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Federal Circuit Vacates And Remands PTAB Decision Regarding Patents For Adult Incontinence Diapers
03/26/2024On March 4, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding four final written decisions of the Patent Trial and Appeal Board (“PTAB”), which found all claims of U.S. Patent Nos. 8,152,788; 8,784,398; 8,771,249; and 8,708,990 to be unpatentable as obvious.
The patents under review, owned by Paul Hartmann AG (“Hartmann”), relate to adult incontinence diapers with improved closure systems designed to reduce cost and improve comfort.
Attends Healthcare Products, Inc. (“Attends”) petitioned for inter partes review (“IPR”), challenging all claims of each patent. The PTAB found all claims of each patent unpatentable as obvious over prior art combinations including “Benning” and “Karami ‘626.” Specifically, the PTAB found that a person of ordinary skill in the art would have been motivated to modify Benning’s diaper by replacing the fastener elements and material for the backsheet of Benning’s diaper with the fastener elements and backsheet of Karami ‘626’s diaper so as to meet every limitation of the challenged claims. Hartmann appealed.
On appeal, Hartmann specifically challenged the PTAB’s finding that Benning, as so modified by Karami ‘626, discloses the following limitations: (i) “retaining forces between said closure component and said outer face of said chassis are lower than retaining forces between said closure component and said outer face of said first and second ears [also referred to as “wings”]” (the “relative force limitation”); and (ii) “retaining forces, determined as over-abdomen retaining forces between said closure component and said outer face of said chassis, are 57-20 N/25 mm” and “retaining forces, determined as over-abdomen retaining forces between said closure component and said outer face of said first and second ears, are 90-58 N/25 mm” (the “range limitations”).
Regarding the relative force limitation, the parties also disputed whether the PTAB relied on obviousness or inherency in demonstrating that the proposed combination teaches the limitation. The CAFC agreed with Hartmann that the PTAB erred in finding Benning, as modified by Karami ‘626, would meet the relative force limitation based on either obviousness or inherency. While the PTAB correctly noted that Benning, as modified by Karami ‘626, would result in a lower number of fibers in the backsheet as compared to the wings, the CAFC concluded that the PTAB erred in relying on a hypothetical rationale that the combination would have the claimed different retaining forces “if the extent to which the fibers are bonded together and pore size were the same between the … materials of the backsheet and wings.” According to the CAFC, the PTAB identified no evidence showing why the materials of the proposed combination would necessarily have these characteristics. Therefore, the PTAB’s hypothetical failed to satisfy the high standard that is required for inherency. Similarly, the CAFC found the PTAB’s finding that the difference in retaining forces was “at least” suggested by Karami ‘626 was also found to be unsupported by substantial evidence, particularly in view of the fact that the PTAB had explained that the proposed combination does not require modifying the material Benning already uses for its wings as would be required to satisfy the PTAB’s hypothetical.
The CAFC also ruled that the PTAB erred in finding Benning, as modified by Karami ‘626, would provide retaining forces within the claimed range limitations. Specifically, the PTAB erred because it held that Hartmann’s failure to dispute that the proposed combination of the prior art references matches the description of the invention in the patent specifications amounted to an admission of obviousness. The CAFC found no such admission.
Thus, the CAFC vacated and remanded the decision of the PTAB.
