Outdry Technologies v. Geox S.P.A. , 859 F.3d 1364 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
OUTDRY TECHNOLOGIES CORPORATION,
Appellant
v.
GEOX S.P.A.,
Appellee
______________________
2016-1769
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01244.
______________________
Decided: June 16, 2017
______________________
NICHOLAS (NIKA) FREMONT ALDRICH, JR., Schwabe,
Williamson & Wyatt, Portland, OR, argued for appellant.
Also represented by STEVEN J. PREWITT, SARA KOBAK.
STEVEN PAUL WEIHROUCH, Rothwell, Figg, Ernst &
Manbeck, P.C., Washington, DC, argued for appellee.
Also represented by JENNIFER NOCK, SOUMYA PANDA.
______________________
Before DYK, MOORE, and REYNA, Circuit Judges.
MOORE, Circuit Judge.
2 OUTDRY TECHNOLOGIES v. GEOX S.P.A.
Outdry Technologies Corp. (“Outdry”) appeals from
the Patent Trial and Appeal Board’s (“Board”) inter
partes review decision holding that claims 1–15 of U.S.
Patent No. 6,855,171 (“the ’171 patent”) would have been
obvious over a combination of prior art. For the reasons
discussed below, we affirm.
BACKGROUND
The ’171 patent claims methods of waterproofing
leather, particularly for the manufacture of shoes, clothes,
or leather accessories. ’171 patent at 1:12–14. The speci-
fication discloses prior art methods of waterproofing
leather shoes, including sewing a fabric lining and a semi-
permeable film to the interior surface of the leather or
gluing a semi-permeable membrane inside the leather
around the membrane’s perimeter. Id. at 1:20–26, 36–38.
It states these prior art methods allowed a water cushion
to form in which water penetrates the leather and be-
comes trapped between the membrane and interior sur-
face of the leather. Id. at 1:27–31, 39–42. The ’171 patent
sought to overcome this issue by “directly pressing” a
semi-permeable membrane onto the leather via a dotted
glue pattern:
1. A process for waterproofing leather (1), com-
prising directly pressing on an internal surface of
the leather (1) at least one semi-permeable mem-
brane (2) whose surface contacting the leather (1)
is provided with a discontinuous glue pattern to
adhere the leather to the semi-permeable mem-
brane, wherein the glue pattern is formed of a
multiplicity of dots having a density included be-
tween 50 dots/cm2 and 200 dots/cm2.
’171 patent at claim 1 (emphasis added). Claim 9, the
only other independent claim, is identical to claim 1 but
for reciting the size of the dots instead of the density: “a
multiplicity of dots having a diameter included between
0.1 mm and 0.8 mm.”
OUTDRY TECHNOLOGIES v. GEOX S.P.A. 3
The Board found U.S. Patent No. 5,244,716
(“Thornton”) discloses all elements of claims 1 and 9
except the density of the dots (claim 1) and the sizes of the
dots (claim 9). Thornton is directed to “waterproof but
breathable articles of clothing” including stockings,
gloves, and hats. J.A. 250 at 1:5–10, 20–23. It discloses a
waterproof and breathable glove consisting of three
layers: an inner knitted lining, a middle layer of film 105,
and an outer water permeable layer, such as leather.
J.A. 260 at 21:1–14. It discloses placing adhesive dots on
the “outer surface of film 105 in spaced apart locations” to
“secure the barrier component of the glove” by heatweld-
ing. Id. at 21:31–44. The Board construed “directly
pressing” to mean “applying pressure without any inter-
vening materials or layers other than the recited adhe-
sive” and determined “Thornton explicitly describes
drawing the membrane barrier component over a former,
applying adhesive to the outer surface of the film, draw-
ing the outer glove layer onto the former, and bonding the
layers by pressing.” J.A. 10, 16 (citing J.A. 260 at 21:64–
22:8).
For disclosure of the density and sizes of the dots, the
Board relied on “Coated and Laminated Fabrics” in
Chemistry of the Textiles Industry (“Scott”) and U.S.
Patent No. 6,139,929 (“Hayton”). Scott discloses adhering
a waterproof, vapor permeable membrane to fabric for
rainwear in which there is “sufficient adhesive to bond the
hydrophobic ‘non-stick’ film to a textile fabric, but the
adhesive dot coverage has to be kept low to minimize the
area of blocked micropores.” J.A. 517. Hayton discloses
socks having an inner knitted sock, a water impermeable
and vapor permeable barrier component 100, and an outer
knitted sock. J.A. 302 at 12:34–39. It discloses “the
barrier component 100 is attached to the inner sur-
face 201 of the outer sock 200 . . . by spaced apart dots of
adhesive.” Id. at 12:43–46. It teaches that the adhesive
is “preferably applied as dots 0.2 to 1 mm e.g. 0.5 to
4 OUTDRY TECHNOLOGIES v. GEOX S.P.A.
0.8 mm preferably 0.55 to 0.65 mm in diameter and a
density of 10 to 100 dots, preferably 15 to 75, more prefer-
ably 20 to 60 dots per square cm.” J.A. 299 at 6:24–27.
The Board found that a person of ordinary skill in the
art would have been motivated to combine Thornton with
Scott and Hayton. It found the petitioner, Geox S.p.A.
(“Geox”), “provided a rational underpinning for combining
the disclosures of Scott and Hayton, which provide guid-
ance for the density and size of adhesive dots to adhere a
semi-permeable membrane to a porous layer.” J.A. 15. It
held that claims 1, 2, 5–11, 14, and 15 would have been
obvious over Thornton, Scott, and Hayton and that the
remaining claims would have been obvious over a combi-
nation of Thornton, Scott, Hayton, plus additional refer-
ences that are not the subject of Outdry’s appeal.
Outdry appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determination of obvi-
ousness de novo and its factual findings for substantial
evidence. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015). In IPR proceedings, the Board
gives claims their broadest reasonable interpretation
(“BRI”) consistent with the specification. In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015).
We review claim construction de novo except for subsidi-
ary fact findings, which we review for substantial evi-
dence. Id. at 1280.
A. Claim Construction & Disclosure in Thornton
Outdry argues the Board erred in construing “directly
pressing” and finding Thornton discloses “directly press-
ing” and “a process for waterproofing leather.” It argues
“directly pressing” means applying uniform pressure to
create a “uniform, sealed sheet of waterproof leather so
that a water cushion cannot develop.” Outdry Br. 29, 31.
OUTDRY TECHNOLOGIES v. GEOX S.P.A. 5
Under this construction, Outdry argues Thornton does not
disclose “directly pressing”—or “a process for waterproof-
ing leather”—because a water cushion could form between
Thornton’s ruched waterproof lining and the leather. We
do not agree.
The Board correctly construed “directly pressing”
under the BRI standard. The specification uses the term
“directly” only once, in which it distinguishes the claimed
invention from the prior art. Unlike the prior art meth-
ods of sewing or gluing the perimeter of a fabric lining or
semi-permeable membrane to leather, the specification
explains:
Thanks to the use of a semi-permeable membrane
having one surface provided with an [sic] glue pat-
tern, the process according to the present inven-
tion allows said membrane to be applied directly
to the leather which has to be waterproofed, so as
to avoid the use of a semipermeable lining and the
water penetration between leather and lining.
’171 patent at 1:21–61 (emphasis added). The Board
properly relied on this disclosure to interpret “directly
pressing” to mean “applying pressure without any inter-
vening materials or layers other than the recited adhe-
sive.” J.A. 10. We agree with the Board’s construction
under the BRI and agree that Outdry’s proposed construc-
tion lacks support in the specification. The specification
does not suggest that the process must form a uniform,
sealed sheet of waterproof leather because it “does not
disclose a required degree of contact between the mem-
brane and the leather in the regions that are between the
dots of adhesive.” J.A. 9. Outdry’s proposed requirement
that the sealed sheet avoid formation of a water cushion
6 OUTDRY TECHNOLOGIES v. GEOX S.P.A.
fails for the same reason. 1 To require “directly pressing”
to result in “constant contact between the membrane and
leather such that no water permeates the leather” would
improperly narrow the claims under the BRI standard.
See id. We thus affirm the Board’s construction of “direct-
ly pressing” and do not reach whether Thornton satisfies
this limitation under Outdry’s proposed construction.
Outdry also argues that the “process for waterproof-
ing leather” limitation is not disclosed in Thornton. This
language is in the preamble of the claim. And like most
preambles is simply a statement of intended use, not a
separate claim limitation. See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339,
1345 (Fed. Cir. 2003) (“[A] preamble simply stating the
intended use or purpose of the invention will usually not
limit the scope of the claim, unless the preamble provides
antecedents for ensuing claim terms and limits the claim
accordingly.”). Satisfaction of the claimed steps necessari-
ly results in satisfying a “process for waterproofing leath-
er.” This is not a separate limitation that must be
disclosed in Thornton in order to uphold the Board’s
obviousness determination.
B. Motivation to Combine
Outdry argues the Board failed to adequately articu-
late why a person of ordinary skill in the art would have
been motivated to combine Thornton’s process with Scott
and Hayton’s disclosure of the density and size of the glue
dots. First, Outdry argues the Board relied solely on
Geox’s petition to find a motivation to combine without
making any explicit findings of its own. Second, it argues
the Board failed to identify a reason why one of skill in
the art would have been motivated to combine Thornton,
1 Outdry did not advance this construction below.
See Oral Arg. at 5:26–49.
OUTDRY TECHNOLOGIES v. GEOX S.P.A. 7
Scott, and Hayton to solve the problem identified by the
’171 patent—the development of water cushions in leather
shoes. It argues our post-KSR precedent requires the
Board to find that a person of ordinary skill in the art
would have been motivated to solve the problem ad-
dressed by the ’171 patent. Outdry Reply Br. 13–14
(citing Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034
(Fed. Cir. 2016) (en banc)). Neither argument has merit.
The Board’s motivation to combine finding is reviewed
for substantial evidence. Belden, 805 F.3d at 1073. The
Board must support its finding that there would have
been a motivation to combine with a reasoned explanation
to enable our review for substantial evidence. In re
NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). This
necessitates that the Board “not only assure that the
requisite findings are made, based on evidence of record,
but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee,
277 F.3d 1338, 1344 (Fed. Cir. 2002). Under this frame-
work “we will uphold a decision of less than ideal clarity if
the agency’s path may reasonably be discerned,” but “we
may not supply a reasoned basis for the agency’s action
that the agency itself has not given.” Bowman Transp.,
Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281, 285–86
(1974).
We have criticized the Board for failing to adequately
explain its findings. Missing from those Board decisions
were citations to evidence, reasoned explanations, or
explicit findings necessary for us to review for substantial
evidence. For example, in Rovalma, we vacated the
Board’s obviousness decision where “the Board did not
cite any evidence, either in the asserted prior-art refer-
ences or elsewhere in the record, with sufficient specificity
for us to determine whether a person of ordinary skill in
the art would have been so motivated.” Rovalma, S.A. v.
Böhler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1025–
26 (Fed. Cir. 2017). In Van Os, we held the Board’s
8 OUTDRY TECHNOLOGIES v. GEOX S.P.A.
finding that it would have been intuitive to combine prior
art lacked the requisite reasoning because “[a]bsent some
articulated rationale, a finding that a combination of prior
art would have been ‘common sense’ or ‘intuitive’ is no
different than merely stating the combination ‘would have
been obvious.’” In re Van Os, 844 F.3d 1359, 1361 (Fed.
Cir. 2017); see also Arendi S.A.R.L. v. Apple Inc., 832 F.3d
1355, 1362 (Fed. Cir. 2016) (“[R]eferences to ‘common
sense’—whether to supply a motivation to combine or a
missing limitation—cannot be used as a wholesale substi-
tute for reasoned analysis and evidentiary support . . . .”);
Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578
(Fed. Cir. 2016) (vacating the Board’s decision where the
Board summarized the parties’ arguments and rejected
the arguments of one party but did “not explain why it
accept[ed] the remaining arguments as its own analysis”).
In NuVasive, we vacated the Board’s decision because the
Board “never actually made an explanation-supported
finding” that a person of ordinary skill in the art would
have been motivated to combine the prior art. 842 F.3d
at 1384. In Icon Health, we held that the Board failed to
make requisite fact findings and provide an adequate
explanation to support its obviousness determination
where it merely agreed with arguments made in the
petitioner’s brief for which no evidence was cited. Icon
Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1042–48 (Fed. Cir. 2017) (holding that attorney argument
is not evidence and the Board’s adoption of petitioner’s
brief did not “transform [the petitioner’s] attorney argu-
ment into factual findings or supply the requisite expla-
nation that must accompany such findings”).
The Board’s decision here does not suffer from similar
deficiencies. The Board clearly articulated Geox’s argu-
ments for why a person of ordinary skill in the art would
have been motivated to modify Thornton’s process of
adhering dots to create waterproof and breathable leather
with Hayton and Scott’s disclosed glue patterns. See
OUTDRY TECHNOLOGIES v. GEOX S.P.A. 9
J.A. 11–12. The Board recited Geox’s argument that “the
discontinuous glue pattern is a matter of optimization as
taught by Scott, which teaches optimizing the amount of
glue necessary to provide sufficient adhesion to bond the
two layers while minimizing the area of blocked mi-
cropores.” J.A. 12 (citing J.A. 50 (citing J.A. 517)). It
explained Geox’s position that Scott and Hayton are from
the same field of endeavor and that both disclose fabrics
that are water impermeable and vapor permeable. Id.
(citing J.A. 517; J.A. 297 at 1:44–51). It recited Geox’s
argument for a motivation to combine based on this
evidence: “Scott provides a reason for optimizing the
amount of adhesive that Thornton and Hayton teach to
apply to a semi-permeable membrane, which is to provide
good adhesion while maintaining vapor permeability.”
J.A. 12 (citing J.A. 51) (emphasis added). It then express-
ly adopted Geox’s rationale and found that this provided a
motivation to combine Thornton with Scott and Hayton.
The Board found that Geox “provided a rational under-
pinning for combining the disclosures of Scott and Hay-
ton, which provide guidance for the density and size of
adhesive dots to adhere a semi-permeable membrane to a
porous layer.” J.A. 15; see also J.A. 12, 15 (finding Hayton
discloses adhesive dots overlapping with the ranges
recited in the claims). It found a person of ordinary skill
in the art would have looked to Scott and Hayton’s teach-
ings “in view of Thornton’s disclosure that both leather
and fabric material are amenable to its process for water-
proofing breathable articles of clothing.” J.A. 15 (citing
J.A. 253 at 7:58–62). The Board thus identified a precise
and specific reason why a person of ordinary skill in the
art would have been motivated to modify Thornton with
Scott and Hayton, explained why one of skill would have
been so motivated, and cited evidence in the references to
support its reasoning. The Board engaged in reasoned
decisionmaking and sufficiently articulated its analysis in
its opinion to permit our review. It contains a clear and
thorough analysis.
10 OUTDRY TECHNOLOGIES v. GEOX S.P.A.
The Board’s reliance on Geox’s arguments does not
undermine its otherwise adequate explanation for finding
a motivation to combine. The Board did not reject Out-
dry’s positions without clarity as to why it found Geox’s
arguments persuasive. It did not incorporate Geox’s
petition by reference, leaving uncertainty as to which
positions the Board was adopting as its own. Nor is this a
situation where “a particular fact might be found some-
where amidst the evidence submitted by the parties,
without attention being called to it,” such that it is un-
clear what evidence the Board may or may not have relied
on to find a motivation to combine. See Rovalma, 856
F.3d at 1029. The Board is “permitted to credit a party’s
argument as part of its reasoned explanation of its factual
findings”; it simply must “explain why it accepts the
prevailing argument.” Icon, 849 F.3d at 1047 (alteration
omitted). In this case, the Board articulated Geox’s
arguments with evidentiary support and expressly adopt-
ed them to find there would have been a motivation to
combine. The Board sufficiently explained why it found
that Geox’s arguments supported finding a motivation to
combine.
The Board did not err, as Outdry contends, in identi-
fying the motivation to combine. The Board found a
person of ordinary skill in the art would have been moti-
vated to combine the references to provide vapor permea-
bility without sacrificing good adhesion. J.A. 12, 15. The
Board was not required to limit its motivation to combine
inquiry to the problem faced by the inventor of the
’171 patent. The Supreme Court expressly rejected this
argument in KSR: “the problem motivating the patentee
may be only one of many addressed by the patent’s sub-
ject matter.” KSR Int’l Co v. Teleflex Inc., 550 U.S. 398,
420 (2007). Outdry appears to interpret KSR’s use of the
phrase “addressed by the patent” to suggest the problem
must be identified within the patent. Neither KSR nor
our post-KSR precedent limits the motivation to combine
OUTDRY TECHNOLOGIES v. GEOX S.P.A. 11
inquiry in this manner. See, e.g., Par Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1197 (Fed. Cir. 2014) (“Par’s
argument, however, ignores that we are not limited to the
same motivation that may have motivated the inven-
tors.”); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362,
1368 (Fed. Cir. 2012) (“We have repeatedly held that the
motivation to modify a prior art reference to arrive at the
claimed invention need not be the same motivation that
the patentee had.”). “The obviousness analysis cannot be
confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content
of issued patents.” KSR, 550 U.S. at 419. Any motivation
to combine references, whether articulated in the refer-
ences themselves or supported by evidence of the
knowledge of a skilled artisan, is sufficient to combine
those references to arrive at the claimed process. The
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. The Board’s
fact finding regarding motivation to combine is supported
by substantial evidence. We see no error in the Board’s
conclusion that the claims would have been obvious to a
skilled artisan based on the facts presented.
CONCLUSION
We have considered Outdry’s remaining arguments
and find they are without merit. For the foregoing rea-
sons, we affirm the decision of the Board.
AFFIRMED
COSTS
Costs to Geox.