PTAB

PGR2026-00011

Univacco Technology Inc v. Leonhard Kurz Stiftung & Co KG

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Decorative Foil and Method for Production
  • Brief Description: The ’935 patent discloses a decorative foil comprising a carrier film and a multi-component "all-over varnish layer." The invention focuses on controlling the "tear-off force" required to remove the carrier film by specifying the carrier film's thickness and functional performance metrics, including narrow force fluctuations during removal and high "covering power."

3. Grounds for Unpatentability

Ground 1: Failure to Satisfy Enablement Requirement under 35 U.S.C. § 112(a)

  • Core Argument for this Ground: Petitioner argued that claims 1-7, 9, 11, 13-18, and 21-25 are not enabled because the specification fails to teach a person of ordinary skill in the art (POSITA) how to practice the full scope of the claimed invention without undue experimentation. The core of the argument rested on the unpredictable nature of the technology coupled with insufficient guidance in the patent.
  • Key Aspects:
    • Broad Genus with Sparse Examples: The claims cover a broad genus of decorative foils, encompassing a carrier film thickness range of 3.0 to 10.0 µm and a wide array of potential materials. However, the specification provides only a single working example with a 5.7 µm carrier film and one failed comparative example with a 12 µm film, leaving the vast majority of the claimed range unexplored and unsupported.
    • Unpredictable Art: Petitioner contended that the behavior of multi-layer, viscoelastic foils during peeling is highly complex and non-linear. The patent’s own data—showing a dramatic performance drop-off between the 5.7 µm and 12 µm examples—demonstrates this unpredictability, yet the patent provides no design rules or principles to guide a POSITA across the claimed range.
    • Inadequate Theoretical Guidance: The patent’s reliance on a simplistic "neutral-fiber" theory to explain performance was alleged to be insufficient. Petitioner argued this theory ignores multiple critical variables known to affect peel force, such as peel angle, rate, adhesive properties, and stick-slip phenomena, thereby failing to provide a reliable framework for achieving the claimed results.
    • Undefined Measurement Protocol: The lack of a specified, objective protocol for measuring the claimed "fluctuations" and "covering power" forces a POSITA to invent a test method, which constitutes undue experimentation.

Ground 2: Failure to Satisfy Written Description Requirement under 35 U.S.C. § 112(a)

  • Core Argument for this Ground: Petitioner argued the specification fails to demonstrate that the inventors possessed the full scope of the functionally-defined claims as of the filing date. The disclosure allegedly shows possession of a single embodiment, not the broad genus claimed.
  • Key Aspects:
    • Functionally-Defined Genus: The claims are defined by achieving specific functional results (tear-off force fluctuations of ±0.5 cN and covering power ≥99.5%) rather than by common structural features that would achieve those results.
    • Lack of Representative Species: For such a broad, functionally-claimed genus in a complex field, the disclosure of a single successful data point (at 5.7 µm) and one failure is not a "representative number of species" sufficient to demonstrate possession of the entire 3-10 µm range.
    • No Common Structural Features: The patent does not identify a common structural feature or principle, beyond the broad and insufficient parameter of thickness, that is shared by all members of the claimed genus and would allow a POSITA to recognize other embodiments that meet the functional limitations.
    • Overclaiming: Petitioner asserted a classic pattern of overclaiming, where the specification provides detailed support for, at most, a single data point under undisclosed test conditions, while the claims attempt to monopolize a much broader invention that was not shown to be possessed.

Ground 3: Indefiniteness under 35 U.S.C. § 112(b)

  • Core Argument for this Ground: Petitioner argued the claims are indefinite because they fail to inform a POSITA about the scope of the invention with reasonable certainty. This uncertainty arises from both ambiguous claim terms and the absence of objective measurement standards for the claimed performance metrics.
  • Key Aspects:
    • Ambiguous Structural Terms: The term "all-over varnish layer" was argued to be indefinite due to inconsistent descriptions. The specification is unclear whether the adhesive layer is part of this layer, and the disclosed thickness ranges for the individual component layers conflict with the specified total thickness for the "all-over varnish layer," leaving a POSITA unable to determine its precise structure.
    • Undefined Measurement of "Fluctuations": Claim 1 requires meeting a numerical force fluctuation boundary (±0.5 cN), but the patent provides no objective protocol to measure it. Critical test parameters—such as peel angle, data averaging window, and outlier treatment—are omitted. This forces a POSITA to make subjective choices that could determine the outcome, rendering the claim boundary unascertainable. The patent’s own contradictory data for the 12 µm example (text states ±1 cN, while the graph shows a spike resulting in ~±1.8 cN fluctuation) highlights this ambiguity.
    • Circular Definition of "Covering Power": Claim 25 requires ≥99.5% "covering power," which is defined circularly as a "measure of the number of defects" without objectively defining a "defect." The patent fails to specify the method of inspection (e.g., magnification, illumination) or criteria for identifying defects, making the 99.5% threshold subjective and dependent on the observer.

4. Key Technical Contentions (Beyond Claim Construction)

  • Complexity of Viscoelastic Peeling: A central technical argument was that the patent oversimplifies the physics of the claimed system. Petitioner contended that peel force in multi-layer viscoelastic systems is governed by complex, interacting phenomena (e.g., stick-slip instability, adhesive fibril formation, cohesive zone propagation) that are highly sensitive to variables not controlled or accounted for in the patent's disclosure, making the claimed results unpredictable and difficult to reproduce based on the provided teachings.

5. Relief Requested

  • Petitioner requests institution of Post Grant Review and cancellation of claims 1-7, 9, 11, 13-18, and 21-25 as unpatentable.