Outdry Techs. Corp. v. Geox S.P.A.

• Decision Date: 16 June 2017
• Docket Number: 2016-1769
• Citation: 859 F.3d 1364
• Parties: OUTDRY TECHNOLOGIES CORPORATION, Appellant v. GEOX S.P.A., Appellee
• Court: U.S. Court of Appeals — Federal Circuit

859 F.3d 1364

OUTDRY TECHNOLOGIES CORPORATION, Appellant

v.GEOX S.P.A., Appellee

2016-1769

United States Court of Appeals, Federal Circuit.

Decided: June 16, 2017

Nicholas ( Nika ) Fremont Aldrich, Jr. , Schwabe, Williamson & Wyatt, Portland, OR, argued for appellant. Also represented by Steven J. Prewitt, Sara Kobak.

Steven Paul Weihrouch , Rothwell, Figg, Ernst & Manbeck, P.C., Washington, DC, argued for appellee. Also represented by Jennifer Nock, Soumya Panda .

Before Dyk, Moore, and Reyna, Circuit Judges.

Moore, Circuit Judge.

Outdry Technologies Corp. ("Outdry") appeals from the Patent Trial and Appeal Board's ("Board") inter partes review decision holding that claims 1–15 of U.S. Patent No. 6,855,171 ("the '171 patent") would have been obvious over a combination of prior art. For the reasons discussed below, we affirm.

BACKGROUND

The '171 patent claims methods of waterproofing leather, particularly for the manufacture of shoes, clothes, or leather accessories. '171 patent at 1:12–14. The specification discloses prior art methods of waterproofing leather shoes, including sewing a fabric lining and a semipermeable film to the interior surface of the leather or gluing a semi-permeable membrane inside the leather around the membrane's perimeter. Id. at 1:20–26, 36–38. It states these prior art methods allowed a water cushion to form in which water penetrates the leather and be-comes trapped between the membrane and interior surface of the leather. Id. at 1:27–31, 39–42. The '171 patent sought to overcome this issue by "directly pressing" a semi-permeable membrane onto the leather via a dotted glue pattern:

1. A process for waterproofing leather (1), comprising directly pressing on an internal surface of the leather (1) at least one semi-permeable membrane (2) whose surface contacting the leather (1) is provided with a discontinuous glue pattern to adhere the leather to the semi-permeable membrane, wherein the glue pattern is formed of a multiplicity of dots having a density included between 50 dots/cm² and 200 dots/cm².

'171 patent at claim 1 (emphasis added). Claim 9, the only other independent claim, is identical to claim 1 but for reciting the size of the dots instead of the density: "a multiplicity of dots having a diameter included between 0.1 mm and 0.8 mm."

The Board found U.S. Patent No. 5,244,716 ("Thornton") discloses all elements of claims 1 and 9 except the density of the dots (claim 1) and the sizes of the dots (claim 9). Thornton is directed to "waterproof but breathable articles of clothing" including stockings, gloves, and hats. J.A. 250 at 1:5–10, 20–23. It discloses a waterproof and breathable glove consisting of three layers: an inner knitted lining, a middle layer of film 105, and an outer water permeable layer, such as leather. J.A. 260 at 21:1–14. It discloses placing adhesive dots on the "outer surface of film 105 in spaced apart locations" to "secure the barrier component of the glove" by heatwelding. Id. at 21:31–44. The Board construed "directly pressing" to mean "applying pressure without any intervening materials or layers other than the recited adhesive" and determined "Thornton explicitly describes drawing the membrane barrier component over a former, applying adhesive to the outer surface of the film, drawing the outer glove layer onto the former, and bonding the layers by pressing." J.A. 10, 16 (citing J.A. 260 at 21:64–22:8).

For disclosure of the density and sizes of the dots, the Board relied on "Coated and Laminated Fabrics" in Chemistry of the Textiles Industry ("Scott") and U.S. Patent No. 6,139,929 ("Hayton"). Scott discloses adhering a waterproof, vapor permeable membrane to fabric for rainwear in which there is "sufficient adhesive to bond the hydrophobic ‘non-stick’ film to a textile fabric, but the adhesive dot coverage has to be kept low to minimize the area of blocked micropores." J.A. 517. Hayton discloses socks having an inner knitted sock, a water impermeable and vapor permeable barrier component 100, and an outer knitted sock. J.A. 302 at 12:34–39. It discloses "the barrier component 100 is attached to the inner surface 201 of the outer sock 200 ... by spaced apart dots of adhesive." Id. at 12:43–46. It teaches that the adhesive is "preferably applied as dots 0.2 to 1 mm e.g. 0.5 to 0.8 mm preferably 0.55 to 0.65 mm in diameter and a density of 10 to 100 dots, preferably 15 to 75, more preferably 20 to 60 dots per square cm." J.A. 299 at 6:24–27.

The Board found that a person of ordinary skill in the art would have been motivated to combine Thornton with Scott and Hayton. It found the petitioner, Geox S.p.A. ("Geox"), "provided a rational underpinning for combining the disclosures of Scott and Hayton, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer." J.A. 15. It held that claims 1, 2, 5–11, 14, and 15 would have been obvious over Thornton, Scott, and Hayton and that the remaining claims would have been obvious over a combination of Thornton, Scott, Hayton, plus additional references that are not the subject of Outdry's appeal.

Outdry appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board's legal determination of obviousness de novo and its factual findings for substantial evidence. Belden Inc. v. Berk-Tek LLC , 805 F.3d 1064, 1073 (Fed. Cir. 2015). In IPR proceedings, the Board gives claims their broadest reasonable interpretation ("BRI") consistent with the specification. In re Cuozzo Speed Techs., LLC , 793 F.3d 1268, 1279 (Fed. Cir. 2015). We review claim construction de novo except for subsidiary fact findings, which we review for substantial evidence. Id. at 1280.

A. Claim Construction & Disclosure in Thornton

Outdry argues the Board erred in construing "directly pressing" and finding Thornton discloses "directly pressing" and "a process for waterproofing leather." It argues "directly pressing" means applying uniform pressure to create a "uniform, sealed sheet of waterproof leather so that a water cushion cannot develop." Outdry Br. 29, 31. Under this construction, Outdry argues Thornton does not disclose "directly pressing"—or "a process for waterproofing leather"—because a water cushion could form between Thornton's ruched waterproof lining and the leather. We do not agree.

The Board correctly construed "directly pressing" under the BRI standard. The specification uses the term "directly" only once, in which it distinguishes the claimed invention from the prior art. Unlike the prior art methods of sewing or gluing the perimeter of a fabric lining or semi-permeable membrane to leather, the specification explains:

Thanks to the use of a semi-permeable membrane having one surface provided with an [sic] glue pattern, the process according to the present invention allows said membrane to be applied directly to the leather which has to be waterproofed, so as to avoid the use of a semipermeable lining and the water penetration between leather and lining.

'171 patent at 1:21–61 (emphasis added). The Board properly relied on this disclosure to interpret "directly pressing" to mean "applying pressure without any intervening materials or layers other than the recited adhesive." J.A. 10. We agree with the Board's construction under the BRI and agree that Outdry's proposed construction lacks support in the specification. The specification does not suggest that the process must form a uniform, sealed sheet of waterproof leather because it "does not disclose a required degree of contact between the membrane and the leather in the regions that are between the dots of adhesive." J.A. 9. Outdry's proposed requirement that the sealed sheet avoid formation of a water cushion fails for the same reason.¹ To require "directly pressing" to result in "constant contact between the membrane and leather such that no water permeates the leather" would improperly narrow the claims under the BRI standard. See id. We thus affirm the Board's construction of "directly pressing" and do not reach whether Thornton satisfies this limitation under Outdry's proposed construction.

Outdry also argues that the "process for waterproofing leather" limitation is not disclosed in Thornton. This language is in the preamble of the claim. And like most preambles is simply a statement of intended use, not a separate claim limitation. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp. , 320 F.3d 1339, 1345 (Fed. Cir. 2003) ("[A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuing claim terms and limits the claim accordingly."). Satisfaction of the claimed steps necessarily results in satisfying a "process for waterproofing leather." This is not a separate limitation that must be disclosed in Thornton in order to uphold the Board's obviousness determination.

B. Motivation to Combine

Outdry argues the Board failed to adequately articulate why a person of ordinary skill in the art would have been motivated to combine Thornton's process with Scott and Hayton's disclosure of the density and size of the glue dots. First, Outdry argues the Board relied solely on Geox's petition to find a motivation to combine without making any explicit findings of its own. Second, it argues the Board failed to identify a reason why one of skill in the art would have been motivated to combine Thornton, Scott, and Hayton to solve the problem identified by the '171 patent —the development of water cushions in leather shoes. It argues our post-KSR precedent requires the Board to find that a person of ordinary skill in the art would have been motivated to solve the problem addressed by the '171 patent. Outdry Reply Br. 13–14 (citing Apple Inc. v. Samsung Elecs. Co. , 839 F.3d 1034 (Fed. Cir. 2016) (en banc)). Neither argument has merit.

The Board's motivation to combine finding is reviewed for...