PTAB

IPR2020-01426

Sage Products LLC v. PureWick Corp

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Urine Collection Device
  • Brief Description: The ’508 patent relates to a vacuum-assisted urine collection device, particularly for female incontinence. The system uses an elongated container with an array of openings, over which a moisture-wicking article is wrapped and secured to draw urine away from a user into the container and then to a collection vessel.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-8, and 17-19 are anticipated by Mahnensmith

  • Prior Art Relied Upon: Mahnensmith (Application # 2006/0015080).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Mahnensmith, which was not considered during prosecution, disclosed all elements of the challenged claims. Mahnensmith taught a vacuum-assisted urine collection device with a container (“pad 12”) defining a chamber and having a "plurality of openings." It also disclosed a moisture-wicking article (“porous sheet member 36”) that "overlays" the openings and is "releasably secured to pad 12 by a series of snap fasteners." Petitioner asserted this "overlying" configuration met the "wrapping" limitation of the claims. The system used a vacuum to draw urine through the article, into the chamber, and out through an outlet to a collection vessel, as claimed.
    • Key Aspects: Petitioner emphasized that Mahnensmith was presented as an improvement over Kuntz 166 (the primary prosecution reference) by specifically teaching a wrapped, easily removable wicking article to solve problems associated with the Kuntz 166 design.

Ground 2: Claims 1, 3-8, and 17-19 are anticipated by Keane

  • Prior Art Relied Upon: Keane (Patent 3,349,768).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Keane, also not before the examiner, disclosed a "suction evacuated urinal" for female use that anticipated the claims. Keane’s "suction head" served as the claimed container, defining a "cavity" (chamber) with "inlet means" (openings) and an outlet connected to a vacuum source. A "layer of an absorbent, open-cell, porous material" (the moisture-wicking article) was "interposed between the innermost contacting surface of the suction head" and the user, which Petitioner argued constituted wrapping. The device was secured in place with elastic straps, meeting the securing limitation.

Ground 3: Claims 1, 3-8, and 17-19 are obvious over Kuntz 166 in view of DesMarais

  • Prior Art Relied Upon: Kuntz 166 (Patent 4,747,166) and DesMarais (Patent 4,425,130).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the Patent Owner overcame an anticipation rejection during prosecution over Kuntz 166 solely by adding the limitation that the wicking article is secured by "wrapping." While Kuntz 166 taught inserting a perforated tube (container) into a bore in an absorbent pad, DesMarais taught a sanitary napkin with a wicking "overwrap" folded around an absorbent core. Notably, Kuntz 166 explicitly incorporated DesMarais by reference for its "structural details and fabrication techniques."
    • Motivation to Combine: A POSITA would combine DesMarais's wrapping technique with the Kuntz 166 device to solve known and documented problems with the "insertion" method of Kuntz 166, such as fluid pooling, reduced vacuum effectiveness, and difficulty of replacement. Wrapping was a well-known, simple solution to improve wicking and fluid flow in similar absorbent articles.
    • Expectation of Success: The combination involved applying a well-known technique (wrapping) to a known device (Kuntz 166) to solve a recognized problem. The outcome would have been predictable, as it merely required configuring the Kuntz 166 device to use a known overwrap design taught by the incorporated DesMarais reference.

  • Additional Grounds: Petitioner asserted additional challenges including obviousness of claims 4, 5, and 19 over Mahnensmith and Keane based on known design choices for wicking materials, anticipation of claims 1 and 3-8 by Kuntz EP355, and obviousness of claims 17-19 over Kuntz EP355 in view of Mahnensmith.

4. Key Claim Construction Positions

  • "article has 'the moisture-wicking characteristic of a paper towel'" (claims 4, 5, 19): Petitioner argued this term should be construed broadly to include any material that can transport fluid via capillary action. This construction was supported by the prosecution history, where the examiner acknowledged that the pad in Kuntz 166 met this limitation because its layers exhibited capillary action.
  • "dimensioned for being secured over the array of openings by the application of elastic bands..." (claim 18): Petitioner argued this phrase requires only that the article is capable of being secured with elastic bands, not that it must be secured in that specific way. This construction, requiring only capability, was also adopted by the examiner during prosecution.

5. Relief Requested

  • Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1, 3-8, and 17-19 as unpatentable.