Takeaway: Merely being an alleged executor or board member of Petitioner does not establish sufficiently that the individuals identified, in their individual capacities, exercise control or have an opportunity to exercise control of the proceeding, as opposed to in their capacities as executives or board members of Petitioner.

In its Decision, the Board determined that Petitioner had demonstrated that there is a reasonable likelihood that it would prevail with respect to at least one of claims 1-7 of the ’433 patent.

The Board described ’433 patent as disclosing “a method of forming a customized insole for footwear.” Petitioner challenged claims 1-7 of the ’433 patent on obviousness grounds based on (1) Dieckhaus and Foss, and (2) Eschweiler and Campbell.

Petitioner alleged that Dieckhaus discloses all of the limitations of claim 1 except for explicitly disclosing that: 1) the thermoplastic material is ABS, PVC, A-PET or PETG and 2) the layer of thermoplastic material is configured to reach out from under a heel of a foot only to the metatarsophalangeal joint of the foot. Petitioner alleges that both of these would have been obvious to an ordinary artisan.

Regarding the first point, Petitioner alleged that modification is suggested by Dieckhaus and that it is a simple substitution of one known thermoplastic for another to obtain a predictable result. Patent Owner asserted that Dieckhaus provides no motivation to use any other materials. The Board determined that Dieckhaus does not limit the thermoplastic material to only these exact materials and that Dieckhaus discloses that the “purpose of the thermoplastic material layer is to add moldability to the insert and to further add heel and arch support.” Based on these findings, and the testimony of Dr. Beckham, the Board agreed with Petitioner.

Regarding the second point, Petitioner alleged that an ordinary artisan would have understood Dieckhaus as teaching a range of sizes and that the limitation would have been obvious. Patent Owner asserted that Dieckhaus does not disclose the limitation because it only describes a “fabric layer 6” extending to “just short of the ball section of the foot,” which excludes the metatarsophalangeal joint. The Board determined that “Dieckhaus suggests that the insole can be other lengths that only extend partially towards the front of the insert[.]” The Board concluded that it would have been obvious to “configure a layer of thermoplastic material so that it reaches out from under a heel of a foot only to the metatarsophalangeal joint of the foot.”

Thus, the Board concluded that Petitioner had demonstrated a reasonable likelihood that claims 1-7 are obvious in view of Dieckhaus and Foss.

In regards to Petitioner’s second challenge of claims 1-7 of the ’433 patent, Petitioner alleged that Eschweiler fails to disclose that the thermoplastic material is ABS, PVC, A-PET or PETG and becomes plastic substantially under 95° C and above 45° C. Petitioner contended that these limitations would have been obvious to an ordinary artisan given the disclosure of Campbell. Patent Owner asserted that the modification proposed by Petitioner would have rendered Eschweiler inoperable for its intended purpose. The Board disagreed with Patent Owner and determined that Petitioner had demonstrated a reasonable likelihood that claims 1-7 are obvious in view of Eschweiler and Campbell.

Patent Owner argued that the Petition should be denied because it does not name all of the real-parties-in-interest (RPI). The Board stated that merely being an alleged executor or board member of Petitioner does not establish sufficiently that the individuals identified by Patent Owner, in their individual capacities, exercise control or have an opportunity to exercise control of the proceeding, as opposed to in their capacities as executives or board members of Petitioner. Thus, the Board was not persuaded by Patent Owner’s argument.

Patent Owner requested that the Board deny institution because Petitioner filed a motion without authorization from the Board. The Board noted that it had ordered the unauthorized motion to be expunged. In the same order, the Board authorized a joint motion to terminate the proceeding because Petitioner had indicated at the time that it did not wish to proceed. That motion was not ever filed. Rather, Petitioner filed a Notice of Intent to Proceed with Inter Partes Review. Thus, the Board declined to exercise its discretion to deny the Petition.

ZERO GRAVITY INSIDE, INC. v. FOOTBALANCE SYSTEM OY , IPR2015-01769

Paper 17: Decision on Institution

Dated: February 12, 2016

Patent 7,793,433 B2

Before: Meredith C. Petravick, Jeremy M. Plenzler, and Timothy J. Goodson

Written by: Petravick

Related Proceedings: Footbalance System Inc. et al. v. Zero Gravity Inside, Inc. et al., Case No. 15-cv-01058, IPR2015-01770