Case To Be Assigned
`IPR of U.S. Patent No. 8,402,580
`
`Filed on behalf of Bedgear LLC
`By:
`Joseph J. Richetti
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BEDGEAR, LLC
`Petitioner
`
`v.
`
`SHEEX, INC.
`Patent Owner
`
`Case: To Be Assigned
`U.S. Patent No. 8,402,580
`
`PETITION FOR INTER PARTES REVIEW
`PURSUANT TO 37 C.F.R. §42.100 et seq.
`
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`MANDATORY NOTICES (37 C.F.R. § 42.8) .........................................1
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))..........................2
`
`III.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)).................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Claims for Which Review Is Requested ...............................................2
`
`Priority Date of the ‘580 Patent.............................................................2
`
`The Specific Art on Which the Challenge Is Based..............................3
`
`The Statutory Grounds on Which the Challenge Is Based....................4
`
`IV. OVERVIEW OF THE ‘580 PATENT...........................................................4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Technology Background .......................................................................4
`
`The ‘580 Patent Specification ...............................................................7
`
`Prosecution History.............................................................................10
`
`The Challenged Claims .......................................................................12
`
`V.
`
`LEVEL OF ORDINARY SKILL..................................................................12
`
`VI. CLAIM CONSTRUCTION ..........................................................................13
`
`VII. GROUNDS OF UNPATENTABILITY........................................................15
`
`A.
`
`B.
`
`Overview of the Grounds ....................................................................15
`
`Ground 1: The APA In View Of Haggerty Renders Obvious
`Claims 1-14, 18, and 19 ......................................................................17
`
`1.
`
`The APA in view of Haggerty renders obvious claim 1...........20
`
`a.
`
`b.
`
`The APA in view of Haggerty teaches a finished fabric
`at least 90 inches wide (1[Pre]) ........................................20
`
`The APA in view of Haggerty teaches a first circular
`knitted fabric portion and a second circular knitted
`fabric portion (1[A1] & 1[A2]) ........................................22
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`c.
`
`d.
`
`e.
`
`f.
`
`The APA teaches at least one of the circular knitted
`fabric portions comprising a performance fabric that
`has been circularly knit at 17 gauges or higher (1[B1])...23
`
`The APA teaches the performance fabric having an
`elasticity such that it has a tendency to sag by an
`amount greater than a threshold amount of sag
`determined by a finishing process (1[B2]) .......................25
`
`The APA teaches the sag would interfere with the
`finishing process if the performance fabric were
`circularly knit at greater than a 72.5 inch
`circumference (1[B3]) ......................................................28
`
`The APA in view of Haggerty teaches the first and
`second fabric portions are discrete (1[C1]); and are
`joined along respective edges of the two portions to
`form the finished fabric (1[C2]) .......................................30
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`The APA in view of Haggerty renders obvious claim 2...........33
`
`The APA in view of Haggerty renders obvious claim 3...........33
`
`The APA in view of Haggerty renders obvious claims 4-9......34
`
`The APA in view of Haggerty renders obvious claims 10-12..34
`
`The APA in view of Haggerty renders obvious claim 13.........35
`
`The APA in view of Haggerty renders obvious claim 14.........36
`
`The APA in view of Haggerty renders obvious claim 18.........36
`
`The APA in view of Haggerty renders obvious claim 19.........37
`
`C.
`
`Ground 2: The APA In View Of Haggerty, Further In View Of
`Fleissner Renders Obvious Claims 1-14, 18, and 19 ..........................38
`
`1.
`
`The APA in view of Haggerty and Fleissner renders
`obvious independent claim 1 ....................................................40
`
`a.
`
`The APA in view of Haggerty and Fleissner teaches
`limitations 1[Pre], [A1], [A2], [B1]. [C1], and [C2]........40
`
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`b.
`
`The APA in view of Haggerty and Fleissner teaches
`“the performance fabric has a tendency to sag by an
`amount that is greater than a threshold amount of sag
`determined by a finishing process” (1[B2]); and “the
`sag would interfere with the finishing process if the
`performance fabric were circularly knit at greater than
`a 72.5 inch circumference” (1[B3])..................................40
`
`2.
`
`The APA in view of Haggerty and Fleissner renders
`obvious dependent claims 2-14, 18, and 19..............................43
`
`D.
`
`Ground 4: Stewart In View Of Fleissner Renders Obvious Claims
`1-14, 18, and 19...................................................................................44
`
`1.
`
`Stewart in view of Fleissner renders obvious claim 1 ..............45
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Stewart teaches a finished fabric at least 90 inches
`wide (1[Pre]).....................................................................45
`
`Stewart teaches a first circular knitted fabric portion
`and a second circular knitted fabric portion (1[A1] &
`1[A2])................................................................................46
`
`Stewart teaches at least one of the circular knitted
`fabric portions comprising a performance fabric that
`has been circularly knit at 17 gauges or higher (1[B1])...47
`
`Stewart in view of Fleissner teaches the performance
`fabric having an elasticity such that it has a tendency
`to sag by an amount greater than a threshold amount of
`sag determined by a finishing process (1[B2]).................49
`
`Stewart in view of Fleissner teaches the sag would
`interfere with the finishing process if the performance
`fabric were circularly knit at greater than a 72.5 inch
`circumference (1[B3]) ......................................................51
`
`Stewart teaches the first and second fabric portions are
`discrete (1[C1]); and are joined along respective edges
`to form the finished fabric (1[C2]) ...................................53
`
`2.
`
`Stewart in view of Fleissner renders obvious claim 2 ..............55
`
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`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Stewart in view of Fleissner renders obvious claim 3 ..............55
`
`Stewart in view of Fleissner renders obvious claims 4-9 .........56
`
`Stewart in view of Fleissner renders obvious claims 10-12 .....57
`
`Stewart in view of Fleissner renders obvious claim 13 ............58
`
`Stewart in view of Fleissner renders obvious claim 14 ............58
`
`Stewart in view of Fleissner renders obvious claim 18 ............58
`
`Stewart in view of Fleissner renders obvious claim 19 ............59
`
`VIII. CONCLUSION ..............................................................................................60
`
`v
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`TABLE OF AUTHORITIES
`
`CASES
`
`In re Aller,
`105 USPQ 233 (CCPA 1955).............................................................29,43, 53
`
`In re Cuozzo Speed Technologies, LLC,
`778 F.3d 1271 (Fed. Cir. 2015) .....................................................................13
`
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc.,
`807 F.2d 955, 962 (Fed. Cir. 1986) ...............................................................12
`
`Johnson Controls, Inc. v. Wildcat Licensing Wi, LLC,
`IPR2014-00304 (PTAB June 22, 2014) ..........................................................3
`
`Moore Rod & Pipe, LLC v. Wagon Trail Ventures, Inc.,
`IPR2013-00418 (PTAB Oct. 2, 2014).............................................................3
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005 (PTAB Feb. 11, 2014)...........................................................3
`
`In re Rose,
`105 USPQ 237 (CCPA 1955)........................................................................46
`
`STATUTES AND RULES
`
`37 C.F.R. § 42.100(b) ..............................................................................................13
`
`M.P.E.P. § 2129 .........................................................................................................3
`
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`

`
`Bedgear
`Exh. No.
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`1021
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`Case To Be Assigned
`IPR of U.S. Patent No. 8,402,580
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`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,402,580 (“the ‘580 patent”)
`U.S. Patent No. 7,200,883 to David W. Haggerty (“Haggerty”)
`U.S. Patent No. 3,696,475 to Heinz Fleissner (“Fleissner”)
`U.S. Patent Application Publication No. 2005/0284189 to Richard
`F. Stewart (“Stewart”)
`Declaration of Dr. Sabit Adanur (“Adanur Decl.”)
`CV of Dr. Sabit Adanur
`Prosecution File History for the ‘580 patent
`Prosecution File History for U.S. Patent No. 9,109,309 (“the ‘977
`application”)
`U.S. Patent No. 7,398,570 (“Seago”)
`U.S. Patent No. 7,240,383 (“Stewart II”)
`U.S. Patent No. 5,287,573 (“Ritacco”)
`U.S. Patent Publication No. 2005/0193490 (“MacDonald”)
`U.S. Patent No. 7,117,695 (“the ‘695 patent”)
`U.S. Patent No. 5,636,380 (“the ‘380 patent”)
`U.S. Patent No. 5,255,419 (“Stanislaw”)
`U.S. Patent No, 4,461,048 (“Allaire”)
`Adanur, S., Wellington Sears Handbook of Industrial Textiles,
`Technomic Publishing Co., (CRC Press 1995) (“Wellington”)
`Knitted Fabrics, Manufacture and Processing, Ciba-Geigy, 1976
`(“Ciba-Geigy”)
`Gajjar, B. J., Warp Knit Fabrics Technologies, Emerald Ink Pub-
`lishing, 2007 (“Gajjar”)
`Spencer, D. J., Knitting Technology, Woodhead Publishing Lim-
`ited, 1989
`Chemstrand Co., Spandex Technology (Chemstrand 1965)
`(“Chemstrand”)
`
`vii
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`Bedgear
`Exh. No.
`1022
`1023
`
`Description
`U.S. Patent No. 6,164,092
`Fiber Usage in Home Textiles 2007 (Dec. 12, 2007),
`http://www.researchandmarkets.com/reports/c77257
`
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`Bedgear, LLC (“Petitioner” or “Bedgear”) petitions the United States Patent
`
`& Trademark Office (“PTO”) to institute an inter partes review of claims 1-14, 18,
`
`and 19 (the “challenged claims”) of U.S. Patent No. 8,402,580 to Walvius et al.
`
`(“the ’580 patent”). According to PTO records, the ’580 patent is assigned to
`
`Sheex, Inc. (“Sheex” or “Patent Owner”). A copy of the ’580 patent is provided as
`
`Bedgear Exhibit 1001.
`
`I.
`
`MANDATORY NOTICES (37 C.F.R. § 42.8)
`REAL PARTY IN INTEREST: The real party-in-interest of Petitioner is
`
`Bedgear, LLC.
`
`RELATED MATTERS: To Petitioner’s knowledge, the ’580 patent is cur-
`
`rently involved in the following related proceedings: Sheex, Inc. v. Bedgear, LLC,
`
`C.A. No. 14-01380-LPS-CJB (D. Del.) and Sheex, Inc. v. E&E Co. Ltd., C.A. No.
`
`14-01399-LPS (D. Del.). Petitioner is also filing petitions requesting inter partes
`
`review of U.S. Patent Nos.: 8,566,982 (“the ’982 patent”) and 9,109,309 (“the ’309
`
`patent”), which are also involved in the foregoing proceedings.
`
`LEAD AND BACKUP COUNSEL:
`
`Lead Counsel
`Joseph J. Richetti
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`
`Backup Counsel
`Daniel A. Crowe
`Reg. No. 39,644
`BRYAN CAVE LLP
`One Metropolitan Square
`211 N. Broadway, Suite 3600
`St. Louis, MO 63102
`General Tel: (314) 259-2000
`
`1
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`(212) 541-4630
`Fax:
`joe.richetti@bryancave.com
`
`(314) 259-2020
`Fax:
`dacrowe@bryancave.com
`
`SERVICE INFORMATION: Service information for lead and back-up coun-
`
`sel is provided in the designation of lead and back-up counsel above. Petitioner
`
`consents to electronic service by email at the email addresses provided above.
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`The undersigned and Bedgear certify that the ‘580 patent is available for in-
`
`ter partes review and Petitioner is not barred or estopped from requesting an inter
`
`partes review of the challenged claims of the ‘580 patent.
`
`III.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b))
`
`Petitioner requests an Order cancelling the challenged claims as unpatenta-
`
`ble under 35 U.S.C. §§ 102 and/or 103.
`
`A.
`
`Claims for Which Review Is Requested
`
`Petitioner requests review of claims 1-14, 18, and 19 of the ‘580 patent.
`
`B.
`
`Priority Date of the ‘580 Patent
`
`The ‘580 patent issued from U.S. Application No. 13/271,884 filed on Octo-
`
`ber 12, 2011 and claims priority to U.S. Application No. 12/569,659, filed on Sep-
`
`tember 29, 2009 and U.S. Provisional Application No. 61/101,049 filed on Sep-
`
`tember 29, 2008. Thus, September 29, 2008 is the earliest possible priority date
`
`and effective filing date for the ‘580 patent. Given that the ‘580 patent was filed
`
`before March 16, 2013, the provisions of pre-AIA 35 U.S.C. § 102 and 103 apply.
`
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`C.
`
`The Specific Art on Which the Challenge Is Based
`
`Each of the references relied upon in the grounds set forth in this Petition is
`
`prior art to the ‘580 Patent for at least the following reasons:
`
`1.
`
`Admitted Prior Art (“APA”), including at least the statements in col.
`
`1, line 21 – col. 3, line 35, col. 3, lines 41-44, col. 4, lines 21–29, col. 6, lines 40-
`
`44, and col. 7, lines 24-27, col. 7, lines 29-34, col. 7, line 47 – col. 8, line 14 of the
`
`‘580 patent specification, as well as certain portions of the prosecution file history
`
`as cited and discussed below. In these passages, the inventors made clear that per-
`
`formance fabrics and manufacturing techniques and equipment were known well
`
`before the ‘580 patent. As a result, the inventor’s statements and admissions qual-
`
`ify as “Admitted Prior Art,” which can be relied upon for both anticipation and ob-
`
`viousness determinations.” M.P.E.P. § 2129; Nichia Corp. v. Emcore Corp.,
`
`IPR2012-00005, paper 68 (PTAB Feb. 11, 2014) (finding all challenged claims
`
`unpatentable based in part on admitted prior art); Moore Rod & Pipe, LLC v. Wag-
`
`on Trail Ventures, Inc., IPR2013-00418, paper 38 (PTAB Oct. 2, 2014) (same);
`
`Johnson Controls, Inc. v. Wildcat Licensing Wi, LLC, IPR2014-00304, paper 44
`
`(PTAB June 22, 2014) (same).
`
`2.
`
`U.S. Patent No. 7,200,883 to David W. Haggerty (“Haggerty,” pro-
`
`vided as Ex. 1002) issued on April 10, 2007, which is more than one year before
`
`the September 29, 2008 earliest possible priority date of the ‘580 patent. Accord-
`
`3
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`ingly, Haggerty is prior art to the ‘580 patent under pre-AIA 35 U.S.C. § 102(b).
`
`3.
`
`U.S. Patent No. 3,696,475 to Heinz Fleissner (“Fleissner,” provided as
`
`Ex. 1003) issued on October 10, 1972, which is more than one year before the Sep-
`
`tember 29, 2008 earliest possible priority date of the ‘580 patent. Accordingly,
`
`Fleissner is prior art to the ‘580 patent under pre-AIA 35 U.S.C. § 102(b).
`
`4.
`
`U.S. Patent Application Publication No. 2005/0284189 to Richard F.
`
`Stewart (“Stewart,” provided as Ex. 1004). Stewart published on December 29,
`
`2005, which is more than one year before the September 29, 2008 earliest possible
`
`priority date of the ‘580 patent. Accordingly, Stewart is prior art to the ‘580 patent
`
`under pre-AIA 35 U.S.C. § 102(b).
`
`D.
`
`The Statutory Grounds on Which the Challenge Is Based
`
`The Petition identifies the following three grounds of unpatentability:
`
`Ground
`
`1
`
`2
`
`3
`
`Statutory Basis For Challenge
`The APA in view of Haggerty renders obvious claims 1-14, 18, and 19
`under 35 U.S.C. § 103.
`The APA in view of Haggerty and Fleissner renders obvious claims 1-
`14, 18, and 19 under 35 U.S.C. § 103.
`Stewart in view of Fleissner renders obvious claims 1-14, 18, and 19
`under 35 U.S.C. § 103.
`
`IV. OVERVIEW OF THE ‘580 PATENT
`
`A.
`
`Technology Background
`
`The ‘580 patent generally relates to bed coverings or sheets that include two
`
`or more portions of fabric. More specifically, the ‘580 patent is directed to bed
`
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`sheets formed using circular knit performance fabrics. ‘580 patent at Abstract,
`
`1:15-20, 6:14-29. A more detailed discussion of the state of the relevant art at the
`
`time of the ‘580 patent, including a description of certain fabrics, fabric properties,
`
`and fabric manufacturing and finishing techniques, is set forth in the declaration of
`
`Dr. Sabit Adanur (provided as Ex. 1005). See generally Adanur Decl. at ¶¶ 30-57.1
`
`Circular knitting is a form of weft knitting where the knitting needles are or-
`
`ganized into a circular knitting bed and the fabric emerges in a tubular form
`
`through the center of a cylinder. ‘580 patent at 2:57-3:2; Adanur Decl. at ¶¶ 37-40.
`
`As the ‘580 patent admits, machinery for manufacturing circularly knit fabrics was
`
`well-known and in widespread use long before the time of the ‘580 patent. ‘580
`
`patent at 2:15-22, 2:57-3:2, 7:66-8:2; Adanur Decl. at ¶ 39 (explaining that circular
`
`knitting has been used to manufacture fabrics since the early 1900s).
`
`Circular knitting was (and still is) frequently used to manufacture certain
`
`types of fabrics, such as fabrics containing synthetic fibers and/or finer tactile qual-
`
`ities. ‘580 patent at 3:8-14, 6:33-39; Adanur Decl. at ¶¶ 52-53 For example, circu-
`
`lar knitting was often used to manufacture fabrics having elastic properties or other
`
`functional qualities (e.g., moisture wicking, thermal regulation, or anti-microbial
`
`properties), which are referred to in the ‘580 patent as “performance fabrics.” ‘580
`
`patent at 1:59-62 (acknowledging that such performance fabrics were used “for a
`
`1 Citations to Dr. Adanur’s declaration are in the form: Adanur Decl. at ¶ xx.
`
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`variety of end-use applications”), 2:14-22 & 44-66 (describing a prior art patent
`
`that discloses conventional techniques for creating circularly-knit performance fab-
`
`rics for use with athletic apparel); Adanur Decl. at ¶¶ 51-54.
`
`These performance fabrics often included Spandex due to its very high elas-
`
`ticity and strength. ‘580 patent at 4:21-29. As acknowledged in the ‘580 patent,
`
`Spandex “is a polyurethane-polyurea copolymer that was invented by DuPont” and
`
`was “known for its exceptional elasticity.” Id. (also noting that Lycra is the most
`
`famous brand name for Spandex), 2:44-51, 6:18-21; Adanur Decl. at ¶¶ 42-45.
`
`Spandex-based performance fabrics were typically manufactured using
`
`“high-gauge” circular knitting machines because they required dense knitting with
`
`thin yarn. Adanur Decl. at ¶¶ 35, 51-52; ‘580 patent at 2:15-21, 3:16-20. A ma-
`
`chine’s “gauge” denotes the number of needles that are organized in one inch on
`
`the knitting bed of the machine. “High gauge” was commonly used to refer to ma-
`
`chines with 17 gauges or more. ‘580 patent at 7:52-60; Adanur Decl. at ¶ 35. As
`
`the ’580 patent admits, high-gauge circular knitting was well-known and used to
`
`manufacture performance fabrics for various products (e.g., athletic apparel). ‘580
`
`patent at 2:57-3:4, 3:39-43, 7:24-32 7:47-8:5; Adanur Decl. at ¶¶ 35, 51-52.
`
`After fabrics are manufactured (e.g., using circular knitting), finishing pro-
`
`cesses were then typically used to create finished fabrics or products. For example,
`
`this included subjecting the fabric to a heat setting, stretching, drying, wetting,
`
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`and/or dyeing process, cutting and/or sewing portions of fabric, and imparting the
`
`fabric with functional qualities (e.g., moisture management, UV protection, anti-
`
`microbial properties, thermo-regulation, and wind and water resistance). ‘580 pa-
`
`tent at 8:6-23; Adanur Decl. at ¶¶ 46-48. It was well known that many of these fin-
`
`ishing processes required the fabric to be kept relatively flat and taught as it was
`
`fed through the finishing machinery. As a result, too much sag in a fabric would
`
`cause problems with or even prevent the use of these finishing processes and im-
`
`pact the quality or integrity of the fabric. Adanur Decl. at ¶¶ 46-49.
`
`It was also well known that, particularly at larger fabric widths, circular knit
`
`performance fabrics had an increased tendency to sag in the middle, which made
`
`finishing processes difficult or impossible. ‘580 patent at 8:6-23. This was espe-
`
`cially true for elastic fabrics, e.g., those including Spandex. Id. at 7:24-34. In par-
`
`ticular, as the ‘580 patent acknowledges, it was well known that, when spandex-
`
`based performance fabrics were circularly knit above a certain width (e.g., 72.5
`
`inches) the spandex fibers would lose their integrity (because the fabric would sag
`
`too much during finishing processes). Id.; Adanur Decl. at ¶¶ 47-49, 52-54.
`
`According to the ‘580 patent, because of their increased tendency to sag and
`
`the problems with finishing, these circular knit elastic performance fabrics were
`
`not being made wider than 90 inches. ‘580 patent at 2:14-24, 7:24-34, 8:6-23.
`
`B.
`
`The ‘580 Patent Specification
`
`7
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`Case To Be Assigned
`IPR of U.S. Patent No. 8,402,580
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`The purported “solution” described and claimed in the ‘580 patent is incred-
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`ibly simple and straightforward, namely: the patent proposes forming two or more
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`pieces of fabric and then joining them together to create a finished fabric at least 90
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`inches wide. ‘580 patent at 3:51-55 (“[T]he present invention is a method of mak-
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`ing a finished fabric comprising at least two discrete performance fabric portions,
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`and joining [them] to form the finished fabric.”), 7:35-41, claim 1. The specifica-
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`tion explains that “[i]n order to provide a sheet that exceeds the maximum dimen-
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`sions of fabric that can be produced by available circular knitting machines, flat
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`lock stitching 12 is used to join a plurality of portions resulting in a sheet that is 91
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`inches wide.” Id. at 6:14-18 & 40-46, FIG. 1; Adanur Decl. at ¶¶ 55-56, 67, 73.
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`An example of the claimed finished fabric (in the form of a bed sheet) is il-
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`lustrated in FIG. 2, reproduced below:
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`The bed sheet has “dimensions of 91 inches wide and 102 inches in length” and in-
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`cludes a “main portion 16” and a “sewn-on portion” which are joined together at
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`their edges using “stitching 14.” ‘580 patent at 6:58-63. Various stitching or sew-
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`ing techniques may be used to join the fabric portions together. ‘580 patent at
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`3:58-62, 6:62-63, 7:6-9, FIGS. 3D & 3E; Adanur Decl. at ¶¶ 54-56, 67, 73.
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`The ‘580 patent further explains that at least one of the fabric portions is cir-
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`cularly knit at high-gauge and is “manufactured from performance fabric” that can
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`include spandex or other elastic fibers. ‘580 patent at 6:14-21 (explaining that the
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`performance fabric includes “varying amounts of one or more of Lycra, Coolmax,
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`Thermax and Thermastat.”); see also id., 4:13-29, 6:22-26. The specification
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`acknowledges that these elastic performance fabrics “can only be made to a maxi-
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`mum size of 72.5 inches without losing the integrity of the spandex in the fabric”
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`because “higher levels of spandex in the performance fabric tend to pull the width
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`in.” Id., 7:29-34, 7:66-8:2. In turn, according to the ‘580 patent, this tendency to
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`sag makes finishing processes, such as heat setting or applying a moisture-wicking
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`finish, “difficult to impossible above a certain threshold [width].” Id. at 8:6-23;
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`Adanur Decl. at ¶¶ 70, 74-75.
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`As discussed in more detail below (infra at pp. 19-45), the ‘580 patent ex-
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`pressly admits that the fabrics, fabric properties, and manufacturing techniques re-
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`cited in the challenged claims were well-known long before the patent. Thus, the
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`alleged point of novelty in the ’580 patent is based on forming two or more pieces
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`of this known fabric and joining them together to create a finished fabric that is at
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`Case To Be Assigned
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`least 90 inches wide. This concept is not only simple and straightforward, but was
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`also commonplace in the art and disclosed by numerous references long before the
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`‘580 patent. Adanur Decl. at ¶¶ 55, 75-76.
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`C.
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`Prosecution History
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`During prosecution of the ‘580 patent, the applicants: (i) admitted that high
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`gauge circular knit performance fabrics were well-known and already being pro-
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`duced by various fabric suppliers; and (ii) made clear that their allegedly novel
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`concept was simply joining together portions of this prior art fabric to create a fin-
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`ished fabric at least 90 inches wide:
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`[T]he inventors conceived of producing a finished fabric at least
`90 inches wide by joining fabric portions, including a circular knit-
`ted performance fabric portion knitted at a high gauge. To the inven-
`tors’ knowledge, even though narrow portions of fabric knitted at
`a high gauge already existed, none of the contacted suppliers of
`fabric had joined these kinds of portions of fabric to produce a
`finished fabric at least 90 inches wide.
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`‘580 patent Prosecution File History (Ex. 1007) at pp. 179-181 (emphasis added).
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`After a Final Office Action once again rejecting all of the pending claims as
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`obvious (see id. at p. 114-135), the applicants further amended the independent
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`claim to recite that the performance fabric portion:
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`ha[s] an elasticity such that the performance fabric has a tendency to
`sag by an amount that is greater than a threshold amount of sag de-
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`termined by a finishing process, such that the sag would interfere with
`the finishing process if the performance fabric were circularly knit at
`greater than a 72.5 inch circumference
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`Id. at pp. 88-97. The Examiner then allowed the claims, finding that the prior art
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`of record “does not teach joining two fabric portions together, one portion com-
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`prising the elastic performance fabric, in order to make a finished fabric at
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`least 90 inches wide.” Id. at pp. 26-28 (emphasis added).
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`Subsequently, during prosecution of a related application (U.S. Patent Ap-
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`plication No. 13/272,977, “the ’977 application,” which issued at the ‘309 patent),
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`the applicants also amended the pending independent claims (which were substan-
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`tially similar to those of the ‘580 patent) to include the same “elasticity” limitation.
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`See ‘309 patent prosecution file history (provided as Ex. 1008) at pp. 645-659. In
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`the ‘977 application, however, the Examiner found that the these recited “elastici-
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`ty” and “sag” properties were known, inherent properties of spandex, as acknowl-
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`edged in the patent specifications. Id. at p. 478-503 (during an interview the “Ex-
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`aminer explained that since the prior art uses the same material as applicant’s
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`[claims], it would perform similarly.”). The applicants did not dispute this; rather,
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`they amended the pending independent claims to require that the “bed sheet” be “at
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`least 90 inches wide.” Id. at pp. 34-43. The Examiner allowed the claims based on
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`this amendment. Id. at pp. 15-23.
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`Significantly, these prosecution histories confirm that the alleged point of
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`novelty in the claims was not the claimed performance fabric itself; rather it was
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`merely joining multiple fabric portions together (at least one portion being the
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`claimed performance fabric) to form a finished fabric “at least 90 inches wide.”
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`D.
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`The Challenged Claims
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`The ‘580 patent includes one independent claim. The text of challenged in-
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`dependent claim 1 is reproduced in the chart below. For ease of reference, labels
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`have been assigned to each limitation.
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`Claim 1
`[Pre] A finished fabric at least 90 inches wide comprising:
`[A1]
`a first circular knitted fabric portion; and
`[A2]
`a second circular knitted fabric portion
`[B1]
`at least one of the circular knitted fabric portions comprising a perfor-
`mance fabric that has been circularly knit at 17 gauges or higher,
`the performance fabric having an elasticity such that the performance
`fabric has a tendency to sag by an amount that is greater than a threshold
`amount of sag determined by a finishing process,
`such that the sag would interface with the finishing process if the per-
`formance fabric were circularly knit at greater than a 72.5 inch circum-
`ference;
`wherein the first and second fabric portions are discrete; and
`wherein the first and second fabric portions are joined along respective
`edges of the two portions to form the finished fabric.
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`[B2]
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`[B3]
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`[C]
`[D]
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`V.
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`LEVEL OF ORDINARY SKILL
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`A person of ordinary skill in the art (“POSITA”) is “a hypothetical person
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`who is presumed to be aware of all the pertinent prior art” at the time of the alleged
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`invention. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
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`962 (Fed. Cir. 1986). A POSITA at the time of the ‘580 patent would generally
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`Case To Be Assigned
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`have a bachelor’s degree in textile engineering, fiber, polymer and/or material sci-
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`ence, or a similar field. Significant experience in the field of textile design and/or
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`manufacturing might substitute for formal education. Adanur Decl. at ¶¶ 22-23.
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`Such a person would have been capable of understanding the ‘580 patent and ap-
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`plying the prior art references discussed herein. Id.
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`VI. CLAIM CONSTRUCTION
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`For unexpired patents, claims should be given the “broadest reasonable in-
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`terpretation in light of the specification” (“BRI”). See 37 C.F.R. § 42.100(b); In re
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`Cuozzo Speed Technologies, LLC, 778 F.3d 1271 (Fed. Cir. 2015).
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`All of the challenged claims require that at least one high-gauge circular
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`knitted fabric portion comprises a “performance fabric having an elasticity such
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`that the performance fabric has a tendency to sag by an amount that is greater than
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`a threshold amount of sag determined by a finishing process, such that the sag
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`would interfere with the finishing process if the performance fabric were circularly
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`knit at greater than a 72.5 inch circumference.” Based on the claim language and
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`the specification, the broadest reasonable interpretation of this limitation is: “a fab-
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`ric with elastic fibers that would have too much sag and interfere with a finishing
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`process if it is high-gauge circularly knit wider than 72.5 inches.”
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`In describing the claimed performance fabric, the specification explains that
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`“the material is manufactured from performance fabric, which can include, for ex-
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`Case To Be Assigned
`IPR of U.S. Patent No. 8,402,580
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`ample, varying amounts of one or more of Lycra, Coolmax, Thermax, and The-
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`mastat.” ‘580 patent at 6:18-21, 4:21-29, 2:35-66. In particular, the specification
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`explains that “[b]y using circular-knit performance fabric, the fabric is able to pro-
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`vide elasticity in all four directions” and “the sheet has elastic properties.” Id.,
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`6:22-29. For example, the specification repeatedly discloses that the claimed per-
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`formance fabric can include spandex fibers, which were known to be highly elas-
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`tic. Id. at 4:13-20; 4:21-22 (explaining spandex is “known for its exceptional elas-
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`ticity.”); 7:43-46 (“Because the bedding is made from performance fabric with
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`spandex, it stretches .....”); see also Adanur Decl. at ¶ 78.
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`The specification further explains that these elastic performance fabrics had
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`more sag, particularly at greater fabric widths, which caused problems with finish-
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`ing processes. ‘580 patent at 8:1-5 (“higher levels of spandex in the performance
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`fabric tend to pull the width in” and “the spandex can reduce an otherwise 94-inch
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`circumference fabric tube to one with a 60-65 inch finished width.”); 8:6-14
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`(“[w]ith performance fabric, it tends to sag in the middle – increasingly so with
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`greater widths—maki