Takeaway: Petitioner may not rely solely on a presumption of inherency, as that would improperly shift the burden to a patent owner to establish that the claimed properties are not necessarily present in the prior art.

In its Final Written Decision, the Board found Petitioner had not shown by a preponderance of the evidence that challenged claims 1-22 of the ‘639 patent are unpatentable under 35 U.S.C. § 103(a). The ‘639 patent “is directed to lightweight fabrics that provide protection from heat, flame, and electrical arc.”

The Board first addressed claim construction under the broadest reasonable construction. Because the parties did not dispute the prior construction of “intumescent” meaning “a substance that swells and chars upon exposure to heat or flame,” the Board saw “no reason to modify it in light of the record developed at trial.” Next the Board discussed the level of ordinary skill in the art pertinent to its obviousness analysis and found “that the references themselves represent the level of ordinary skill in the art” and that the Board “need not explicate it further.”

The Board turned to the obviousness challenges, providing overview of the pertinent prior art of Radwanski, Rowan, and Murch. “Radwanski is directed to flame retardants that include solubilized phosphorous.” “Rowan is directed to a fire and heat-resistant fabric that includes a laminate of first and second sheets of material connected together, where each sheet comprises a mixture of an organic intumescent filler and an adhesive.” “Murch is directed to fire-retardant intumescent laminate systems that are useful as a protective overlay for combustible or heat-deformable substrates such as wood, plywood, fiberboard, and organic foams.”

Petitioner asserted that the combination of the above references “discloses all of the limitations of claim 1 except a contact thermal protective performance value of at least 4.5.” However, Petitioner contends that during prosecution of a related parent application, the BPAI “previously concluded” that “one of ordinary skill in the art would have found it obvious to construct a flame retardant, intumescent fabric in accordance with the teachings of the prior art with a thermal protective performance value greater than 4.5.” The Board was not persuaded, explaining that—unlike during examination of a patent application—in an inter partes review, “the burden of proof is on the petitioner to prove unpatentability by a preponderance of the evidence, and that burden never shifts to the patent owner.” See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board continued:

Thus, in order to prevail, Petitioner must provide evidence establishing that the claimed TPP values are inherent in the prior art. Petitioner cannot, as an examiner can, establish unpatentability of the challenged claims based on the presumption that the structure of fabric that results from the combination of Radwanski, Rowan, and Murch would necessarily possess the claimed properties. Allowing Petitioner to rely solely on a presumption of inherency would improperly shift the burden to Patent Owner to establish that the claimed properties are not necessarily present in the prior art.

The Board then rejected Petitioner’s argument that the claimed TPP value “would be inherent in any fabric having the recited physical characteristics,” citing Dr. Horrocks’s testimony. The Board found that none of the analysis in the Horrocks Declarartion was included in the Petition: “Because Petitioner belatedly presented these new arguments and evidence to make its case that the TPP value is dictated by the structure of the fabric, we decline to consider the portions of the Reply and the Horrocks Declaration on this issue.”See Office Trial Practice Guide, 77 Fed. Reg. at 48,767. The Board also countered Petitioner’s argument that Patent Owner “had a chance to, and in fact did, cross-examine Dr. Horrocks,” stating that “such observations are not designed for submitting substantive arguments.” Finally, the Board found that other expert testimony in the record “does not establish that the fabric resulting from the combination of Radwanski, Rowan, and Murch necessarily” fall within the scope of the claims.

Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2014-01248

Paper 39: Final Written Decision

Dated: January 27, 2016

Patent: 8,501,639 B2

Before: James T. Moore, Grace Karaffa Obermann, and Jo-Anne M. Kokoski

Written by: Kokoski