Takeaway: If a petitioner bases its invalidity positions on a claim construction that is not adopted by the Board, then the Board is likely to find that the petitioner did not meet its burden of showing a likelihood of success on unpatentability.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims (claims 1-6) of the ’424 Patent. Therefore, it denied institution of inter partes review.  The ’424 Patent relates to a cohesive product that has one or more layers of a substrate and a synthetic water-based cohesive polymer that is applied to the substrate and defines an outer surface of the product.  Specifically, the invention is directed to cohesive tapes and bandages that are made of a synthetic elastomer rather than a natural rubber latex.

The Board began with claim construction, stating that the claims are construed using the broadest reasonable interpretation. The Board first construed “cohesive,” adopting the definition of cohesive supplied in the Specification and as put forth by Patent Owner, and finding that Petitioner’s proposed construction was too narrow.  The Board then construed “in an amount effective to disrupt the crystalline structure of the elastomer . . . such that the elastomer possesses a cohesive property.”  The Board, again rejecting Petitioner’s construction, found that “amount effective” has a customary meaning and adopted a construction consistent with that meaning.

The Board then analyzed the grounds of unpatentability. First, the Board looked to whether claims 3-6 are anticipated by Coe.  Relying upon its constructions of “cohesive” and “amount effective,” the Board found that Petitioner had not met its burden of showing that Coe discloses a cohesive product or that it discloses tackifier in an amount effective to disrupt the crystalline structure of the elastomer and maintain the elastomer in a partial polycrystalline state such that the elastomer possesses a cohesive property.

Next, the Board turned to whether claims 3 and 4 would have been obvious over WO ’445 and Coe. Again, the Board found that based upon its claim constructions, Petitioner had not met its burden of showing that Coe discloses a cohesive product or that it discloses tackifier in an amount effective to disrupt the crystalline structure of the elastomer and maintain the elastomer in a partial polycrystalline state such that the elastomer possesses a cohesive property.  Further, Petitioner did not show that WO ’445 made these disclosures.

The Board then examined whether claims 3 and 4 would have been obvious over Schäfer and Coe. The Board was not persuaded that a skilled artisan would have modified Schäfer with Coe because Schäfer delineates between the different ways of modifying rubber-based bandages and polymer-based bandages to attain cohesiveness, and Petitioner did not provide evidence that substituting the polychloroprene latex of Coe’s contact adhesive would have been recognized by one of ordinary skill.

The Board then reviewed whether claims 1-4 are anticipated by Carl, Pereira, or EP ’757. Again, the Board found that Petitioner’s arguments were based on its faulty claim construction positions, and Petitioner could not meet its burden of showing that any of these references disclosed the required limitations.

3M Company, Inc. v. Andover Healthcare, Inc., IPR2014-00630
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: October 20, 2014
Patent: 6,156,424
Before: Christopher L. Crumbley, Kristina M. Kalan, and Brian P. Murphy
Written by: Kalan
Related Proceeding: Andover Healthcare, Inc. v. 3M Company, No. 1:13-cv-00843-LPS (D. Del.)