Patent on diapers narrowly misses the trash bin. FIRST QUALITY v. KIMBERLY CLARK

A patent grants its owner the exclusive right to make, use, sell and import the invention claimed in the patent. A patent is granted to the inventor of a new, useful and not obvious invention. To be granted a patent in the United States an inventor must submit a patent application to United States Patent and Trademark Office. The patent application will be reviewed by an examining attorney at the United States Patent and Trademark Office. The examining attorney will review the patent application ensure that the invention described in the patent application meets all the criteria for a patented to be granted. One of the primary jobs that an examining attorney performs is to review prior art. Prior art is information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality.

If an invention has been described in the prior art or would have been obvious over what has been described in the prior art, then the examining attorney will give the patent applicant an opportunity to amend the patent application. If no relevant prior art is discovered or the patent applicant is able to modify the patent application to avoid the prior art to satisfaction of the examining attorney then the patent can be granted.

Once a patent is granted, the patent is not immune from review. If a member of the public discovers prior art which would anticipate or render a patented invention obvious, that member of the public can request an inter partes review. Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Institution of an inter partes review is not automatic, a petitioner must demonstrate a likelihood they would prevail with respect to at least one claim challenged. The evidence that can be submitted is limited to patents or printed publications which would qualify under §§ 102 or 103 and expert testimony to explain those publications. A the conclusion of an inter partes review the Board may invalidate all, some or none of the claims of the patent.

FIRST QUALITY BABY PRODUCTS, LLC, v. KIMBERLY-CLARK WORLDWIDE, INC., IPR2018-00519 (PTAB 2019) is an example of an inter partes review where only some of the claims of a patent were invalidated. U.S.
Patent No. 8,556,877 B2 is the subject of this inter partes review. The patent relates to an absorbent pant garment having a refastenable seam formed between front and back side panels, with fastening components on the front and back side panels, i.e. a diaper. The petitioner manufactures diapers and presented two pieces of prior art to demonstrate that the patent was anticipated and/ or obvious. The prior art is referred to by the name of the primary author of the publication. Fletcher, is a patent application filed by Kimberly Clark and was published in 2000. Allen, is a patent which was granted in 2000.

Both pieces of prior art disclose diapers with a refastenable seam. Fletcher is reproduced in the image above next to a drawing from the ‘877 patent. The patent owner submitted a declaration from an expert witness to try to distinguish the patent from the prior art and the petitioner submitted rebuttal testimony from an expert witness.

The Patent Trial and Appeal Board determined that Petitioner demonstrated, by a preponderance of the evidence, that claims 1, 4–9, 13, 15–17, 19, 21–23, and 28 of the ’877 patent are unpatentable as anticipated by Fletcher. The Board also determine that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2 and 3 would have been obvious under 35 U.S.C. § 103(a) over Fletcher. However the Board found that the Petitioner did not demonstrate, by a preponderance of the evidence, that claims 10–12, 14, 18, 20, 24–27 are unpatentable.

Even though the Patent Trial and Appeal Board did not completely invalidate the patent, the invalidation of such a large number of patent claims make it significantly less likely that a patent will be infringed.

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