OUTDRY TECHNOLOGIES CORPORATION, v. GEOX S.P.A.: No. 2016-1769; June 16, 2017. Before Dyk, Moore, and Rena.

Takeaway:

  • The motivation to combine inquiry is not limited to the problem faced by the inventor of a patent.

Procedural Posture:

Outdry appealed from the Board’s decision in an IPR finding that claims 1-15 of its patent were unpatentable as obvious over a combination of prior art references. The CAFC affirmed.

Synopsis:

  • Claim Construction: The Board construed the claim term “directly pressing” under the broadest reasonable interpretation standard to mean “applying pressure without any intervening materials or layers other than the recited adhesive.” Outdry argued on appeal that the term requires applying uniform pressure so that a water cushion cannot be formed between the outer leather layer and the inner semi-permeable membrane. The CAFC affirmed the Board’s construction, finding that the specification only used the term “directly” once and that description did not support Outdry’s interpretation.
  • Obviousness – Motivation to Combine: Outdry argued that the Board did not supply its own findings regarding a motivation to combine three prior art references. The CAFC found that the Board clearly articulated and adopted Geox’s arguments showing that two prior art references are from the same field of endeavor and the third addresses the key issue of providing good adhesion while maintaining vapor permeability, observing that the Board “thus identified a precise and specific reason why a person of ordinary skill in the art would have been motivated to modify [the prior art references], explained why one of skill would have been so motivated, and cited evidence in the references to support its reasoning.” Outdry also argued that the Board failed to identify a reason why a person of ordinary skill in the art would have been motivated to combine the three prior art references to solve the problem of preventing water cushions from forming in leather shoes. The CAFC noted that under KSR, “[t]he motivation supported by the record and found by the Board need not be the same motivation articulated in the patent for making the claimed combination.”