Background

In Sage Products, LLC v. PureWick Corp., IPR2020-01426, Paper 30 (P.T.A.B. Feb. 14, 2022), the Patent Trial and Appeal Board ("the Board") found claims 1, 3-8, and 17-19 of U.S. Patent No. 8,287,508 ("the '508 patent"), which describes a urine collection device for drawing urine away from the body, unpatentable. The Board's decision involved anticipation and obviousness determinations.

Anticipation

The Board found that Petitioner showed claim 1 to be anticipated by U.S. Pub. No. 2006/0015080 ("Mahensmith"). Id., at 31. The main dispute between Petitioner and Patent Owner regarding anticipation was whether Mahensmith taught the following limitation of claim 1:

an elongated exterior of the container [] configured and dimensioned for enabling a moisture wicking article to be secured over the array of openings of the container by wrapping the article over the array and securing the wrapped article.

Petitioner cited to a subset of openings of Figure 2 from Mahensmith as "the array of openings" covered by elongated exterior limitation. Id., at 32. However, Patent Owner argued that all of the openings in Figure 2 constituted the array of openings. Id., at 34. From there, Patent Owner argued that opening 9 of the array of openings was not covered by the exterior cover. Id. Because of this uncovered opening, Patent Owner argued that Mahensmith failed to show an elongated exterior secured over the array of openings, as required by claim 1. Id., at 34. The Board adopted Petitioner's interpretation of the array of openings because there was no support in the Figures or the description of Mahensmith for Patent Owner's characterization of the array of openings. Id., at 34-38.

Patent Owner also argued that Mahensmith is an ambiguous reference which cannot be used to support an anticipation rejection. Id., at 38. The Board disagreed, noting that under a reasonable interpretation by a person of ordinary skill in the art Mahensmith teaches all the limitations of claim 1. Id., at 38-45.

Thus, the Board agreed with Petitioner that independent claim 1 and similar independent claim 17 was anticipated by Mahensmith. Id., at 45-46. Since Patent Owner did not argue against Mahensmith's teachings of dependent claims 3-8, 18, and 19, the Board found that Petitioner similarly showed anticipation for these claims. Id., at 46-47.

Obviousness

The Board found that Petitioner showed claim 1 to be obvious over U.S. Patent No. 4,747,166 ("Kuntz") in view of U.S. Patent No. 4,425,130 ("DesMarais"). Id., at 59. Patent Owner first argued that the petition's extensive citation to the expert's declaration amounted to improper incorporation by reference, but the Board disagreed, noting that the use of a detailed declaration is not procedurally improper if the petition itself contains "sufficient particularity." Id., at 50. The Board also disposed of Patent Owner's argument that DesMarais's wrap is not moisture wicking because of its hydrophobic material, based on DesMarais's disclosure of materials that the '508 patent itself describes as moisture wicking. Id., at 51. The Board also disagreed with Patent Owner's argument that Kuntz's pad is moisture-absorbent and not moisture-wicking. Id., at 55-58. Although Kuntz's pad temporarily retains moisture, this does not prevent the article from being moisture-wicking like the temporary moisture retention materials described to be moisture-wicking in the '508 patent. Id.

The Board also found that Petitioner showed claim 17 to be obvious over the combination of Kuntz, DesMarais, and the knowledge of a person of ordinary skill in the art. Id., at 61. Claim 17 is similar to claim 1, with the additional limitation of the elongated chamber being closed at both ends. Id., at 60. Citing DSS Tech. Mgmt. v. Apple, Inc., Patent Owner argued that the knowledge of a person of ordinary skill in the art cannot be used for a "non-routine" limitation, but the Board disagreed by explaining that DSS Tech. only prohibits the use of such knowledge without a reasoned basis and Petitioner provided a reasoned basis here. Id., at 61.

Thus, the Board agreed with Petitioner that independent claims 1 and 17 were obvious over Kuntz in view of DesMarais. Id., at 59-61. Since Patent Owner did not argue against the combination of Kuntz and DesMarais regarding dependent claims 3-8, 18, and 19, the Board found that Petitioner similarly showed anticipation for these claims. Id., at 59-62.

Take-Aways

This case provides a clear example of how a party's choice in experts can impact the outcome. Here, the Board consistently credited Petitioner's expert over Patent Owner's, leading to the loss of patent claims. Pre-KSR, the person of ordinary skill in the art was not creative. The person of ordinary skill in the art was:

[P]resumed to be aware of all the pertinent prior art" in an obviousness analysis.  ... "is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which.

Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).

Since KSR, the person of ordinary skill in the art is imbued with some creativity:

A person of ordinary skill is also a person of ordinary creativity, not an automaton. 

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (U.S., 2007); see also, Randall Mfg.v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). In rejecting Patent Owner's expert testimony, the Board applied the post-KSR standard, stating: "Instead, Mr. Jezzi's testimony focuses narrowly on the annotated version of Figure 2 and the coloring used in that annotation treating a person of ordinary skill like an automaton. We find this analysis not credible and entitled to little weight." Id. at 38. 

Parties should be very careful about expert testimony regarding what a reference teaches to one of ordinary skill in the art. Statements in declarations need to be supported or they will, as in this case, be rejected: "As for Patent Owner's and Mr. Jezzi's theory of an uncovered hole, we find it is inconsistent with Mahnensmith and that it is based entirely on speculation, inconsistent with how a person of ordinary skill would have understood Mahnensmith, and thus is not credible and give it little weight." Id. at 35. Supported statements will receive different treatment: "Here, we find the testimony of Dr. Newman of why pad 112 of Mahnensmith cannot have an uncovered opening credible, well-reasoned, and entitled to significant weight." Id. at 36.  Procedural arguments against the extensive use of an expert's declaration may also fail unless the Patent Owner can show that the petition itself lacks sufficient particularity.

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