Attends Healthcare Products Inc v. Paul Hartmann AG

1. Case Identification

• Case #: IPR2020-01479
• Patent #: 8,771,249
• Filed: August 17, 2020
• Petitioner(s): Attends Healthcare Products, Inc.
• Patent Owner(s): Paul Hartmann AG
• Challenged Claims: 1-54

2. Patent Overview

• Title: Absorbent Incontinence Article With Improved Closure System
• Brief Description: The ’249 patent discloses an adult incontinence diaper featuring a chassis and four separate ear components (wings). The key aspect is a closure system where the retaining forces between a mechanical fastener (e.g., hook-and-loop) and the front ears are higher than the retaining forces between the fastener and the outer face of the chassis, guiding users to a more ideal and secure fit.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7, 8, 11-27, 29-41, and 43-54 are obvious over Karami ’772 in view of Benning.

• Prior Art Relied Upon: Karami ’772 (Application # 2006/0058772) and Benning (Application # 2005/0256496).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Karami ’772 taught an adult diaper with an integral wing structure where the wings are treated (e.g., water-jet apertured) to create a higher fastening affinity for hook fasteners compared to the untreated central backsheet area. Benning taught a diaper with a separate chassis and four discrete nonwoven wings. The petition asserted that combining Benning’s separate-wing construction with Karami ’772’s differential affinity teaching directly arrives at the structure of claim 1, including the limitation of higher retaining forces on the ears than on the chassis.
  • Motivation to Combine: A POSITA would combine these references to achieve the known benefits of a separate-wing design, such as reduced manufacturing cost, improved manufacturability, and the ability to use different materials for the wings and chassis. For example, a POSITA could use a more breathable, non-laminated nonwoven for the wings (as in Benning) while using a liquid-impermeable laminate for the chassis (as in Karami ’772), thereby improving user comfort.
  • Expectation of Success: The modification was presented as a routine and straightforward combination of known diaper design elements to achieve predictable benefits.

Ground 2: Claims 1-5, 7, 8, 11-17, 19-27, 29-41, and 43-54 are obvious over Benning in view of Karami ’626.

• Prior Art Relied Upon: Benning (Application # 2005/0256496) and Karami ’626 (Application # 2003/0220626).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground combined Benning's separate four-wing diaper structure with teachings from Karami ’626. Karami ’626 taught using hook-type fasteners that engage directly with a nonwoven backsheet, eliminating the need for a separate landing zone and thus improving size adjustability. Petitioner asserted that a POSITA would modify Benning by replacing its landing zone and fasteners with Karami ’626’s system. The claimed differential retaining forces would be achieved by using a higher basis weight nonwoven for the wings (as taught in Benning and Karami '626 for strength) and a lower basis weight nonwoven for the backsheet (for softness and comfort), a known design trade-off that results in stronger fastener engagement with the heavier wing material.
  • Motivation to Combine: A POSITA would be motivated to incorporate Karami ’626’s teachings into Benning’s design to improve size-adjustability and reduce costs by eliminating the dedicated landing zone. Further motivation existed to use a film-nonwoven backsheet like that in Karami ’626 to provide a more comfortable, cloth-like feel for the user.
  • Expectation of Success: Combining a known fastener system with a known diaper structure to leverage the known properties of different basis-weight nonwovens was argued to be a predictable design choice for a POSITA.

Ground 3: Claims 1-5, 7, 12-18, 19-22, 24-27, 31, 32, 34-41, 43-46, 48, and 50-54 are obvious over Benning, Karami ’626, and Stupperich.

• Prior Art Relied Upon: Benning, Karami ’626, and Stupperich (German Application # DE 10 2004 053 469 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Stupperich to the Benning and Karami ’626 combination. Stupperich disclosed specific nonwovens engineered to balance fastener engagement strength with damage-free releasability. Stupperich explicitly taught using a higher-basis-weight nonwoven (45 gsm) and a lower-basis-weight nonwoven (30 gsm) and measured the resulting differential retaining forces with the same type of fastener disclosed in Karami ’626. Petitioner argued that applying Stupperich’s higher-basis-weight nonwoven to the wings and its lower-basis-weight nonwoven to the backsheet of the modified Benning diaper would inherently produce the claimed differential retaining forces.
  • Motivation to Combine: A POSITA, having combined Benning and Karami ’626, would look to Stupperich to optimize the nonwoven materials for the wings and backsheet. Stupperich directly addressed the known design challenge of balancing fastener durability and retaining force, providing an advantageous solution a POSITA would have sought.
  • Expectation of Success: Using Stupperich’s purpose-built nonwovens in the combined Benning/Karami ’626 structure was presented as an obvious path to achieving a well-balanced, high-performance diaper with predictable results.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Miyamoto ’499 (for adding an adhesive closure aid), Jacobs (for temperature treating the backsheet), Anderson (for ring-rolling the backsheet), and Fernfors (for adding reinforcing material).

4. Key Claim Construction Positions

• Petitioner asserted that formal claim construction was unnecessary. However, it proposed constructions should the Patent Owner argue for means-plus-function limitations:
• Foil (Claims 17, 18): Petitioner argued "foil" means "film," based on the specification's reference to earlier diapers where the outer face was constituted by a "foil material" and POSITA knowledge that early diapers used film backsheets.
• Reinforcing Material (Claim 28): If treated as means-plus-function, the function is to provide a reinforced connection. The corresponding structure is "additional material added to the side part," such as a strip of nonwoven material, textile, or film.

5. Arguments Regarding Discretionary Denial

• The petition argued against discretionary denial, noting that a prior inter partes review (IPR) against a related patent (IPR2013-00173), which was based on similar grounds (Benning and Karami ’772), was instituted but terminated before a final written decision. Petitioner contended that this history weighs in favor of institution, citing Apple Inc. v. Fintiv, Inc. for the principle that institution can serve system efficiency and integrity by resolving patentability questions that were previously found likely to succeed but were left unresolved.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-54 of Patent 8,771,249 as unpatentable under 35 U.S.C. §103.