Attends Healthcare Products Inc v. Paul Hartmann AG

1. Case Identification

• Case #: IPR2020-01480
• Patent #: 8,708,990
• Filed: August 17, 2020
• Petitioner(s): Attends Healthcare Products, Inc.
• Patent Owner(s): Paul Hartmann AG
• Challenged Claims: 1-21

2. Patent Overview

• Title: Absorbent Incontinence Article With Improved Closure System
• Brief Description: The ’990 patent describes an adult incontinence diaper featuring a central chassis and four discrete side parts (wings). The claimed invention centers on using nonwoven materials for the outer surfaces of both the chassis and the front wings, allowing hook-type fasteners to engage either surface. The key limitation requires the retaining force between the fasteners and the front wings to be higher than the retaining force between the fasteners and the chassis backsheet.

3. Grounds for Unpatentability

Ground 1: Obviousness over Karami ’772 and Benning - Claims 1-7 & 9-20 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 disclosed all elements of the claimed diaper but in an integral-wing configuration, where the wings are part of a single backsheet piece. Karami ’772 achieved the claimed differential retaining forces by treating the wing portions of its nonwoven backsheet to have a higher affinity for hook fasteners. Benning disclosed a well-known separate-chassis-and-wings construction. Petitioner asserted that modifying Karami ’772 with Benning’s separate wing design would result in the claimed invention.
  • Motivation to Combine: A POSITA would combine these references to improve manufacturability and reduce costs, as separate-wing designs were common and allowed the use of smaller, more flexible equipment. This modification would also permit the use of different materials for the wings and chassis, such as a stronger, higher basis weight nonwoven for the wings (for secure fastening) and a softer, lower basis weight nonwoven for the backsheet (for user comfort).
  • Expectation of Success: The modification was a routine design choice. Using different basis weight nonwovens for the wings and backsheet was a known technique for balancing strength and comfort, and it would predictably and inherently create the differential retaining forces recited in the claims.

Ground 2: Obviousness over Benning and Karami ’626 - Claims 1-7 & 9-20 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: Petitioner asserted that Benning taught a diaper with a separate-chassis-and-wings structure but used adhesive tape fasteners that attached to a dedicated landing zone. Karami ’626 taught replacing such systems with hook-type fasteners that could engage directly with any part of a nonwoven surface, thereby increasing size-adjustability. Karami ’626 also taught using a film-nonwoven laminate backsheet for a cloth-like feel and using different basis weight nonwovens for wings versus the backsheet.
  • Motivation to Combine: A POSITA would combine Benning’s structure with Karami ’626’s teachings to solve the known limitations of adhesive fasteners and dedicated landing zones. The combination would enhance size-adjustability and improve wearer comfort. Karami ’626’s teaching of using a higher basis weight nonwoven for the wings and a lower basis weight for the backsheet provided a clear reason to implement a design that would result in the claimed differential retaining forces.
  • Expectation of Success: Replacing adhesive fasteners with hook-and-loop systems was a standard industry progression. A POSITA would expect that combining a higher basis weight wing nonwoven with a lower basis weight backsheet nonwoven would predictably result in stronger fastening on the wings.

Ground 3: Obviousness over Benning, Karami ’626, and Stupperich - Claims 1-7, 9-11, & 15-20 are obvious over Benning and Karami ’626 in view of Stupperich.

• Prior Art Relied Upon: Benning (Application # 2005/0256496), Karami ’626 (Application # 2003/0220626), and Stupperich (DE 10 2004 053 469 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Benning and Karami ’626 from Ground 2. Petitioner argued it would have been obvious to further incorporate the specialized nonwovens taught by Stupperich. Stupperich disclosed nonwovens specifically engineered for hook fastener engagement, providing an optimal balance of secure closure and damage-free release. Stupperich explicitly described a "Higher-Basis-Weight Nonwoven" (45 gsm) and a "Lower-Basis-Weight Nonwoven" (30 gsm).
  • Motivation to Combine: A POSITA would use Stupperich’s nonwovens in the modified Benning diaper to achieve superior fastener performance, including enhanced reliability and durability. It would have been a logical design choice to use the stronger, higher-basis-weight nonwoven for the wings and the softer, lower-basis-weight version for the backsheet.
  • Expectation of Success: Stupperich's nonwovens were designed for this exact application. Implementing them as described would predictably yield the claimed differential retaining forces, as Stupperich itself measured and confirmed that its higher-basis-weight nonwoven exhibited a higher retaining force than its lower-basis-weight counterpart.
• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 8 and 21 (reciting an adhesive closure aid) based on the primary combinations further in view of Miyamoto ’499, which taught adding adhesive to hook fasteners to temporarily hold them in a folded position before use.

4. Key Claim Construction Positions

• Petitioner argued that the term "Over Abdomen Retaining Forces" requires no formal construction, as it simply refers to the shear forces required to separate a hook fastener from a nonwoven surface, as described in the specification. Petitioner contended that the obvious diaper structures proposed in its grounds would inherently yield the claimed force ranges when measured by the patent's own testing method.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. It highlighted that a prior inter partes review (IPR) against a related patent (IPR2013-00173, the "Medline IPR"), which relied on similar grounds including Benning and Karami ’772, was instituted but terminated due to settlement before a final written decision (FWD). Petitioner asserted that because the Board had already found a reasonable likelihood of success on similar challenges, instituting this IPR would serve systemic efficiency and integrity by resolving patentability questions that were left unanswered.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-21 of Patent 8,708,990 as unpatentable under 35 U.S.C. §103.