innovative Properties Co

1. Case Identification

• Case #: IPR2020-00699
• Patent #: 10,165,833
• Filed: March 10, 2020
• Petitioner(s): YKK Corporation
• Patent Owner(s): 3M Innovative Properties Co.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Mechanical Fastening Systems
• Brief Description: The ’833 patent discloses a mechanical hook-and-loop fastener with specified ranges for basis weight and the height of its upstanding fastening elements. The invention purports to provide a lower-weight fastener that maintains or improves peel and shear strength, making it suitable for disposable absorbent articles like diapers.

3. Grounds for Unpatentability

Ground 1: Obviousness over Petersen - Claims 1-5, 8-10, 13, and 15-19 are obvious over Petersen.

• Prior Art Relied Upon: Petersen (Application # 2005-0202205).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Petersen, a 3M publication, discloses a stretched mechanical fastening web for sanitary napkins that meets all limitations of the independent claim. Petersen taught a thermoplastic backing with upstanding, capped fastening elements. Petitioner asserted Petersen discloses overlapping ranges for both the upstanding element height (40-2,000 micrometers vs. claimed 40-300 micrometers) and the fastener basis weight (an example of 58 g/m² vs. claimed 25-75 g/m²). Petitioner contended that a POSITA would find it obvious to select values within the claimed ranges from Petersen’s broader disclosure to optimize the fastener for its intended purpose.
  • Motivation to Combine: The argument is based on modifying a single reference. Petitioner asserted that a POSITA would be motivated to optimize the known design variables in Petersen (e.g., height, basis weight) for applications like diapers, where reducing material cost, thickness, and weight for user comfort are primary design goals.
  • Expectation of Success: A POSITA would have had a high expectation of success because the relationships between fastener geometry, weight, and performance were well-understood. Reducing height and basis weight were known methods to achieve a thinner, more flexible fastener, a predictable outcome.
  • Key Aspects: Petitioner emphasized that Petersen itself disclosed the same alleged "unexpected benefits" (i.e., increased fastening efficiency and advantageous shear properties at low densities) that the Patent Owner relied upon to secure allowance of the ’833 patent.

Ground 2: Obviousness over Petersen in view of Miller and/or Daio-Seishi - Claims 1-5, 8-10, 13, and 15-19 are obvious over Petersen, Miller, and/or Daio-Seishi.

• Prior Art Relied Upon: Petersen (Application # 2005-0202205), Miller (Patent 5,845,375), and Daio-Seishi (Japanese Application # JP 2005-319142).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplements Petersen with Miller and Daio-Seishi, which explicitly disclose fastening elements with heights and densities squarely within the claimed ranges. Miller disclosed a specific example of a hook height of 280 micrometers, and Daio-Seishi disclosed examples of 285 and 200 micrometers. Both references also disclosed overlapping density ranges. Petitioner argued that these references cure any perceived deficiency in Petersen’s disclosure of the specific claimed ranges.
  • Motivation to Combine: A POSITA would combine the teachings because Petersen teaches a general method for making lightweight fasteners for diapers, while Miller and Daio-Seishi provide specific, known dimensions for such fasteners. A POSITA seeking to optimize Petersen’s design would naturally look to other known fasteners like those in Miller and Daio-Seishi and would have found it obvious to apply their specific height and density parameters to Petersen’s manufacturing method to achieve a predictable improvement in cost and flexibility.
  • Expectation of Success: The combination was a simple substitution of known elements (fastener dimensions) into a known system (Petersen's fastener) to optimize a known variable (height/weight), yielding predictable results.

Ground 3: Obviousness over Petersen in view of Buzzell - Claim 9 is obvious over Petersen and Buzzell.

• Prior Art Relied Upon: Petersen (Application # 2005-0202205) and Buzzell (Patent 6,035,498).

• Core Argument for this Ground:

  • Prior Art Mapping: Claim 9 requires that the thermoplastic backing has "stretch-induced molecular orientation." Petitioner argued that Petersen inherently discloses this limitation because its primary teaching involves stretching a thermoplastic web, a process known to cause molecular orientation. Buzzell was cited as explicitly teaching that longitudinally stretching an extruded resin base web "pre-orient[s] the molecular chains," which advantageously strengthens the web.
  • Motivation to Combine: A POSITA would combine the references because Petersen teaches the act of stretching to reduce thickness and basis weight, and Buzzell explicitly describes the known benefit of that stretching process—molecular orientation leading to increased strength. Buzzell simply articulated an inherent and well-known result of the process already taught by Petersen.
  • Expectation of Success: A POSITA would have known with certainty that stretching a polymer web, as taught by Petersen, would induce molecular orientation and strengthen it, as explained by Buzzell.

• Additional Grounds: Petitioner asserted numerous additional obviousness grounds for various claims, primarily relying on combinations of Petersen, Miller, and Daio-Seishi with other references like Busam (for loop material properties), and Ausen and Wood (for specific diaper configurations).

4. Key Claim Construction Positions

• "mechanical fastener": Petitioner proposed this term refers only to the hook component of a hook-and-loop system, comprising the thermoplastic backing and upstanding elements. This construction excludes the corresponding loop material, based on claim differentiation with dependent claim 10, which explicitly adds a "loop material" to form a "fastening system."
• "basis weight of the mechanical fastener": Consistent with the above, Petitioner argued this refers to the weight per unit area of only the hook component (backing plus elements), a standard term in the nonwoven textile industry.
• "stretch-induced molecular orientation": Petitioner proposed this refers to the "preferential orientation of the polymer chains caused by deformation," a standard definition understood by a POSITA.

5. Key Technical Contentions (Beyond Claim Construction)

• Rebuttal of Unexpected Results: Petitioner’s central technical argument was that the Patent Owner’s assertions of unexpected results (increased shear performance with lower density and thinner backing) were unfounded. Petitioner argued that:
  • The patent’s supporting data was scientifically unreliable and failed to systematically vary key parameters.
  • The alleged benefits are not commensurate with the full scope of the claims, as they depend on backing thickness and element density, which are not recited in independent claim 1.
  • The primary prior art reference, Petersen, had already disclosed these same "unexpected" advantages years earlier.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), contending that the Examiner did not properly consider the most material prior art. Petitioner stated that Petersen, Miller, Buzzell, and Wood were only cited in an Information Disclosure Statement (IDS) and never used in a rejection. Further, Daio-Seishi and Busam were not of record at all. Petitioner asserted that 3M failed to bring the highly material disclosures of Petersen to the Examiner’s attention during prosecution, particularly its teachings on the alleged unexpected results, making the new grounds substantively different from what the Examiner considered.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’833 patent as unpatentable.