Paper 8
`Date: August 1, 2013
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`WAVELOCK ADVANCED TECHNOLOGY CO., LTD.
`Petitioner
`
`v.
`
`TEXTRON INNOVATIONS INC.
`Patent Owner
`____________
`
`Case IPR2013-00149 (SCM)
`Patent 6,455,138
`____________
`
`Before SALLY C. MEDLEY, JOSIAH C. COCKS, and BRYAN F. MOORE
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2013-00149 (SCM)
`Patent 6,455,138
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`I. INTRODUCTION
`Petitioner Wavelock Advanced Technology Co., Ltd. (“Wavelock”) requests
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`inter partes review of claims 1-3, 8, 10, 16-19, 21, and 25-36 of US Patent
`6,455,138 (“’138 Patent”) pursuant to 35 U.S.C. §§ 311 et seq.1 Patent Owner
`Textron Innovations Inc. (“Textron”) has filed no preliminary response under 37
`C.F.R. § 42.107(b). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides as follows:
`THRESHOLD -- The Director may not authorize an inter partes review
`to be instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.
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`For the reasons set forth infra, the Board has determined to institute an inter
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`partes review.
`
`A. The ’138 Patent (Exhibit 1001)
`The ’138 Patent is directed to a “metallized composite” composed of a series
`
`of layers. (Exhibit 1001, Abstract.) The ’138 Patent explains that such metallized
`composites “can be employed as reflective surfaces, such as are used as mirrors or
`substitutes for chrome trim on automobiles.” (Id.) Figure 1 of the ’138 Patent
`depicts an embodiment according to the invention and is reproduced below:
`
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`1 See “Petition for Inter Partes Review Under 35 U.S.C. §§ 311-319 and 37 C.F.R.
`§ 42.100 et seq.” filed February 15, 2013 (“Pet.”) (Paper 1).
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`As shown in the Figure above, metallized composite 10 includes a first
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`thermoplastic layer 12, a second thermoplastic layer 24, and an intervening
`“discontinuous layer” 14. (Id. at col. 4, ll. 1-8.) The discontinuous layer includes
`“discrete islands of metal 20 and adhesive 22.” (Id.)
`
`Claim 1 is the only independent claim of the ’138 Patent and is reproduced
`below (id. at col. 9, ll. 5-12):
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`1.
`A metallized composite, comprising:
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`a) a first thermoplastic layer;
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`b) a discontinuous layer on said first layer, said
`discontinuous layer including discrete islands
`of metal in an adhesive; and
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`c) a second thermoplastic layer, said discontinuous
`layer being between said first and second
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`thermoplastic layers.
`B. The Prior Art
`Wavelock challenges the patentability of claims 1-3, 8, 10, 16-19, 21, and
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`25-36 on the basis of the following prior art:
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`JP Laid-Open Application 63-286337 published November 24, 1988
`(“Kuwahara”) (Exs. 1006 & 10072).
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`US Patent 4,407,871 issued October 4, 1983 to Eisfeller (“Eisfeller”)
`(Ex. 1012).
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`US Patent 4,503,189 issued March 5, 1985 to Igarashi et al.
`(“Igrashi”) (Ex. 1013).
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`US Patent 5,532,045 issued July 2, 1996 to Wade (“Wade”) (Ex.
`1011).
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`US Patent 4,397,896 issued August 9, 1983 to Moran “(Moran”) (Ex.
`1016).
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`US Patent 4,101,698 issued July 18, 1978 to Dunning et al.
`(“Dunning”) (Ex. 1008).
`
`EP Application 0 738 580 published October 23, 1996 to Ohta
`(“Ohta”) (Ex. 1014).
`
`US Patent 4,275,099 issued June 23, 1981 to Dani (“Dani”) (Ex.
`1010).
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`US Patent 4,010,297 issued March 1, 1977 to Wenrick (“Wenrick”)
`(Ex. 1015).
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`US Patent 4,403,004 issued September 6, 1983 to Parker et al.
`(“Parker”) (Ex. 1009).
`
`Content of the ’138 patent appearing at column 1, lines 24-27 and
`characterized by Wavelock as “Admitted Prior Art” (“APA”) (Ex.
`1001).
`
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`2 Exhibit 1006 is the Japanese version of Kuwahara. Exhibit 1007 is an English
`translation of that Japanese document. Citations in this Decision to Kuwahara are
`to the English translation that is Exhibit 1007.
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`C. The Alleged Grounds Of Unpatentability
`Wavelock challenges claims 1-3, 8, 10, 16-19, 21, and 25-36 on the
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`following grounds:
`1. Claims 1-3, 10, 26, 31, 32, and 36 are unpatentable under 35 U.S.C.
`§ 102(b) as anticipated by Kuwahara;
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`2. Claims 8 and 25 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over Kuwahara and Eisfeller;
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`3. Claims 16-19 and 21 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Kuwahara and Igarashi;
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`4. Claims 16-18, 27-30, and 33 are unpatentable under 35 U.S.C. § 103(a)
`as obvious over Kuwahara and Wade;
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`5. Claim 35 is unpatentable under 35 U.S.C. § 103(a) is obvious over
`Kuwahara and Moran;
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`6. Claims 1, 2, 25, 26, 28, 33, 34, and 36 are unpatentable under 35 U.S.C.
`§ 102(b) as anticipated by Dunning;
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`7. Claims 1-3, 25, 26, 28, 31-34, and 36 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Dunning and Ohta;
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`8. Claims 16-19 and 21 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Dunning and Dani;
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`9. Claim 27 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Dunning, Dani, and Wenrick;
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`10. Claims 29 and 30 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over Dunning and Wade;
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`11. Claim 35 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Dunning and Moran;
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`12. Claims 1-3, 8, 16, 17, 26, 31-33, and 36 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Parker and APA;
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`13. Claims 1-3, 8, 10, 16, 17, 25, 26, 31-33, and 36 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Parker and Eisfeller;
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`14. Claims 18, 19, and 21 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Parker, Eisfeller, and Igarashi;
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`15. Claims 27-30 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Parker, APA, and Wade;
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`16. Claims 27-30 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Parker, Eisfeller, and Wae;
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`17. Claim 35 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Parker, APA, and Moran;
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`18. Claim 35 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Parker, Eisfeller, and Moran;
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`19. Claims 1, 2, 16, 17, 27-33, and 36 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Wade and APA;
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`20. Claims 1, 2, 8, 10, 16, 17, 25-33, and 36 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Wade and Eisfeller;
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`21. Claims 3, 18, 19, and 21 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Wade, Eisfeller, and Dani;
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`22. Claim 35 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Wade, APA, and Moran; and
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`23. Claims 35 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Wade, Eisfeller, and Moran.
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`II. ANALYSIS
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`A. Claim Construction
`The Board construes a claim in an inter partes review using the “broadest
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`reasonable construction in light of the specification of the patent in which it
`appears.” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48756, 48766 (Aug. 14, 2012).
`
`Wavelock proposes a particular construction in connection with only a
`single term appearing in claim 33 -- the term “substrate.” Specifically, Wavelock
`contends that term should be “construed herein as any material that supports a
`composite.” (Pet. 7.) In support of the construction, Wavelock relies on column 5,
`lines 27-34 of the ’138 patent reproduced below:
`As another alternative, metallized composite 10 can be supported by a
`substrate, whereby metallized composite 10 is in contact with the
`substrate. Examples of suitable substrates include thermoplastic
`polyurethane, polyvinylchloride, glycol modified polyethylene,
`thermoplastic polyolefin, fiber reinforced nylon, fiberglass, aluminum,
`and metal alloys, such as steel, etc.
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`Thus, the ’138 patent describes that a “substrate” is a supporting component,
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`which, in one embodiment of the invention, is intended to support a metallized
`composite. The ’138 patent also sets forth an exemplary list of suitable materials
`for a substrate, ranging from thermoplastic materials to metal materials, such as
`steel. The construction of “substrate” offered by Wavelock operates to link the
`general term “substrate” with the support of a particular component, i.e., a
`composite. In our view, however, that interpretation is too restrictive. Indeed, if
`“substrate” were so interpreted, other portions of claim 33 would be rendered
`superfluous by the recitation that “said composite is supported by a substrate.”
`(Exhibit 1001, 10:43-44.) The ordinary meaning of the term “substrate” is not,
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`therefore, limited to a material that supports a “composite” to the exclusion of
`other supported components. We have reviewed the portion of column 5 on which
`Wavelock relies in support of its position that a “substrate” must be a material that
`supports only a composite. In that regard, the term “substrate,” as it is used in the
`context presented in the ’138 patent, generally means “a material that provides the
`surface on which something is deposited or inscribed.” 3 We, therefore, interpret
`“substrate” as a material that provides the supporting surface on which some
`component is deposited or inscribed, and is not limited solely to supporting a
`composite.
`
`Wavelock does not propose any special construction of any other claim
`term. In reviewing the disclosure of the ’138 patent, we do not discern that any
`special definition is presented for any claim terminology. Accordingly, the
`involved claim terms have been accorded their ordinary and accustomed meaning
`from the perspective of one with ordinary skill in the art.
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`B. Discussion
`Wavelock proposes 23 grounds of unpatentability involving claims of the
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`’138 patent. See supra. Those grounds primarily center on one of the following
`four prior art documents: (1) Kuwahara; (2) Dunning; (3) Parker; and (4) Wade.
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`1. Grounds Based on Kuwahara
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`Wavelock submits that claims 1-3, 10, 26, 31, 32, and 36 are anticipated by
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`Kuwahara and claims 8, 16-19, 21, 25, 27-30, 33, and 35 are unpatentable over
`Kuwahara taken with one or more of Eisfeller, Igarashi, Wade, and Moran.4
`
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`3 E.g., see http://oxforddictionaries.com/us/definition/american_english/substrate
`(last accessed July 10, 2013).
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` 4
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` No ground of unpatentability based on Kuwahara is proposed for claim 34.
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`IPR2013-00149 (SCM)
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`a. Anticipation
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`Kuwahara is directed to a “molded article having metallic luster and
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`insulating properties.” (Ex. 1007, Title.) The molded article is described generally
`as being formed from a molded body, such as a “polyvinyl chloride sheet,” and a
`deposited metal layer set forth as a “metallized film” that is adhered to the molded
`body. (Id. at 3:8-15.) The metallized film is characterized also as being “in an
`island structure so as to have insulating properties.” (Id.) An additional
`“protective film” may also be provided on the metallized film, such as one made of
`“polyethylene terephthalate.” (Id. at 3:17-27.) In further describing two particular
`examples of the molded article according to the invention, Kuwahara states the
`following:
`[A] deposited Sn layer was provided in an island structure
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`shown below on one surface of a 12 µm thick elongated piece of a
`polyethylene terephthalate [i.e., PET] film by performing vacuum
`deposition under evaporation conditions shown below with a semi-
`continuous vacuum deposition apparatus; a vinyl chloride-vinyl
`acetate copolymer resin was applied to the deposited Sn layer of the
`examples to a thickness of 2 µm with a roller coater, then heated with
`a 200 µm thick polyvinylchloride [i.e., VC] film and laminated under
`pressure. The thus obtained products were slit to 10 mm width, and
`the slit products, with the polyvinylchloride film inwards and the
`polyethylene
`terephthalate film outwards, were adhered
`to a
`polyvinylchloride resin while being molded, so as to obtain molded
`articles having metal luster and insulating properties.
`
`
`(Id. at 5:14-27.) In light of the above-noted disclosure, Wavelock provides
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`in its Petition the following illustration of the type of molded article envisioned in
`Kuwahara:
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`(Pet. 9.)
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`Wavelock thus contends that Kuwahara discloses all the features of claim 1.
`In evaluating the disclosure of Kuwahara, we agree with Wavelock that the above-
`noted illustration reasonably conveys what is disclosed in the reference. We are
`thus persuaded that Kuwahara discloses the metallized composite of claim 1,
`including the required first thermoplastic layer, second thermoplastic layer, and
`discontinuous metallized layer arranged between those thermoplastic layers.
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`With respect to dependent claims 2, 3, 10, 26, 31, 32, and 36, Wavelock has
`explained adequately where the features of those claims are disclosed in
`Kuwahara. (See Pet.12-19.) For instance, as to claim 2, Kuwahara describes that
`the two thermoplastic layers are “laminated” to one another as is required by the
`claim. (Ex. 1007, 5:14-22.) With respect to claim 3, as noted above, Kuwahara
`sets forth that a first thermoplastic layer may be made of materials such as
`“polyethylene terephthalate.” Kuwahara also discloses that the layer may be made
`of other thermoplastic materials, such as “polypropylene” and “polyethylene,” (Id.
`at 3:24-27) which are the “thermoplastic olefins” required by claim 10.5 Claim 26
`recites various suitable metals for the discontinuous metal layer, including “tin”
`and “zinc.” Kuwahara discloses that tin and zinc are preferred metals for its
`
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`5 An “olefin” is “another term for alkene.” Oxford Dictionaries,
`http://oxforddictionaries.com/us/definition/american_english/olefin?q=olefin (last
`accessed July 10, 2013). An “alkene” is “any of the series of unsaturated
`hydrocarbon containing a double bond, including ethylene and propylene.” Id.,
`http://oxforddictionaries.com/us/definition/american_english/alkene?q=alkene (last
`accessed July 10, 2013).
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`disclosed metal layer. (Ex. 1007, 4:24-25.) Wavelock has demonstrated also that
`the features required by each of claims 31, 32, and 36 are disclosed in Kuwahara.
`(See Pet. 18-19, citing to Ex. 1007, 5:14-27.)
`
`Accordingly, for the foregoing reasons, Wavelock has shown that there is a
`reasonable likelihood that it will prevail with respect to claims 1-3, 10, 26, 31, 32,
`and 36 on the ground that these claims are anticipated by Kuwahara.
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`b. Obviousness
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`i. Kuwahara and Eisfeller
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`Wavelock proposes that claims 8 and 25 are unpatentable over Kuwahara
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`and Eisfeller. Claim 8 depends from claim 1 and adds the limitation “wherein the
`first thermoplastic layer includes acrylonitrile butadiene styrene.” Claim 25
`depends from claim 1 and adds “wherein said metal is indium.” Wavelock admits
`that the added features of claims 8 and 25 are not disclosed in Kuwahara, but
`points to Eisfeller to make up for the deficiency.
`
`Eisfeller discloses a “corrosion and abuse resistant plastic object vacuum-
`metallized with a corrosion prone metal,” and is described as particularly useful in
`the automobile industry as trim components intended “to replace heavier and more
`expensive conventional chrome-plated metal parts.” (Ex. 1012, Abstract; 4:6-63.)
`Eisfeller summarizes its disclosed invention as follows:
`
`The present invention is an article of manufacture comprising
`an organic dielectric base or substrate having a smooth surface such as
`molded plastic, a macroscopically continuous-appearing very thin
`layer thereon of a vacuum deposited corrosion-prone metal. The
`metal is in the form of minute specular electrically discrete rounded
`metal islands.
`
`(Id. at 4:50-56.) The molded plastic is also characterized as a “suitable dielectric,
`i.e. electrically insulating, material” encompassing “thermoplastic or thermoset
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`plastic[s]” and including “a polyacrylonitrile-butadiene-styrene.” (Id. at 6:38-59.)
`With respect to the metal layer, Eisfeller further states that:
`[I]t is being deposited or coalesced into electrically discrete islands
`and maintained electrically non-conductive, the metal layer is
`corrosion resistant if adequately topcoated even though the metal is
`one that is corrosion prone such as indium.
`
`
`(Id. at 4:64-5:2.) The “indium films” of Eisfeller’s disclosure are characterized as
`forming islands that “are smaller and there is a much greater spacing between them
`that can be filled with the resin of the top coating, in effect encapsulating the
`islands and binding them to the substrate surface.” (Id. at 2:52-56.) In that regard,
`the overall product is described as being one that is “more specular”6 and “more
`reflective.” (Id. at 2:56-62.) Thus, Eisfeller discloses that in forming a reflective,
`corrosion resistant, and electrically non-conductive molded article, a film made of
`indium is recognized as an available option and one which is regarded as
`conveying a particular benefit, i.e., a product whose appearance is more specular
`and more reflective.
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`Accordingly, the record establishes that in the art of reflective molded
`articles, “poly acrylonitrile butadiene styrene” is recognized as a “suitable” type of
`thermoplastic and electrically insulating layer material and “indium” is regarded as
`a type of metal for a metallized film that provides desired specularity and
`reflectiveness. We agree, therefore, that one with ordinary skill in the art would
`have had adequate reason to incorporate a known suitable thermoplastic and
`electrically insulating material, i.e., acrylonitrile butadiene styrene, into a
`
`
`6 The term “specular” means “of, relating to, or having the properties of a mirror.”
`Oxford Dictionaries,
`http://oxforddictionaries.com/us/definition/american_english/specular?q=specular (last
`accessed July 10, 2013).
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`thermoplastic layer of a molded article that is intended to exhibit insulating
`properties, such as a layer of Kuwahara’s molded article. We credit Dr. Iezzi’s
`testimony in that regard. (See Ex. 1017, Iezzi Decl., ¶ 61.) A skilled artisan also
`reasonably would have layered indium, as a material that provides improved
`reflectiveness, onto Kuwahara’s molded article, which is intended to have
`“metallic luster” (Ex. 1007, 2:33-37), so as to obtain enhanced reflectiveness.
`
`Furthermore, with respect to claim 25, we observe that Kuwahara indicates
`that its invention preferably operates with a metallic film composed of a material
`of “low melting point[]” so as to provide desired control of the evaporation rate
`and layer thickness when depositing the metallic film onto an underlying substrate
`in forming a molded article. (Ex. 1007, 4:17-27.) Kuwahara describes that
`materials suitable for its disclosed metallic film include “Sn, Pb, Zn, Bi and the
`like” due to their melting points, and disparages other materials such as “Ti, Cr. Fe,
`Co, and Ni and semiconductor materials such as Si and Ge” as being “not easy to
`control.” (Id.) We credit Dr. Iezzi’s testimony that a person of ordinary skill in the
`art would have appreciated that indium, having a melting point even lower than tin
`(Sn), would have been a material recognized as suitable when forming Kuwahara’s
`metallic film. (See Ex. 1007, ¶¶ 80-83.)
`
`For the foregoing reasons, Wavelock has shown that it has a reasonable
`likelihood that it will prevail in its assertion of the obviousness of claims 8 and 25
`based on Kuwahara and Eisfeller.
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`ii. Kuwahara and Igarashi
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`This proposed grounds applies to claims 16-19 and 21. Each of those claims
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`ultimately depends from claim 1 and adds further limitations directed to the type
`and/or arrangement of the adhesive that is required by claim 1. In that regard,
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`claims 16, 19, and 21 each recites lists of suitable adhesive materials7 and claims
`17 and 18 recite that the adhesive is either “thermally activated adhesive” (claim
`17) or “includes two components” (claim 18).
`
`Igarashi is titled “Adhesive Compositions” and is directed to “adhesive
`compositions which are useful for bonding metallized films to themselves.” (Ex.
`1013, 1:1-6.) Igarashi further characterizes the adhesives as offering “particularly
`excellent adhesion toward metallized films.” (Id. at Abstract.) Wavelock directs
`us to various content of Igarashi as disclosing the material compositions and
`configurations of the adhesives that are required by claims 16-19 and 21. (See Pet.
`13-15.) Wavelock has shown that the adhesive features of claims 16-19 and 21 are
`present in Igrashi and that a person of ordinary skill in the art would have had
`adequate reasons to incorporate those features into the metallized film of
`Kuwahara so as to provide suitable, if not excellent, adhesion characteristics in
`connection with that film. In that regard, we credit Dr. Iezzi’s testimony that one
`of ordinary skill in the art would have realized that the features of the adhesive
`materials and configurations required by claims 16-19 and 21, and disclosed in
`Igrashi, would have been known substitutes for the adhesives disclosed in
`Kuwahara that would predictably result in adhesive arrangements for securing
`islands of metal in-between a pair of thermoplastic layers. (See Ex. 1017, ¶ 65-76.)
`
`
`7 For example claim 16 reads:
`
`The metallized composite of claim 1, wherein said adhesive
`includes at least one component selected from the group consisting of
`styrene-butadiene copolymers, ethylvinyl acetates, polyesters,
`polyamides, acrylic pressure-sensitive adhesives, silicone pressure-
`sensitive adhesives, polyurethances and
`isocynate-crosslinked
`polymers.
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`Wavelock has demonstrated that there is a reasonable likelihood that it will
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`prevail with respect to claims 16-19 and 21 on the ground that these claims are
`unpatentable over Kuwahara and Igarashi.
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`iii. Kuwahara and Wade
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`Wavelock proposes that claims 16-18, 27-30, and 33 are unpatentable based
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`on the combined teachings of Kuwahara and Wade. Wade discloses an invention
`with the title “Vehicle part having weather sealed mirror finish decorative portion
`integral therewith.” Wade describes that an objective of its invention is to:
`provide a vehicle trim part having a mirror finish decorative portion
`integral therewith which can further be provided with different colors
`and/or graphic designs to match interior or exterior colors of the
`vehicle.
`
`(Ex. 1011, 2:27-31.) Wade further conveys embodiments of its invention in which
`a composite is formed from sheets of polymeric material 20, 40 that overlap an
`interior layer of metal 26 and a layer of colored or pigmented adhesive 30. (Id. at
`4:23-30; 5:53-6:16; Figs. 1 and 2.) The sheets may be “tinted.” (Id. at 4:12-13.)
`Wave also discloses that its adhesive 30 may be formed from a variety of
`thermoplastic materials (id. at 5:57-65) and may be colored using a variety of
`different pigments or other materials (id. at 5:66-7:2).
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`As discussed above, claims 16-18 recite various types of materials that are
`satisfactory for an adhesive. Claims 27-29 require that the thermoplastic layers
`and the adhesive layer are tinted. Claim 30 requires that either of the thermoplastic
`layers includes “carbon black.” Wavelock describes in detail where all of the
`features of claims 16-18 and 27-30 are set forth in Wade. (Pet. 13-18.) Wavelock
`also persuasively explains why a person of ordinary skill in the art would have
`implemented Wade’s teachings onto the metallized composite of Kuwahara. (Id.)
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`Claim 33 adds to claim 1 that “said composite is supported by a substrate.”
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`Wade discloses that its composite, when formed into its final shaped product, may
`also be supplied with a “backing material 50” so as to “provide support” for the
`product. (Ex. 1011, 6:52-63.) We agree with Wavelock that it would have been
`obvious to provide Kuwahara’s composite with such a backing material to provide
`the requisite support for that composite. (See Pet. 19.) We also credit Dr. Iezzi’s
`testimony offered in support of Wavelock’s obviousness position. (See Ex. 1017, ¶
`95.)
`Accordingly, Wavelock has shown that there is a reasonable likelihood that
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`it will prevail with respect to claims 16-18, 27-30, and 33 on the ground that these
`claims are unpatentable over Kuwahara and Wade.
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`iv. Kuwahara and Moran
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`Wavelock asserts that claim 35 is unpatentable over Kuwahara and Moran.
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`Claim 35 depends from claim 1 and adds that “said composite is embossed.”
`Wavelock relies on Moran to meet that added limitation.
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`Moran is directed to a decorative trim assembly for a vehicle. (Moran,
`Abstract.) Moran describes that such trim assemblies may be embossed to “give a
`particular desired decorative appearance and surface contour.” (Ex. 1016, 1:25-
`31.) Wavelock contends that in light of Moran’s disclosure, one with ordinary skill
`in the art reasonably would have recognized that an embossing technique may be
`applied to other decorative trims, such as those of Kuwahara, so as to obtain a
`desired appearance and surface contour. (Pet. 10-11, 19.) We are persuaded that
`Wavelock’s contention is correct. We also credit Dr. Iezzi’s testimony offered in
`support of the contention. (See Ex. 1017, ¶ 96.)
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`Accordingly, Wavelock has shown that there is a reasonable likelihood that
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`it will prevail with respect to claim 35 on the ground that this claim is unpatentable
`over Kuwahara and Moran.
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`2. Grounds Based on Dunning
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`Wavelock contends that claims 1, 2, 25, 26, 28 33, 34, and 36 are anticipated
`
`by Dunning. (Pet. 20.) Wavelock also contends that claims 1-3, 16-19, 21, and
`25-35 are obvious over Dunning taken with one or more of Ohta, Dani, Wenrick,
`Wade, and Moran. (Id.) As discussed above in connection with the grounds
`involving Kuwahara, we are satisfied that, with the exception of claim 34,
`Wavelock has demonstrated a reasonable likelihood that it will prevail in its
`showing that the involved claims of the ’138 Patent are unpatentable.
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`We now consider the ground of unpatentability based on Dunning for claim
`34.8 Dunning is titled “Elastomeric Reflective Metal Surfaces.” Dunning
`describes its invention as a “metallized elastomeric laminate” that “can provide a
`bright reflective finish on deformable articles, such as impact-absorbing bumpers
`of automobiles.” (Ex. 1008, 1:46-49.) Claim 34 of the ’138 Patent recites “[t]he
`thermoplastic composite of claim 1, wherein said composite is folded.” In
`accounting for claim 1, Wavelock points primarily to Dunning’s Figure 4. (Pet.
`23-26.) Figure 4 depicts an embodiment of Dunning’s invention and is reproduced
`below:
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`
`8 The only grounds of unpatentability proposed in the Petition for claim 34 are
`those involving Dunning.
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`Dunning characterizes its Figure 4 as showing “a fragmentary schematic
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`cross-sectional elevation view showing the laminate of this invention bonded to a
`contoured outer surface of a substrate.” (Ex. 1008, 3:45-47.) Dunning describes
`that the “laminate” is formed by an “elastomeric film 16,” a “reflective metal layer
`18,” and an “adhesive layer 20.” (Id. at 5:43-48.) The laminate is attached to a
`“rigid molded plastic article 31” that is also termed a “substrate.” (Id. at 56-59.)
`Wavelock contends that both Dunning’s laminate and its substrate are taken
`together to form the metallized composite of claim 1. (Pet. 26.) In that regard,
`according to Wavelock, the substrate that is rigid molded plastic article 31 may be
`a “urethane rubber bumper” and, as such, encompasses a thermoplastic material so
`as to form the second thermoplastic layer of claim 1. (Id.) In support of that
`position, Wavelock cites to the declaration testimony of Dr. Robert Iezzi (Ex.
`1017). (Id.) Alternatively, Wavelock submits that based on the teachings of Ohta,
`one with ordinary skill in the art would have known to form Dunning’s substrate
`from a thermoplastic material. (Id.)
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`Even assuming that Wavelock is correct in its position that Dunning’s
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`substrate is, or may be formed from, a thermoplastic material, as noted above,
`claim 34 adds to claim 1 that the composite is “folded.” In accounting for that
`additional requirement, Wavelock points to a portion of Dunning at column 4, lines
`12-19. (Pet. 32-33.) That portion is reproduced below:
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`Referring to FIG. 1 an elastomeric laminate 10 according to this
`invention includes a carrier sheet 12 having a release coat 14
`overlying the carrier sheet. A layer 16 of synthetic resinous
`elastomeric material, such as polyurethane, is coated over the release
`coating 14 to form a relatively thin, continuous, planar flexible and
`foldable elastomeric film or skin coat after the coating sets.
`
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`(Ex. 1008, 4:12-19.) Thus, the above-quoted portion expresses that a particular
`layer 16 of Dunning’s laminate 10 may be “foldable.” The portion, however,
`makes no mention of the substrate underlying the laminate, which, according to
`Wavelock, must form a layer of the required composite. Claim 34, however, is
`clear that it is the composite as a whole that must be “folded.” Even if one layer of
`Dunning’s laminate 10 is foldable, or even assuming arguendo the entire laminate
`is foldable, that does not mean that Dunning contemplates foldability of the
`underlying substrate. Indeed, as noted above, Dunning characterizes the substrate
`as being formed from a material that is “rigid.” Yet, Wavelock’s assertion of
`unpatentability with respect to claim 34 necessarily requires that Dunning disclose
`the folding of both the laminate and the substrate. In reviewing the disclosure of
`Dunning, we disagree that it envisions folding the substrate disclosed therein.
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`Wavelock does not explain how either Dunning taken alone or Dunning
`taken with Ohta accounts for the “folded” requirement of claim 34. We note that
`Dr. Iezzi also testifies that the prior art discloses the limitation of claim 34. (See
`Ex. 1017, ¶ 137.) Iezzi’s testimony, however, amounts simply to a reproduction of
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`the above-noted portion of Dunning at column 4, lines 12-19 and a general
`conclusion that “[a]ccordingly, Dunning discloses folding its composite film.”
`(Id.) That conclusion is not explained adequately. Nothing requires a fact finder
`to credit inadequately explained testimony of an expert. See Rohm and Haas Co.
`v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).
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`For the foregoing reasons, we are not persuaded that Wavelock has shown
`that it will prevail in its assertion that claim 34 is unpatentable over Dunning taken
`alone or over Dunning taken with Ohta.
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`With respect to the other grounds of unpatentabilty involving Dunning and
`applied to claims 1-3, 8, 10, 16-19, 21, 25-33, 35, and 36, those grounds are
`redundant to the grounds involving Kuwahara on which we authorize inter partes
`review. We do not authorize inter partes review on the redundant grounds.
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`3. Remaining Grounds
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`The remainin