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Case 3:15-cv-00064-HZ Document 175 Filed 07/27/17 Page 1 of 2

JASMINE C. HITES, OSB # 104056


Troutman Sanders LLP
100 SW Main Street, Suite 1000
Portland, OR 97204
Telephone: (503) 290-2344; Facsimile: (503) 290-2405
jasmine.hites@troutmansanders.com

MATTHEW D. MURPHEY, CSB #194111 (admitted pro hac vice)


Troutman Sanders LLP
5 Park Plaza, Suite 1400
Irvine, CA 92614
Telephone: (949) 622-2756; Facsimile: (949) 769-2090
Email: matt.murphey@troutmansanders.com

Attorneys for Defendant Seirus Innovative Accessories, Inc.

UNITED STATES DISTRICT COURT


FOR THE DISTRICT OF OREGON
PORTLAND DIVISION

COLUMBIA SPORTSWEAR NORTH No. 3:15-cv-00064-HZ


AMERICA, INC., an Oregon corporation,
NOTICE OF INSTITUTION OF THIRD-
PLAINTIFF, PARTY PETITIONS FOR INTER PARTES
REVIEW
v.

SEIRUS INNOVATIVE ACCESSORIES,


INC., a Utah corporation,

DEFENDANT.

Troutman Sanders LLP


NOTICE OF INSTITUTION OF THIRD-PARTY 100 SW Main Street, Suite 1000
PETITIONS FOR INTER PARTES REVIEW Portland, Oregon 97204
31992505v1 Telephone: 503.290.2400
Case 3:15-cv-00064-HZ Document 175 Filed 07/27/17 Page 2 of 2

Defendant Seirus Innovative Accessories, Inc. hereby notifies the Court that on July 26,

2017, the U.S. Patent and Trademark Offices Patent Trial and Appeal Board instituted trial on

Third Party Ventex Co., Ltd.s (Ventex) two Petitions for Inter Partes Review (IPR) of U.S.

Patent Nos. 8,453,270 (270 Patent) and 8,424,119 (119 Patent) on all challenged claims.

Specifically, the Patent Trial and Appeal Board instituted trial on:

Claims 1, 2, 7, and 17 of the 270 Patent are invalid based on U.K. Patent App. No.
GB 2,073,613 to Fottinger (Fottinger);

Claim 2 of the 270 Patent is invalid based on Fottinger in view of U.S. Patent Pub.
No. 2006/0179539 to Harber (Harber);

Claims 1, 2, 8, 15, 16, and 20 of the 119 Patent are invalid based on Fottinger; and

Claim 2 of the 119 Patent is invalid based on Fottinger in view of Harber.

The Institution Decisions are attached hereto.

DATED: July 27, 2017 Respectfully submitted,

TROUTMAN SANDERS LLP

s/ Matthew D. Murphey
JASMINE C. HITES, OSB # 104056
Troutman Sanders LLP
100 SW Main Street, Suite 1000
Portland, OR 97204
Telephone: (503) 290-2344
Facsimile: (503) 290-2405
jasmine.hites@troutmansanders.com

MATTHEW D. MURPHEY (admitted pro hac vice)


5 Park Plaza, Suite 1400
Irvine, CA 92614
Telephone: (949) 662-2700
Facsimile: (949) 622-2739
Email: matt.murphey@troutmansanders.com

Attorneys for Defendant Seirus Innovative


Accessories, Inc.
Troutman Sanders LLP
NOTICE OF INSTITUTION OF THIRD-PARTY 100 SW Main Street, Suite 1000
PETITIONS FOR INTER PARTES REVIEW Portland, Oregon 97204
31992505v1 Telephone: 503.290.2400
Case 3:15-cv-00064-HZ Document 175-1 Filed 07/27/17 Page 1 of 20

EXHIBIT A
Case 3:15-cv-00064-HZ Document 175-1 Filed 07/27/17 Page 2 of 20

Trials@uspto.gov Paper No. 18


571-272-7822 Entered: July 26, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE


____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD


____________

VENTEX CO., LTD.,


Petitioner,

v.

COLUMBIA SPORTSWEAR NORTH AMERICA, INC.,


Patent Owner.
____________

Case IPR2017-00789
Patent 8,453,270 B2
____________

Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and


RICHARD H. MARSCHALL, Administrative Patent Judges.

MARSCHALL, Administrative Patent Judge.

DECISION
Instituting Inter Partes Review
37 C.F.R. 42.108
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I. INTRODUCTION
Ventex Co., Ltd. (Petitioner) filed a Petition for inter partes review
of claims 1, 2, 7, and 17 of U.S. Patent No. 8,453,270 B2 (Ex. 1001, the
270 patent). Paper 1 (Pet.), 1. Columbia Sportswear North America,
Inc. (Patent Owner) filed a Preliminary Response. Papers 9, 10 (Prelim.
Resp.). 1 Institution of an inter partes review is authorized by statute only
when the information presented in the petition . . . and any response . . .
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. 35 U.S.C.
314(a); see 37 C.F.R. 42.108. For the reasons set forth below, we
conclude that the information presented in the Petition establishes a
reasonable likelihood that Petitioner will prevail in showing the
unpatentability of claims 1, 2, 7, and 17. Accordingly, we institute an inter
partes review as to those claims.

A. Related Matters
Petitioner and Patent Owner identify the following district court
proceeding as a related matter: Columbia Sportswear North America, Inc. v.
Seirus Innovative Accessories, No. 3:15-cv-00064-HZ (D. Or.) (the district
court litigation). Pet. 5; Paper 3, 2. Petitioner and Patent Owner also
identify Ventex Co., Ltd. V. Columbia Sportswear North America, Inc.,
IPR2017-00651 as a related matter because it involves a patent closely
related to the 270 patent, U.S. Patent No. 8,424,119 B2. Pet. 4; Paper 3, 2.
Petitioner also asserts that certain proceedings before the Korean Intellectual

1
Paper 9 is a version of the Preliminary Response that has been filed under
seal. Paper 10 is a public, redacted version.
2
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Property Trial and Appeal Board and the Supreme Court of Korea are
related matters because they involve a Korean patent related to the 270
patent. See Pet. 5; Exs. 1012, 1013.

B. The 270 Patent


The 270 patent discloses fabrics used for body gear. Ex. 1001,
1:2223. According to the Background section of the 270 patent, current
products employing heat reflective materials such as aluminum and mylar
typically take the form of a unitary solid film that is glued or otherwise
attached to the interior of a garment, such as a jacket. Id. at 1:3235.
These linings reflect body heat toward the wearer and keep the wearer warm
in colder conditions, but trap moisture near the body[,] . . . causing
discomfort and accelerating heat loss. Id. at 1:3545.
The disclosed invention utilize[s] an array of heat managing
elements coupled to a base material to direct body heat while also
maintaining the desired transfer properties of the base material. Ex. 1001,
Abstract. The heat management elements reflect or conduct heat, and
may be directed towards the body of a user or away from the body of the
user. Id. Applying a number of heat management elements to a base fabric
in a non-continuous array exposes the fabric between adjacent heat
management elements. Id. at 3:3337. Covering a sufficient surface area of
the base fabric with heat management elements can ensure sufficient heat
management while also leaving sufficient surface area of the base fabric
exposed to promote fabric functionality such as breathability, drape, etc. Id.
at 3:4148.

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Figure 1A of the 270 patent is reproduced below:

Figure 1A shows a number of heat management elements 10 disposed on


base fabric 20 in a non-continuous array. Id. at 3:3235. Figure 1A shows
the array disposed on the inside of a coat, while other figures show the array
disposed on shoes, gloves, hats, and pants. See id. Figs. 1A, 912.

C. Claims
Of the challenged claims, claims 1 and 17 are independent. Claim 1 is
illustrative and is reproduced below:
1. A heat management material adapted for use with body
gear, comprising:
a base material having a transfer property that is adapted to allow,
impede, and/or restrict passage of a natural element through
the base material; and
a discontinuous array of discrete heat-directing elements, each
independently coupled to a first side of a base material, the
heat directing elements being positioned to direct heat in a
desired direction, wherein a surface area ratio of heat-
directing elements to base material is from about 7:3 to about

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3:7, and wherein the placement and spacing of the heat-


directing elements permits the base material to retain partial
performance of the transfer property.
Ex. 1001, 8:821.
D. The Prior Art
Petitioner relies on the following prior art references:

Reference Date Exhibit No.

U.K. Patent App. No. GB 2,073,613


Oct. 21, 1981 1003
(Fottinger I)

U.S. Patent Pub. No. 2006/0179539 A1


Aug. 17, 2006 1004
(Harber)

E. Asserted Grounds of Unpatentability


Petitioner challenges claims 1, 2, 7, 17 based on the following
grounds (Pet. 6, 21):

Ground Reference(s) Basis Challenged Claims


No.

1 Fottinger I 103 1, 2, 7, and 17

2 Fottinger I and Harber 103 2

II. ANALYSIS
A. Statutory Bar
As an initial matter, we consider Patent Owners argument that we
reject the Petition because Petitioner is statutorily barred from bringing this
inter partes review. Prelim. Resp. 4345. The parties sought and obtained
permission to file additional briefs on this issue. See Paper 13, 4

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(authorizing reply and sur-reply limited to statutory bar issue); Paper 15


(Petitioners Reply); Paper 16 (Patent Owners Sur-Reply).
An inter partes review may not be instituted if the petition requesting
the proceeding is filed more than 1 year after the date on which the
petitioner, real party in interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent. 35 U.S.C. 315(b). Patent
Owner contends that 315(b) bars this action because Petitioner is in privity
with Seirus Innovative Accessories, Inc. (Seirus), a party to the district
court litigation that could not bring this action due to the one-year time bar
of 315(b). Prelim. Resp. 43. Patent Owner contends that Seirus and
Petitioner appear to be collaborating because both parties have sought to
protect or assert the rights of the other party. Id. at 44. Those rights relate
to the protective order in place in the district court litigation and this action.
Id. at 4445. Patent Owner also argues that Petitioner is barred from
pursuing this action if it had the opportunity to offer proofs and argument in
the district court litigation, but does not argue that Petitioner actually did
have the opportunity to offer proofs and argument. Paper 16, 13. Instead,
Patent Owner contends that Petitioner failed to produce documents related to
its indemnity obligation that might bear on the issue. Id. at 23.
Petitioner contends that nothing in the record suggests that Petitioner
has enjoyed its day in court by way of the [district court] litigation. Paper
15, 2. Petitioner also argues that the indemnity provision amounts to a
boilerplate supplier agreement, and that indemnification obligations alone do
not establish privity. Id. Further, Petitioner contends that any
collaboration merely relates to the parties efforts to ensure Columbias
protective order compliance. Id. at 3.

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We agree with Petitioner that Patent Owner has not established, on the
current record, that Seirus and Petitioner are in privity with one another
under 315(b). The mere existence of an indemnity obligation, standing
alone, does not establish privity or that Petitioner had the ability to present
arguments and evidence in the district court litigation, a point implicitly
acknowledged by Patent Owner. See Paper 16, 13. Moreover, we are not
persuaded that asserting rights to ensure compliance with protective orders
establishes that Petitioner and Seirus are in privity with one another.
Accordingly, we decline Patent Owners request to deny the Petition due to a
statutory bar under 315(b). We do not reach Patent Owners requests for
discovery at this time. Patent Owner may seek such discovery during the
trial phase.

B. Person of Ordinary Skill in the Art


Petitioner contends that a person of ordinary skill in the art would
have a four-year degree in textile engineering, mechanical engineering, or a
related field of study. Pet. 12. Alternatively, according to Petitioner, one
of ordinary skill in the art would have either a Masters degree, or at least
two years [of] experience in textile engineering, textile technology, or
mechanical engineering. Id. Patent Owner does not address this issue in
the Preliminary Response.
For purposes of this decision, we adopt Petitioners proposed level of
ordinary skill in the art. We interpret Petitioners proposed level of ordinary
skill in the art as including those with (1) a Bachelors or Masters degree in
textile engineering, mechanical engineering, or a related field of study; or
(2) at least two years of experience in textile engineering, textile technology,
or mechanical engineering. Additionally, we note that the prior art of record

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in this proceedingnamely, Fottinger I and Harberis indicative of the


level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995).
C. Claim Construction
In an inter partes review, a claim in an unexpired patent shall be given
its broadest reasonable construction in light of the specification of the patent
in which it appears. 37 C.F.R. 42.100(b); Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 214446 (2016) (upholding the use of the broadest
reasonable interpretation standard). Consistent with the broadest reasonable
construction, claim terms are presumed to have their ordinary and customary
meaning as understood by a person of ordinary skill in the art in the context
of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Petitioner proposes constructions for heat-directing elements
(claim 1) and heat-reflective elements (claim 17). Petitioner notes that in
the district court litigation, the district court construed heat-directing
elements as elements that alter the direction of heat. Pet. 13. Petitioner
asserts that at a minimum, we should construe the term to encompass the
same thing, which the Petitioner contends encompass[es] materials that
reflect or conduct heat. Id. Petitioner cites to portions of the specification
that mention certain materials as heat directing as support for its use of the
term materials in the construction. For heat-reflective elements in claim
17, Petitioner similarly proposes a construction of materials that reflect
heat. Id. at 14.

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Patent Owner argues that we should construe heat-directing


elements as elements that direct heat. Prelim. Resp. 20, 28. Patent
Owner further argues that Petitioners construction cannot be correct
because Petitioners use of the term materials in the construction conflicts
with the plain and ordinary meaning of the term elements and lacks
support in the specification and file history. Id. at 2127.
Based on the current record, we agree with Patent Owner that the
appropriate construction of the limitation heat-directing elements is
elements that direct heat. We see no need, based on the current record, to
construe further the term elements in the manner suggested by Petitioner
or Patent Owner. See Pet. 13 (construing elements as materials);
Prelim. Resp. 22 (construing elements as connot[ing] irreducible
simplicity (emphasis removed)). Similarly, we construe heat-reflective
elements in claim 17 as elements that reflect heat.

D. Ground 1 Obviousness Based on Fottinger I


Petitioner alleges claims 1, 2, 7, and 17 are unpatentable based on
Fottinger I under 35 U.S.C. 103(a). Pet. 2144.
1. Principles of Law
A claim is unpatentable under 35 U.S.C. 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level

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of skill in the art; and (4) where in evidence, so-called secondary


considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17
18 (1966). We analyze this ground based on obviousness in accordance with
the above-stated principles.
2. Overview of Fottinger I
Fottinger I discloses a textile sheet with a discontinuous coating
comprising a binder and metal powder. Ex. 1003, (57). The coating covers
5-40% of the surface area of the fabric. Id. According to Fottinger I, [b]y
ensuring that the individual coated areas are mutually separated, it appears
that the porosity/breathing and draping properties of the fabric need not be
substantially impaired with respect to the uncoated sheet. Id. at 1:6165.
Fottinger I refers to the coating as a binder dispersion comprising fine
metal particles. Id. at 2:89. The dispersion has a maximum solids
content of 50% by weight and it should not comprise more than 10 to 50%
by weight, based on the weight of the solids, of a metal powder. Id.
at 2:1014. The coated fabric does not transmit heat but instead heat is
reflected by a sheet of the invention. Id. at 2:6873.
Fottinger I discloses use of the invention as interlinings and as lining
fabrics for articles of clothing. Id. at 2:4850. The products may also be
used as outer fabrics for articles of clothing, in which case the coated face
will be on the inside of the article. Id. at 2:5052.
3. Discussion
a. Claim 1
With respect to claim 1, Petitioner relies on Fottinger Is disclosure
and the expert declaration of Dr. David Brookstein in support of its
allegation that Fottinger I renders claim 1 obvious. See Pet. 2138; Ex. 1017

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(Brookstein Declaration), 4771. For example, with respect to the


preamble, Petitioner asserts that Fottinger I discloses heat management
materials comprised of textile sheets, [Ex. 1003], 1:59, containing the
heat-directing material in the form of individual . . . areas of discontinuous
coating, id., 1:5465, created by using a binder and metal powder
dispersion, id., 2:715, which allows for maintenance of . . . temperature
differences while maintaining air permeability, id., 2:6876, 1:6165.
Pet. 22. With respect to the first limitation of claim 1 requiring a base
material having a transfer property, Petitioner argues that Fottinger I
discloses a base material that allows moisture to pass through its uncoated
areas. Id. at 23. With respect to the last limitation of claim 1wherein the
placement and spacing of the heat-directing elements permits the base
material to retain partial performance of the transfer propertyPetitioner
relies on Fottinger Is disclosure of the breathability of the fabric with the
coating due to the open areas in the discontinuous coating. Id. at 3738.
Patent Owner does not address these limitations directly, or argue that
Fottinger I fails to disclose these limitations. Based on our review of the
current record, Petitioner demonstrates sufficiently that Fottinger I discloses
these limitations.
With respect to the limitations requiring a discontinuous array of
heat-directing elements and heat-directing elements being positioned to
direct heat in a desired direction, Petitioner argues that Fottinger I discloses
a discontinuous coating containing a dispersion of metal particles in a binder
that meets these limitations. Pet. 2331. More specifically, Petitioner
argues that Fottinger Is coating reflects heat back toward the body of the
wearer. See id. at 24, 2930 (relying on Brookstein Decl. 5254, 6061).

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Petitioner also asserts that even using a coating with only 8.4% metal solids
in Fottinger Is Example will allow the coating to reflect heat. Patent Owner
argues that Fottinger Is binder alone does not direct heat, and even the
coating that includes metal particles does not direct heat. Prelim. Resp. 30
31, 3438. Patent Owner focuses on Fottinger Is Example, and the
inclusion of relatively small percentages of metal in the coating rather than
Fottinger Is maximum of 50% metal solids. See id. at 3436; Ex. 1003,
2:1115.
Based on our review of the current record, Petitioner demonstrates
sufficiently that Fottinger I discloses a coating that reflects heat. Fottinger I
itself indicates that radiated heat . . . is reflected by a sheet of the
invention. Ex. 1003, 2:7173. The parties dispute whether Fottinger Is
specific Example discloses a coating that reflects heat, but we need not rely
on that Example at this time given Fottinger Is express disclosure of a
coating that reflects heat.2
The parties also dispute whether Fottinger I discloses or renders
obvious the limitation requiring a surface area ratio of heat-directing
elements to base material is from about 7:3 to about 3:7. Pet. 3137;

2
The parties also dispute whether we should consider another Fottinger prior
art reference, Fottinger II, in considering what Fottinger I discloses. See
Pet. 5152; Prelim. Resp. 4143; Ex. 1033 (U.S. Patent No. 4,316,931
(Fottinger II)). Patent Owner argues that we should not even consider
Fottinger II because Petitioners Grounds only rely on Fottinger I and
Harber. See Prelim. Resp. 4143. Although we need not resolve any issues
related to Fottinger II at this time, we disagree with Patent Owners assertion
that we cannot consider Fottinger II when determining how one of ordinary
skill in the art would interpret Fottinger I. The parties may continue to
address the relevance of Fottinger II during the trial phase.
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Prelim. Resp. 3233. According to the specification, these claimed ratios


equate to coverage of about 30% to about 70% by area. Ex. 1001, 5:5560.
This dispute turns on whether Fottinger Is entire coating, including binder
and metal particles, constitutes a heat-directing element or whether the metal
particles alone constitute the heat-directing element. Petitioner contends that
Fottinger Is discontinuous coating constitutes heat-directing elements, and
Fottinger I discloses a surface area coverage of 540% that overlaps with,
and, thus, satisfies, the claimed range of 3070%. See Pet. 2627, 3134.
Patent Owner argues that Fottinger Is binder mixed with metal particles is
not an element because the term element connotes irreducible
simplicity and only the binder and metal particles within Fottinger Is
coating, standing alone rather than mixed together, meet that definition.
Prelim. Resp. 31 (emphasis removed). Patent Owner then asserts that
Petitioner failed to establish that the metal particles alone cover 3070% of
the surface area of the fabric. See id. at 3233. Patent Owner does not
contend that Fottinger I fails to disclose the limitation or address Petitioners
obviousness analysis based on the overlapping ranges in the event that the
entire coating constitutes the claimed element. See id.
Based on the current record, Petitioner demonstrates sufficiently that
Fottinger I discloses this limitation and that one of ordinary skill in the art
would have coated 3040% of a fabric with Fottinger Is coating, which falls
within the claimed range. See Pet. 3134 (citing Brookstein Decl. 62
65). As noted above, we do not adopt Patent Owners suggested
interpretation of element as something that connotes irreducible
simplicity and therefore requires us to view only the components of
Fottinger Is dispersion as elements. Rather, each individual coated area

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of Fottinger Is discontinuous coating discloses an element that directs


heat. Although the specification of the 270 patent does not directly address
dispersions such as Fottinger Is coating, the specification does indicate that
materials including both reflective and non-reflective components are
properly viewed as heat-directing elements. See Ex. 1001, 4:4451
(including metallic plastic and mylar, each of which contain non-reflective
plastic, in list of heat-directing elements).
Based on the foregoing, on the present record, we are satisfied that
Petitioner demonstrates sufficiently a reasonable likelihood that it would
prevail in its challenge that claim 1 would have been obvious under 35
U.S.C. 103 in view of Fottinger I.
b. Claim 2
Claim 2 depends from claim 1 and further requires a base layer with
an innermost layer having an innermost surface and heat-directing elements
. . . positioned on the innermost surface to direct heat towards the body of a
body gear user. Ex. 1001, 8:2226. Petitioner contends that Fottinger I
discloses this limitation because it discloses coating at least one face of the
base fabric and notes that the fabric can be used as interlinings and as lining
fabrics for articles of clothing of the garment. Pet. 38 (citing Ex. 1001,
1:54, 1:55, 1:6162, 2:4852). Petitioner asserts that one of ordinary skill in
the art would regard Fottinger Is disclosure of lining[s] as the innermost
layer of an article of clothing, and that a skilled artisan would have
recognized that coating the innermost surface of that layer is one of a limited
number of known options for such placement. See id. at 3940. In support
of that position, Petitioner also cites to the testimony of its declarant, Dr.
Brookstein, who testifies that coating that surface would be the most

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efficient way to direct body heat back to the user. See id. (citing
Brookstein Decl. 7273). Patent Owner generally disagrees with
Petitioner, arguing that each of Fottinger I and Harber fails to disclose the
limitation or render it obvious. Prelim. Resp. 3840. In support of its view,
Patent Owner relies on its own declarant, Dr. Cole, who discounts the
teachings of the prior art as to placement options of the coated surface. Id.
(citing Ex. 2005 4748).
We are cognizant the conflicting testimony of Dr. Brookstein and Dr.
Cole, which brings issues of material fact into dispute. Based on the current
record, however, we are persuaded that Petitioners view, as supported by
Dr. Brookstein, in connection what a person of ordinary skill in the art
would understand from Fottinger Is teachings, is reasonable. In particular,
at this time, we are satisfied that Petitioner demonstrates sufficiently that,
given Fottinger Is disclosure of coating at least one face of fabric, including
the lining facing the wearer, that it would have been obvious to one of
ordinary skill in the art to coat the innermost surface of the innermost layer
in order to reflect heat back to the user.3 Accordingly, on the present record,
we are satisfied that Petitioner sufficiently demonstrates a reasonable

3
Although not a focus in the Petition, Petitioner also cites to a portion of
Fottinger I that discloses the use of the coating on outer fabrics for articles
of clothing, in which case the coated face will be on the inside of the
article. See Ex. 1003, 2:4852; Pet. 22, 38 (citing Ex. 1003, 2:4852). We
interpret that passage as expressly disclosing application of Fottinger Is
coating on the exterior of a clothing (i.e., not on the interior of the clothing,
unexposed to the wearer or the elements), and facing the user. This
interpretation would appear to disclose the requirements of claim 2 because
the coating would be on the innermost surface of the innermost layer of the
garment. The parties may address this passage further during trial.
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likelihood that it would prevail in its challenge that claim 2 would have been
obvious under 35 U.S.C. 103 in view of Fottinger I.
c. Claims 7 and 17
Claim 7 depends from claim 1 and further requires a surface area
ratio of heat-directing elements to base material is from about 3:2 to about
2:3. Ex. 1001, 8:3739. According to the specification, this claimed ratio
amounts to coverage of about 40% to about 60% by area. Ex. 1001, 5:60
65. Similar to claim 1, Petitioner asserts that Fottinger Is disclosure of an
overlapping range (540%) discloses a portion of the claimed range and at a
minimum renders the claim obvious. See Pet. 4041. Patent Owner does
not address claim 7 directly. Based on our review of the present record,
Petitioner demonstrates a reasonable likelihood of success in showing that
claim 7 would have been obvious in view of Fottinger I.
Independent claim 17 contains limitations similar to those of claim 1,
although claim 17 requires heat-reflective elements rather than heat-
directing elements. See Ex. 1001, 8:669:11. Petitioner relies on evidence
and arguments made in connection with claim 1 in its challenge to claim 17.
See Pet. 4244. Patent Owner does not address claim 17 directly, although
we understand Patent Owners arguments with respect to claim 1 to apply to
similar limitations in claim 17. For the same reasons discussed above with
respect to claim 1, based on our review of the present record, Petitioner
demonstrates a reasonable likelihood of success in showing that claim 17
would have been obvious in view of Fottinger I.

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E. Ground 2 Obviousness Based on Fottinger I and Harber


With respect to Ground 2, Petitioner alleges obviousness of claim 2
based on Fottinger I and Harber. Pet. 4448.
1. Overview of Harber
Harber discloses garments that include targeted vent or heat retention
zones including openings or heat retention areas in the fabric. Harber,
Abstract. The location and size of the openings or insulation areas may be
derived from thermal profiles of the wearer of the garments. Id.
The insulation designed for heat retention areas may be provided by
adding an additional layer of material over the base layer of material in the
fabric. Id. at 80. The insulating material can be made from the same
material as the base layer or a heat-reflective material. Id. When provided
as an additional layer, the additional layer of material may be provided on
the inside of the garment structure and/or on the outside of the garment
structure. Id.
2. Discussion
Petitioner argues that even if Fottinger I fails to render claim 2
obvious, claim 2 would have been obvious based on the combination of
Fottinger I and Harber. See Pet. 4448. More specifically, Petitioner
contends that Harber discloses three potential surfaces to place its heat-
retention material, including the on the inside of the garment structure
and/or the outside of the garment structure. Id. at 45 (emphasis removed)
(quoting Harber 80). Petitioner asserts that placing Fottinger Is coating
on the innermost surface of the innermost layer would have been obvious
based on the finite number of options Harber discloses and the
understanding that placing the coating on that surface would most efficiently

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direct heat back to the user. Id. at 47. Patent Owner argues that Harber fails
to disclose the coating location required by claim 2. Prelim. Resp. 4041.
Based on the current record, Petitioner demonstrates sufficiently that
the combination of Fottinger I and Harber discloses all of the limitations of
claim 2 and Petitioner provided an adequate rationale for the proposed
modification, namely, that one of ordinary skill in the art would have been
motivated to apply the coating to the innermost surface to direct heat most
efficiently back to the user.
Based on the foregoing, the explanations and supporting evidence
presented by Petitioner sufficiently demonstrate that claim 2 is unpatentable
over Fottinger I and Harber. Accordingly, we conclude that inter partes
review of claim 2 as challenged by Petitioner is warranted.

III. CONCLUSION
Having evaluated the Petition, its underlying supporting evidence, and
Patent Owners Preliminary Response, we determine that Petitioner has
shown a reasonable likelihood of success in its challenge to claims 1, 2, 7,
and 17 as set forth in the Petition and discussed above.
At this stage of the proceeding, the Board has not made a final
determination as to the construction of any claim term or the patentability of
claims 1, 2, 7 and 17 of the 270 patent.

IV. ORDER
It is ORDERED that, pursuant to 35 U.S.C. 314(a), an inter partes
review is hereby instituted to determine whether claims 1, 2, 7, and 17 are
unpatentable based on the statutory grounds of obviousness under 35 U.S.C.
103 as asserted in the Petition and identified in section I.E. above;

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FURTHER ORDERED that inter partes review is not instituted in this


proceeding on any other grounds; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial. The trial
will commence on the entry date of this decision.

For PETITIONER:
David A. Garr
dgarr@cov.com

Andrea G. Reister
areister@cov.com

For PATENT OWNER:


Steven J. Prewitt
sprewitt@schwabe.com

Brenna K. Legaard
blegarrd@schwabe.com

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EXHIBIT B
Case 3:15-cv-00064-HZ Document 175-2 Filed 07/27/17 Page 2 of 22

Trials@uspto.gov Paper: 17
571-272-7822 Entered: July 26, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE


____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD


____________

VENTEX CO., LTD.,


Petitioner,

v.

COLUMBIA SPORTSWEAR NORTH AMERICA, INC.,


Patent Owner.
____________

Case IPR2017-00651
Patent 8,424,119 B2
____________

Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and


RICHARD H. MARSCHALL, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION
Instituting Inter Partes Review
37 C.F.R. 42.108
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I. INTRODUCTION
Ventex Co., Ltd. (Petitioner) filed a Petition for inter partes review
of claims 1, 2, 8, 15, 16, and 20 of U.S. Patent No. 8,424,119 B2 (Ex. 1001,
the 119 patent). Paper 1 (Pet.). Columbia Sportswear North America,
Inc. (Patent Owner) filed a Preliminary Response. Papers 9, 10 (Prelim.
Resp.). 1
Institution of an inter partes review is authorized by statute only when
the information presented in the petition . . . and any response . . . 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. 35 U.S.C.
314(a); see 37 C.F.R. 42.108. For the reasons set forth below, we
conclude that the information presented in the Petition establishes a
reasonable likelihood that Petitioner will prevail in showing the
unpatentability of claims 1, 2, 8, 15, 16, and 20. Accordingly, we institute
an inter partes review as to those claims.

A. Related Matters
Petitioner and Patent Owner identify the following district court
proceeding as a related matter: Columbia Sportswear North America, Inc. v.
Seirus Innovative Accessories, No. 3:15-cv-00064-HZ (D. Or.) (the district
court litigation). Pet. 5; Paper 3, 2. Petitioner and Patent Owner also
identify Ventex Co., Ltd. V. Columbia Sportswear North America, Inc.,
IPR2017-00789 as a related matter because it involves a patent closely
related to the 119 patent, U.S. Patent No. 8,453,270 B2. Pet. 4; Paper 3, 2.

1
Paper 9 is a version of the Preliminary Response that has been filed under
seal. Paper 10 is a public, redacted version.
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Petitioner also asserts that certain proceedings before the Korean Intellectual
Property Trial and Appeal Board and the Supreme Court of Korea are
related matters because they involve a Korean patent related to the
119 patent. See Pet. 45.

B. The 119 Patent


The 119 patent discloses fabrics used for body gear. Ex. 1001,
1:2527. According to the Background section of the 119 patent, current
products employing heat reflective materials such as aluminum and mylar
typically take the form of a unitary solid film that is glued or otherwise
attached to the interior of a garment, such as a jacket. Id. at 1:3538.
These linings reflect body heat toward the wearer and keep the wearer warm
in colder conditions, but trap moisture near the body[,] . . . causing
discomfort and accelerating heat loss. Id. at 1:4051.
The disclosed invention utilize[s] an array of heat managing
elements coupled to a base material to direct body heat while also
maintaining the desired transfer properties of the base material. Ex. 1001,
Abstract. The heat management elements reflect or conduct heat, and
may be directed towards the body of a user or away from the body of the
user. Id. Applying a number of heat management elements to a base fabric
in a non-continuous array exposes the fabric between adjacent heat
management elements. Id. at 3:3439. Covering a sufficient surface area of
the base fabric with heat management elements can ensure sufficient heat
management while also leaving sufficient surface area of the base fabric
exposed to promote fabric functionality such as breathability, drape, etc. Id.
at 3:4350.

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Figure 1A of the 119 patent is reproduced below:

Figure 1A shows a number of heat management elements 10 disposed


on base fabric 20 in a non-continuous array. Id. at 3:3436. Figure 1A
shows the array disposed on the inside of a coat, while other figures show
the array disposed on shoes, gloves, hats, and pants. See id. Figs. 1A, 912.

C. Claims
Of the challenged claims, claims 1, 15, and 20 are independent.
Claim 1 is illustrative and is reproduced below:
1. A heat management material adapted for use with body
gear, comprising:
a base material having a transfer property that is adapted to allow,
impede, and/or restrict passage of a natural element through
the base material; and
one or more heat-directing elements, each coupled to a first side
of a base material, the one or more heat-directing elements
being positioned to direct heat in a desired direction, wherein
a surface area ratio of heat-directing elements to base material
is from about 7:3 to about 3:7, and wherein the surface area

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ratio of heat-directing elements to base material permits the


base material to retain partial performance of the transfer
property.
Ex. 1001, 8:1022.
D. The Prior Art
Petitioner relies on the following prior art references:

Reference Date Exhibit No.

U.K. Patent App. No. GB 2,073,613


Oct. 21, 1981 1003
(Fottinger I)

U.S. Patent Pub. No. 2006/0179539 A1


Aug. 17, 2006 1004
(Harber)

E. Asserted Grounds of Unpatentability


Petitioner challenges claims 1, 2, 8, 15, 16, and 20 based on the
following grounds:

Ground Reference(s) Basis Challenged Claims


No.

1 Fottinger I 103 1, 2, 8, 15, 16, and 20

2 Fottinger I and Harber 103 2

II. ANALYSIS

A. Statutory Bar
As an initial matter, we consider Patent Owners argument that we
reject the Petition because Petitioner is statutorily barred from bringing this
inter partes review. Prelim. Resp. 4446. The parties sought and obtained

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permission to file additional briefs on this issue. See Paper 13, 4


(authorizing reply and sur-reply limited to statutory bar issue); Paper 15
(Petitioners Reply); Paper 16 (Patent Owners Sur-Reply).
An inter partes review may not be instituted if the petition requesting
the proceeding is filed more than 1 year after the date on which the
petitioner, real party in interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent. 35 U.S.C. 315(b). Patent
Owner contends that 315(b) bars this action because Petitioner is in privity
with Seirus Innovative Accessories, Inc. (Seirus), a party to the district
court litigation that could not bring this action due to the one-year time bar
of 315(b). Prelim. Resp. 44. Patent Owner contends that Seirus and
Petitioner appear to be collaborating because both parties have sought to
protect or assert the rights of the other party. Id. at 45. Those rights relate
to the protective order in place in the district court litigation and this action.
Id. at 4546. Patent Owner also argues that Petitioner is barred from
pursuing this action if it had the opportunity to offer proofs and argument in
the district court litigation, but does not argue that Petitioner actually did
have the opportunity to offer proofs and argument. Paper 16, 13. Instead,
Patent Owner contends that Petitioner failed to produce documents related to
its indemnity obligation that might bear on the issue. Id. at 23.
Petitioner contends that nothing in the record suggests that Petitioner
has enjoyed its day in court by way of the [district court] litigation. Paper
15, 2. Petitioner also argues that the indemnity provision amounts to a
boilerplate supplier agreement, and that indemnification obligations alone do
not establish privity. Id. Further, Petitioner contends that any

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collaboration merely relates to the parties efforts to ensure Columbias


protective order compliance. Id. at 3.
We agree with Petitioner that Patent Owner has not established, on the
current record, that Seirus and Petitioner are in privity with one another
under 315(b). The mere existence of an indemnity obligation, standing
alone, does not establish privity or that Petitioner had the ability to present
arguments and evidence in the district court litigation, a point implicitly
acknowledged by Patent Owner. See Paper 16, 13. Moreover, we are not
persuaded that asserting rights to ensure compliance with protective orders
establishes that Petitioner and Seirus are in privity with one another.
Accordingly, we decline Patent Owners request to deny the Petition due to a
statutory bar under 315(b). We do not reach Patent Owners requests for
discovery at this time. Patent Owner may seek such discovery during the
trial phase.

B. Person of Ordinary Skill in the Art


Petitioner contends that a person of ordinary skill in the art would
have a four-year degree in textile engineering, mechanical engineering, or a
related field of study. Pet. 1314. Alternatively, according to Petitioner,
one of ordinary skill in the art would have either a Masters degree, or at
least two years [of] experience in textile engineering, textile technology, or
mechanical engineering. Id. Patent Owner does not address this issue in
the Preliminary Response.
For purposes of this decision, we adopt Petitioners proposed level of
ordinary skill in the art. We interpret Petitioners proposed level of ordinary
skill in the art as including those with: (1) a Bachelors or Masters degree in
textile engineering, mechanical engineering, or a related field of study; or

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(2) at least two years of experience in textile engineering, textile technology,


or mechanical engineering. Additionally, we note that the prior art of record
in this proceedingnamely, Fottinger I and Harberis indicative of the
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995).

C. Claim Construction
In an inter partes review, a claim in an unexpired patent shall be given
its broadest reasonable construction in light of the specification of the patent
in which it appears. 37 C.F.R. 42.100(b); Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 214446 (2016) (upholding the use of the broadest
reasonable interpretation standard). Consistent with the broadest reasonable
construction, claim terms are presumed to have their ordinary and customary
meaning as understood by a person of ordinary skill in the art in the context
of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Petitioner proposes constructions for heat-directing elements
(claims 1, 2, 8, 15, 16, and 20) and heat-reflective elements (claim 20).
Petitioner notes that in the district court litigation, the district court
construed heat-directing elements as elements that alter the direction of
heat. Pet. 1415. Petitioner asserts that at a minimum, we should
construe the term to encompass the same thing, which the Petitioner
contends encompass[es] materials that reflect or conduct heat. Id.
Petitioner cites to portions of the specification that mention certain materials
as heat directing as support for its use of the term materials in the

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construction. For heat-reflective elements in claim 20, Petitioner similarly


proposes a construction of materials that reflect heat. Id. at 1516.
Patent Owner argues that we should construe heat-directing
elements as elements that direct heat. Prelim. Resp. 20, 29. Patent
Owner further argues that Petitioners construction cannot be correct
because Petitioners use of the term materials in the construction conflicts
with the plain and ordinary meaning of the term elements and lacks
support in the specification and file history. Id. at 2128.
Based on the current record, we agree with Patent Owner that the
broadest reasonable interpretation of the limitation heat-directing elements
is elements that direct heat. We see no need, based on the current record,
to construe further the term elements in the manner suggested by
Petitioner or Patent Owner. See Pet. 15 (construing elements as
materials); Prelim. Resp. 22 (construing elements as connot[ing]
irreducible simplicity (emphasis removed)). Similarly, we construe heat-
reflective elements in claim 20 as elements that reflect heat.

D. Ground 1 Obviousness Based on Fottinger I


Petitioner alleges claims 1, 2, 8, 15, 16, and 20 are unpatentable based
on Fottinger I under 35 U.S.C. 103(a). Pet. 2450.

1. Principles of Law
A claim is unpatentable under 35 U.S.C. 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual

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determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17
18 (1966). We analyze this ground based on obviousness in accordance with
the above-stated principles.

2. Overview of Fottinger I
Fottinger I discloses a textile sheet with a discontinuous coating
comprising a binder and metal powder. Ex. 1003, (57). The coating covers
540% of the surface area of the fabric. Id. According to Fottinger I, [b]y
ensuring that the individual coated areas are mutually separated, it appears
that the porosity/breathing and draping properties of the fabric need not be
substantially impaired with respect to the uncoated sheet. Id. at 1:6165.
Fottinger I refers to the coating as a binder dispersion comprising fine
metal particles. Id. at 2:89. The dispersion has a maximum solids
content of 50% by weight and it should not comprise more than 10 to 50%
by weight, based on the weight of the solids, of a metal powder. Id.
at 2:1014. The coated fabric does not transmit heat but instead heat is
reflected by a sheet of the invention. Id. at 2:6873.
Fottinger I discloses use of the invention as interlinings and as lining
fabrics for articles of clothing. Id. at 2:4850. The products may also be
used as outer fabrics for articles of clothing, in which case the coated face
will be on the inside of the article. Id. at 2:5052.

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3. Discussion Fottinger I
a. Claim 1
With respect to claim 1, Petitioner relies on Fottinger Is disclosure
and the expert declaration of Dr. David Brookstein in support of its
allegation that Fottinger I renders claim 1 obvious. See Pet. 2440; Ex. 1017
(Brookstein Declaration), 4771. For example, with respect to the
preamble, Petitioner asserts that Fottinger I discloses heat management
materials comprised of textile sheets, [Ex. 1003], 1:59, containing the
heat-directing material in the form of individual . . . areas of discontinuous
coating, id., 1:5465, created by using a binder and metal powder
dispersion, id., 2:715, which allows for maintenance of . . . temperature
differences while maintaining air permeability, id., 2:6876, 1:6165.
Pet. 2425. With respect to the first limitation of claim 1 requiring a base
material having a transfer property, Petitioner argues that Fottinger I
discloses a base material that allows moisture to pass through its uncoated
areas. Id. at 2526. In connection with the last limitation of claim 1
wherein the surface ratio of heat-directing elements to base material
permits the base material to retain partial performance of the transfer
propertyPetitioner relies on Fottinger Is disclosure of the breathability of
the fabric with the coating due to the open areas in the discontinuous
coating. Id. at 3940. Patent Owner does not address these limitations
directly, or argue that Fottinger I fails to disclose these limitations. Based on
our review of the current record, Petitioner demonstrates sufficiently that
Fottinger I discloses these limitations.
With respect to the limitations requiring a one or more heat-directing
elements, each coupled to a first side of a base material and the one or

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more heat-directing elements being positioned to direct heat in a desired


direction, Petitioner argues that Fottinger I discloses a discontinuous
coating containing a dispersion of metal particles in a binder that meets these
limitations. Pet. 2633. More specifically, Petitioner argues that Fottinger
Is coating reflects heat back toward the body of the wearer. See id. at 26
27, 2133 (relying on Brookstein Decl. 5254, 6061). Petitioner also
asserts that even using a coating with only 8.4% metal solids in Fottinger Is
Example will allow the coating to reflect heat. Id. at 30.
Patent Owner argues that Fottinger Is binder alone does not direct
heat, and even the coating that includes metal particles does not direct heat.
Prelim. Resp. 3132, 3539. Patent Owner focuses on Fottinger Is
Example, and the inclusion of relatively small percentages of metal in the
coating rather than Fottinger Is maximum of 50% metal solids. See id.
at 3537; Ex. 1003, 2:1115.
Based on our review of the current record, Petitioner demonstrates
sufficiently that Fottinger I discloses a coating that reflects heat. Fottinger I
itself indicates that radiated heat . . . is reflected by a sheet of the
invention. Ex. 1003, 2:7173. The parties dispute whether Fottinger Is
specific Example discloses a coating that reflects heat, but we need not rely
on that Example at this time given Fottinger Is express disclosure of a
coating that reflects heat.2

2
The parties also dispute whether we should consider another Fottinger prior
art reference, Fottinger II, in considering what Fottinger I discloses. See
Pet. 5758; Prelim. Resp. 4244; Ex. 1033 (U.S. Patent No. 4,316,931
(Fottinger II)). Patent Owner argues that we should not even consider
Fottinger II because Petitioners Grounds only rely on Fottinger I and

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The parties also dispute whether Fottinger I discloses or renders


obvious the limitation requiring a surface area ratio of heat-directing
elements to base material is from about 7:3 to about 3:7. Pet. 3339;
Prelim. Resp. 3339. According to the Specification of the 119 patent,
these claimed ratios equate to coverage of about 30% to about 70% by area.
Ex. 1001, 5:5762. The dispute turns on whether Fottinger Is entire
coating, including binder and metal particles, constitutes a heat-directing
element or whether the metal particles alone constitute the heat-directing
element. Petitioner contends that Fottinger Is discontinuous coating
constitutes heat-directing elements, and Fottinger I discloses a surface area
coverage of 540% that overlaps with, and thus satisfies, the claimed range
of 3070%. See Pet. 3339. Patent Owner argues that Fottinger Is binder
mixed with metal particles is not an element because the term element
connotes irreducible simplicity and only the binder and metal particles
within Fottinger Is coating, standing alone rather than mixed together, meet
that definition. Prelim. Resp. 3233 (emphasis removed). Patent Owner
then asserts that Petitioner failed to establish that the metal particles alone
cover 3070% of the surface area of the fabric. See id. at 3334. Patent
Owner does not contend that Fottinger I fails to disclose the limitation or
address Petitioners obviousness analysis based on the overlapping ranges in
the event that the entire coating constitutes the claimed element. See id.

Harber. See Prelim. Resp. 4244. Although we need not resolve any issues
related to Fottinger II at this time, we disagree with Patent Owners assertion
that we cannot consider Fottinger II when determining how one of ordinary
skill in the art would interpret Fottinger I. The parties may continue to
address the relevance of Fottinger II during the trial phase.
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Based on the current record, Petitioner demonstrates sufficiently that


Fottinger I discloses this limitation and that one of ordinary skill in the art
would have coated 3040% of a fabric with Fottinger Is coating, which falls
within the claimed range. See Pet. 3336 (citing Brookstein Decl.
6265). As noted above, we do not adopt Patent Owners suggested
interpretation of element as something that connotes irreducible
simplicity and therefore requires us to view only the components of
Fottinger Is dispersion as elements. Rather, each individual coated area
of Fottinger Is discontinuous coating discloses an element that directs
heat. Although the specification of the 119 patent does not directly address
dispersions such as Fottinger Is coating, the specification does indicate that
materials including both reflective and non-reflective components are
properly viewed as heat-directing elements. See Ex. 1001, 4:4654
(including metallic plastic and mylar, each of which contain non-reflective
plastic, in list of heat-directing elements).
Based on the foregoing, on the present record, we are satisfied that
Petitioner demonstrates sufficiently a reasonable likelihood that it would
prevail in its challenge that claim 1 would have been obvious under
35 U.S.C. 103 in view of Fottinger I.
b. Claim 2
Claim 2 depends from claim 1 and further requires a base layer with
an innermost layer having an innermost surface and heat-directing elements
. . . positioned on the innermost surface to direct heat towards the body of a
body gear user. Ex. 1001, 8:2327. Petitioner contends that Fottinger I
discloses this limitation because it discloses coating at least one face of the
base fabric and notes that the fabric can be used as interlinings and as lining

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fabrics for articles of clothing of the garment. Pet. 40 (citing Ex. 1003,
1:54, 1:55, 1:6162, 2:4852). Petitioner asserts that one of ordinary skill in
the art would regard Fottinger Is disclosure of lining[s] as the innermost
layer of an article of clothing, and that a skilled artisan would have
recognized that coating the innermost surface of that layer is one of a limited
number of known options for such placement. See id. at 4142. In support
of that position, Petitioner also cites to the testimony of its declarant, Dr.
Brookstein, who testifies that coating that surface would be the most
efficient way to direct body heat back to the user. See id. (citing
Brookstein Decl. 7273).
Patent Owner generally disagrees with Petitioner, arguing that each of
Fottinger I and Harber fails to disclose the limitation or render it obvious.
Prelim. Resp. 3942. In support of its view, Patent Owner relies on its own
declarant, Dr. Cole, who discounts the teachings of the prior art as to
placement options of the coated surface. Id. (citing Ex. 2005 4748).
We are cognizant of the conflicting testimony of Dr. Brookstein and
Dr. Cole, which brings issues of material fact into dispute. Based on the
current record, however, we are persuaded that Petitioners view, as
supported by Dr. Brookstein, in connection with what a person of ordinary
skill in the art would understand from Fottinger Is teachings, is reasonable.
In particular, at this time, we are satisfied that Petitioner demonstrates
sufficiently that, given Fottinger Is disclosure of coating at least one face of
fabric, including the lining facing the wearer, that it would have been
obvious to one of ordinary skill in the art to coat the innermost surface of the

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innermost layer in order to reflect heat back to the user.3 Accordingly, on


the present record, we are satisfied that Petitioner sufficiently demonstrates a
reasonable likelihood that it would prevail in its challenge that claim 2
would have been obvious under 35 U.S.C. 103 in view of Fottinger I.
c. Claim 8
Claim 8 depends from claim 1 and further requires a surface area
ratio of heat-directing elements to base material is from about 3:2 to
about 2:3. Ex. 1001, 8:4446. According to the Specification of the
119 patent, this claimed ratio amounts to coverage of about 40% to about
60% by area. Ex. 1001, 5:6267. Similar to claim 1, Petitioner asserts that
Fottinger Is disclosure of an overlapping range (540%) discloses a portion
of the claimed range and renders the claim obvious. See Pet. 4244. Patent
Owner does not address claim 8 directly. Based on our review of the present
record, Petitioner demonstrates a reasonable likelihood of success in
contending that claim 8 would have been obvious in view of Fottinger I.
d. Claims 15 and 20
Independent claim 15 is directed to a method of making a heat
management body gear material comprising features corresponding to those

3
Although not a focus in the Petition, Petitioner also cites to a portion of
Fottinger I that discloses the use of the coating on outer fabrics for articles
of clothing, in which case the coated face will be on the inside of the
article. See Pet. 35, 40 (citing Ex. 1003, 2:4852). We interpret that
passage as expressly disclosing application of Fottinger Is coating on the
exterior of a clothing (i.e., not on the interior of the clothing, unexposed to
the wearer or the elements), and facing the user. This interpretation would
appear to disclose the requirements of claim 2 because the coating would be
on the innermost surface of the innermost layer of the garment. The parties
may address this passage further during trial.
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introduced in claim 1. Ex. 1001, 8:669:12. Independent claim 20 is drawn


to a heat management material and contains limitations similar to those of
claim 1, although claim 20 requires heat-reflective elements rather than
heat-directing elements. See Ex. 1001, 10:116. With reference to its
discussion of Fottinger 1 vis--vis claim 1, Petitioner lays out in detail where
it believes all the features of claim 15 and 20 are accounted for by the
teachings of the prior art. Pet. 4450. Patent Owner does not address claims
15 or 20 directly, although we understand Patent Owners arguments with
respect to claim 1 to apply to similar limitations in claims 15 and 20. For the
same reasons discussed above with respect to claim 1, based on our review
of the present record, Petitioner demonstrates a reasonable likelihood of
success in showing that claims 15 and 20 would have been obvious in view
of Fottinger I.
e. Claim 16
Claim 16 depends from claim 15 and adds the features wherein the
base material further provides insulating properties, and wherein the one or
more heat-directing elements reflect heat toward a body of a user.
Ex. 1001, 9:1316. Petitioner points to various portions of Fottinger I as
describing insulating properties of a base material and functionality of heat-
directing elements in reflecting heat toward the body of a user. In particular,
Petitioner relies on content of Fottinger I describing that heat retention
properties of a textile sheet . . . increase with increasing thickness of the
sheet, and that [t]he thickness of the [textile] sheet is usually therefore so
chosen that, at a given temperature, the properties of heat retention and
moisture release are balanced. Pet. 47 (quoting Ex. 1003, 1:2325; 1:27
32. Petitioner also cites to disclosure in Fottinger I describing an

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arrangement of a textile sheet within a jacket to provide a substantially


improved heat insulating effect. Id. at 48 (quoting Ex. 1003, 2:10624)
(emphasis omitted). Lastly, Petitioner makes reference to its discussion in
connection with claim 1 pertaining to the reflection of body heat to a user.
Id. (citing Ex. 1003, 2:6876 and Brookstein Decl. 84.) At this time, we
are persuaded that Petitioner has demonstrated a reasonable likelihood of
success in showing that claim 16 would have been obvious in view of
Fottinger I.

E. Ground 2 Obviousness Based on Fottinger I and Harber


With respect to Ground 2, Petitioner alleges obviousness of claim 2
based on Fottinger I and Harber. Pet. 5054.

1. Overview of Harber
Harber discloses garments that include targeted vent or heat retention
zones including openings or heat retention areas in the fabric. Harber,
Abstract. The location and size of the openings or insulation areas may be
derived from thermal profiles of the wearer of the garments. Id.
The insulation designed for heat retention areas may be provided by
adding an additional layer of material over the base layer of material in the
fabric. Id. at 80. The insulating material can be made from the same
material as the base layer or a heat-reflective material. Id. When provided
as an additional layer, the additional layer of material may be provided on
the inside of the garment structure and/or on the outside of the garment
structure. Id.

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2. Discussion Fottinger I and Harber


Petitioner argues that even if Fottinger I alone fails to render claim 2
obvious, the claim would have been obvious based on the combination of
Fottinger I and Harber. See Pet. 5054. More specifically, Petitioner
contends that Harber discloses three potential locations to place its heat-
retention material, including the on the inside of the garment structure, on
the outside of the garment structure, and/or integrally formed as a part of
the base fabric material structure. Id. at 53 (quoting Harber 80).
Petitioner asserts that placing Fottinger Is coating on the innermost surface
of the innermost layer would have been obvious based on the finite number
of options Harber discloses and the understanding that placing the coating on
that surface would most efficiently direct heat back to the user. Id. at 5354
(citing Brookstein Decl. 73, 9395). Patent Owner generally argues that
Harber fails to disclose the coating location required by claim 2. Prelim.
Resp. 4142.
Based on the current record, Petitioner demonstrates sufficiently that
the combination of Fottinger I and Harber discloses all of the limitations of
claim 2 and has provided an adequate rationale for the proposed
modification. In particular, at this time, we are persuaded that Petitioners
position is reasonable that a skilled artisan would have recognized that
coating the innermost surface is a known location for such coating, and one
that would direct heat most efficiently back to the user.
Based on the foregoing, the explanations and supporting evidence
presented by Petitioner establish a reasonable likelihood that claim 2 is
unpatentable over Fottinger I and Harber. Accordingly, we conclude that
inter partes review of claim 2 as challenged by Petitioner is warranted.

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III. CONCLUSION
Having evaluated the Petition, its underlying supporting evidence, and
Patent Owners Preliminary Response, we determine that Petitioner has
shown a reasonable likelihood of success in its challenge to claims 1, 2, 8,
15, 16, and 20 as set forth in the Petition and discussed above. At this stage
of the proceeding, the Board has not made a final determination as to the
construction of any claim term or the patentability of claims 1, 2, 8, 15, 16,
and 20 of the 119 patent.

IV. ORDER
It is ORDERED that, pursuant to 35 U.S.C. 314(a), an inter partes
review is hereby instituted to determine whether: (1) claims 1, 2, 8, 15, 16,
and 20 are unpatentable as obvious under 35 U.S.C. 103 over Fottinger I;
and (2) claim 2 is unpatentable as obvious under 35 U.S.C. 103 over
Fottinger I and Harber;
FURTHER ORDERED that inter partes review is not instituted in this
proceeding on any other grounds; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial. The trial
will commence on the entry date of this decision.

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For PETITIONER:

David A. Garr
Andrea G. Reister
COVINGTON & BURLING LLP
dgarr@cov.com
areister@cov.com

For PATENT OWNER:

Steven J. Prewitt
Brenna K. Legaard
SCHWABE, WILLIAMSON & WYATT, P.C.
SPrewitt@schwabe.com
BLegarrd@schwabe.com

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