CAFC Affirms Board’s Claim Construction and Holds Waterproofing Patent Invalid

Federal CircuitOutdry Techs. Corp. v. Geox S.P.A. , No. 2016-1769, 2017 (Fed. Cir. June 16, 2017) (Before Dyk, Moore, and Reyna, J.) (Opinion for the court, Moore, J.)

Outdry appealed from a Board determination that its patent directed to waterproofing leather was invalid as obvious in an inter partes review (IPR) proceeding. Outdry challenged the Board’s claim construction and motivation to combine findings. The Federal Circuit affirmed.

Outdry argued that the Board erred in construing the term “directly pressing,” and argued for “applying uniform pressure to create a uniform, sealed sheet of waterproof leather.” The Board construed “directly pressing” to mean “applying pressure without any intervening materials or layers other than the recited adhesive.” The Court adopted the Board’s broader construction, which was consistent with the specification’s only use of “directly,” and distinguished an intervening liner in the prior art. The Court also disagreed that “a process for waterproofing leather” in the preamble was limiting. It saw the preamble as merely a statement of intended use in that “[s]atisfaction of the claimed steps necessarily results in satisfying a process for waterproofing leather.”

In challenging the Board’s motivation to combine prior art references, Outdry argued that the Board: 1) adopted Geox’s petition arguments without adequate explanation; 2) failed to identify why one of ordinary skill in the art would be motivated to combine the references; and 3) failed, post- KSR, to find that a person of ordinary skill would have been motivated to solve a problem particular to the challenged patent.

The Court rejected Outdry’s arguments. First, the Court determined that the Board’s decision was not merely conclusive and adequately explained its reasons for agreeing with Geox’s arguments concerning motivation to combine the asserted references. For instance, the Board identified specific reasons to combine, with citations to the references as support. Additionally, the Board is “permitted to credit a party’s argument as part of its reasoned explanation of its factual findings,” and “it must simply explain why it accepts the prevailing argument.” Incorporations by reference or other reasoning that left uncertainty as to the Board’s position would be insufficient. But, here, the Board’s reliance on Geox’s arguments did not leave uncertainty and included sufficient evidentiary support and explanation.

Finally, the Court found that Outdry’s assertions that post-KSR cases required that the motivation to combine solve a problem particular to the challenged patent was too constrained. The Court explained that any motivation to combine the references, whether articulated in the references themselves or supported by evidence to combine those references to arrive at the claimed process, was sufficient.



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 4 Comments comments.

  1. Invention Rights June 23, 2017 11:42 am

    I don’t understand why the PTAB does not simply adopt the patent owner’s claim construction in these disputes. The clarification/disclaimer is in the record. Patent owner, petitioner, and the public are on notice of the claimed scope of the invention. Why is it necessary to kill it dead and deny the patent owner the portion of the scope which he is actually entitled?

  2. Invention Rights June 23, 2017 12:15 pm

    It appears that Outdry really invented a new breathable waterproof leather. BRI in examination sure. But BRI to scoop in prior art to invalidate an issued patent makes no sense. The Patent Office / PTAB has lost its way. Outdry is not trying to claim the prior art, just their own invention. Outdry must be able to exclude others from using their novel design. Geox can use the prior art or invent a different solution.

  3. DD22D June 23, 2017 3:10 pm

    @1: Because the patent is already in force and likely being asserted in litigation, and allowing a patent owner to redefine scope and definitions means a patent owner could come up with a “customized” definition, not intended at the time of writing the spec, that disclaims prior art but reads on the alleged infringer. The scope of the patent needs to be clear from the first day it is in effect, not 10 years later when the patent owner decides what they really wanted to protect.

    It is why the whole concept of intervening rights exists. The patent owner could do a re-exam and redefine the scope if they want, but then they would likely lose past damages.

  4. Invention Rights June 23, 2017 6:56 pm

    The patent owner is not redefining the scope. The petitioner and the PTAB are doing that. A construction that reads on the prior art is not reasonable, it is silly. Outdry is not seeking to claim the prior art – just their own invention.