Petitioner’s request for a refund of certain post-institution fees paid on 10/30/2015 in the above proceeding is hereby granted.

The amount of $14,000 has been refunded to the Petitioner’s deposit account.

Case IPR2016-00117 Patent 8,720,218 The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

For the PATENT OWNER:

Moreover, without citation to some evidence, for example, in the form of an expert declaration, we are not persuaded by Petitioner’s contention that “there are no viable, known compositions ... that undergo a reversible endothermic reaction upon the application of a certain amount of pressure” (Pet. 19).

Also, without other evidence regarding Fan’s disclosure beyond its resistance to being pierced or burst, we are not persuaded that Fan discloses that application and release of pressure by an object on its gel pad activates and deactivates, respectively, its cooling composition, as required by the challenged claims.

Claims 15 and 16 Petitioner states that the “only alleged deficiency [Patent Owner] identified in the district court case is that Xiong does not disclose ‘a pressure activated cooling composition.’” Pet. 52 (citing Ex. 1010, 8).

Petitioner further contends that “Fan’s and Xiong’s express disclosure of the advantages and necessity of having ‘channels’ ... constitutes a teaching, suggestion, or motivation to combine Fan with Xiong, since both described similar solutions to the same problem[s].” Id. at 58.

Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail with respect to its challenge that Xiong and Fan render obvious claims 15, 16, 18, and 19 of the ’218 patent.

The petition for inter partes review in the above proceeding has been accorded the filing date of October 30, 2015.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Thus, in some embodiments, the channels explicitly do not fully Petition For Inter Partes Review Of U.S. Patent No. 8,720,218 isolate the angled segments from one another, indicating that there is no requirement the elongated grooves reach the perimeter of the cooling mat.

Moreover, a person of skill in the art would understand that extending the reinforcing ribs 6 across the entire cooling platform would further assist in achieving Fan’s stated goals of ventilation and prevention of gel movement among angled segments.

However, as described above, the broadest reasonable interpretation of “pressure” is “contact.” Since Xiong’s PCM only changes phases when heat is transferred due to contact with the hot object, Xiong does disclose this limitation under the claim construction standard applicable here.

Therefore, an artisan would recognize that the incorporation of Xiong’s channels into Fan’s gel pad would predictably result in an improved cooling platform, with each reference contributing its known properties and Petition For Inter Partes Review Of U.S. Patent No. 8,720,218 advantages.

Fan’s and Xiong’s express disclosure of the advantages and necessity of having “channels” to reduce the movement of the composition within the cooling platform constitutes a teaching, suggestion, or motivation to combine Fan with Xiong, since both described similar solutions to the same problem.