Neenah Inc v. Schwendimann Jodi

1. Case Identification

• Case #: IPR2020-00915
• Patent #: 7,766,475
• Filed: May 7, 2020
• Petitioner(s): Neenah, Inc.
• Patent Owner(s): Jodi A. Schwendimann
• Challenged Claims: 1-21

2. Patent Overview

• Title: Image Transfer Sheets for Dark Fabrics
• Brief Description: The ’475 patent is directed to multi-layer image transfer articles and methods for transferring images onto dark-colored fabrics, such as T-shirts. The technology centers on incorporating an opaque white layer that serves as a background for the transferred image, making it visible on the dark material.

3. Grounds for Unpatentability

Ground 1: Claims 1-21 are obvious over Oez-US in view of Meyer.

• Prior Art Relied Upon: Oez-US (Patent 5,665,476) and Meyer (Patent 3,359,127).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Oez-US teaches a transfer paper for dark textiles that includes the core components of the challenged claims: a carrier paper (substrate), a plastic coating (polymeric layer), and the incorporation of a white pigment (titanium dioxide) and polyurethane. However, Oez-US did not expressly teach that its white layer is "opaque" or that it is a separate layer from the ink-receptive layer. Petitioner asserted that Meyer remedies these deficiencies by teaching an image transfer sheet with an "opaque continuous layer" to provide a contrasting background, which is distinct from a separate polymer layer (e.g., polyamide) for receiving printed indicia.
  • Motivation to Combine: A POSITA would combine the teachings of Oez-US and Meyer because both references are directed to solving the same problem of improving image quality on dark textiles by incorporating a white background into the transfer sheet itself. The petition argued it would have been an obvious design choice to implement Meyer's distinct opaque and ink-receptive layer structure into the Oez-US system to improve image quality by preventing the co-mingling of colored ink pigments with the white background pigment.
  • Expectation of Success: Combining known layering techniques from references in the same field to achieve a known benefit (improved image contrast and clarity) would have been a predictable and straightforward modification.

Ground 2: Claims 1-21 are obvious over Oez-PCT in view of Oez-US.

• Prior Art Relied Upon: Oez-PCT (WO 97/41489) and Oez-US (Patent 5,665,476).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Oez-PCT, authored by the same inventor as Oez-US, teaches a multi-layer transfer paper for dark textiles that includes a removable substrate, a "white coating" containing polyurethane and titanium dioxide, and a plastic/dispersion layer for receiving images. While Oez-PCT discloses the core layered structure, Petitioner asserted that Oez-US further provides specific teachings for a "peel first, then apply heat" method of use and a release layer of wax or silicone to facilitate peeling.
  • Motivation to Combine: A POSITA would combine the teachings because both references are from the same inventor and address the same technical problem. It would have been natural to incorporate the advantageous release layer and transfer method from Oez-US into the multi-layer article described in Oez-PCT to create an optimized and commercially practical product.
  • Expectation of Success: The combination involved integrating features from two highly related documents by the same inventor, which would have led to a predictable outcome.

Ground 3: Claims 1-21 are obvious over Kronzer in view of Oez-US.

• Prior Art Relied Upon: Kronzer (Patent 5,798,179) and Oez-US (Patent 5,665,476).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kronzer discloses a printable, multi-layer heat transfer paper with a base sheet (substrate), a release layer, and a "print layer" for receiving an ink-jet printed image. Although Kronzer teaches that its layers can contain pigments generally, it does not explicitly teach incorporating a white or luminescent pigment to provide an opaque background for use on dark fabrics. Oez-US was asserted to supply this missing element, teaching the incorporation of a white pigment into a polymer layer precisely for this purpose.
  • Motivation to Combine: A POSITA seeking to adapt Kronzer's printable transfer paper for the well-known application of printing on dark fabrics would have been motivated to look to known solutions in the art. Oez-US provided that exact solution by teaching the inclusion of a white, opaque layer. A POSITA would combine the teachings to improve the versatility and image quality of Kronzer's product on dark substrates.
  • Expectation of Success: Adding a known opacifying pigment layer (from Oez-US) to a standard transfer sheet structure (from Kronzer) to achieve a known function was a predictable design modification with a high expectation of success.

4. Key Claim Construction Positions

• Petitioner argued for adopting the claim constructions from a prior district court case, the Arkwright Lawsuit. The central construction is for the terms "white layer" and "opaque first layer."
• The proposed construction requires "a layer comprising a concentration or configuration of pigment providing a white/opaque background for received indicia and which further comprises a polymer that melts and mixes with another layer or layers during application."
• This "melts and mixes" limitation was asserted to be a binding disclaimer made by the Patent Owner during prior interference proceedings. Petitioner contended this construction was critical, as the cited prior art references all teach the use of thermoplastic polymers that would inherently melt and mix with adjacent layers when heated during the image transfer process.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate.
• The petition asserted that none of the cited prior art references were substantively considered or relied upon by the Examiner during the original prosecution of the ’475 patent. While Oez-US and Kronzer were submitted in an Information Disclosure Statement (IDS), they were never mentioned in any Office Action. Oez-PCT and Meyer were never cited to the Examiner at all, making them new to the examination process.

6. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 1-21 of the ’475 patent as unpatentable.