Softbellys, Inc. v. Ty Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SOFTBELLYS, INC.,
Appellant
v.
TY INC.,
Appellee
______________________
2022-1146
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00689.
______________________
Decided: February 13, 2023
______________________
MATTHEW T OPIC, Loevy & Loevy, Chicago, IL, argued
for appellant. Also represented by J AMES L EE L OVSIN,
McDonnell Boehnen Hulbert & Berghoff LLP, Chicago, IL.
P HILIP D. SEGREST , J R., Husch Blackwell LLP, Chicago,
IL, argued for appellee. Also represented by J OHN ARON
CARNAHAN, N ATHAN P. SPORTEL .
______________________
Before L OURIE, P ROST , and CHEN, Circuit Judges.
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SOFTBELLYS, INC. v. TY INC. 2
P ROST , Circuit Judge.
Softbelly’s, Inc. (“Softbelly’s”) appeals from a final writ-
ten decision of the Patent Trial and Appeal Board (“Board”)
in an inter partes review (“IPR”) determining all chal-
lenged claims of Softbelly’s U.S. Patent No. 6,195,831 (“the
’831 patent”) unpatentable. We affirm.
BACKGROUND
Ty Inc. (“Ty”) petitioned for IPR of claims 15 and 16 of
the ’831 patent, which is now expired. Claim 15 depends
from canceled claim 6 and is exemplary.1 Those two claims
together recite:
6. A three-dimensional doll-like figure for cleaning
or wiping the surface of a display screen compris-
ing:
a plurality of strips of fabric material
sewed together so as to form a doll-like fig-
ure body having outer surface portions and
at least one inner chamber, and wherein at
least one of said plurality of strips of fabric
material forms, in part, said inner cham-
ber, and is composed of an optical grade
fabric having substantially non-abrasive
characteristics with regard to display
screen surfaces; and
a selected quantity of stuffing material
within said at least one inner chamber so
as to provide said doll-like figure with a
three dimensional shape which is
1 Claim 16, by virtue of its dependency from canceled
claim 11, contains language similar to claim 15, and nei-
ther party has suggested to us any distinction between
claims 15 and 16 that is relevant to our analysis.
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SOFTBELLYS, INC. v. TY INC. 3
squeezable for providing a pliant cleaning
tool for wiping a display screen.
15. The doll-like figure of claim 6 wherein another
of said strips of fabric material is a nonoptical
grade fabric material.
’831 patent claims 6 & 15 (emphasis added). We refer to
the language emphasized above (as incorporated into claim
15) as the “inner-chamber element.”
During the IPR, a claim-construction dispute emerged
over the inner-chamber element. Softbelly’s argued that
the inner-chamber element required an inner chamber
formed in part by optical-grade fabric and in part by non-
optical-grade fabric. See J.A. 256. Ty, however, argued
that nothing in claim 15 required nonoptical-grade fabric
to form any part of the inner chamber. See J.A. 366–67.
According to Ty, the claim simply required that a strip of
optical-grade fabric form, in part, the inner chamber; noth-
ing prevented the rest of the inner chamber from being
formed by another strip of optical-grade fabric. See J.A.
366–67.
In its final written decision, the Board acknowledged
this claim-construction dispute but declined to resolve it.
J.A. 14–16. Instead, it found that prior-art reference Og-
awa2 disclosed the inner-chamber element even under
Softbelly’s construction. In doing so, the Board found that
Ogawa was “silent” on whether it disclosed an inner cham-
ber formed in part by a strip of optical-grade fabric and in
part by a strip of nonoptical-grade fabric. J.A. 16. But,
after citing our precedent in Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)—for
the proposition that a reference “can anticipate a claim
even if it does not expressly spell out all the limitations
2 Japanese Utility Model Application Publication
No. H5-51237 (“Ogawa”).
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SOFTBELLYS, INC. v. TY INC. 4
arranged or combined as in the claim, if a person of skill in
the art, reading the reference, would at once envisage the
claimed arrangement or combination,” J.A. 16 (cleaned
up)—the Board found that Ogawa nonetheless disclosed
the inner-chamber element, J.A. 16–19.
Softbelly’s timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Softbelly’s argues that the Board misapplied Ken-
nametal to find that Ogawa disclosed the inner-chamber
element. Softbelly’s acknowledges, however, that for it to
succeed in disturbing the Board’s unpatentability determi-
nation, we must also agree with Softbelly’s construction.
Oral Arg. at 2:05–40.3 Because we reject that construction,
we affirm without reaching any other issues.
Softbelly’s maintains that the inner-chamber element
requires an inner chamber formed in part by a strip of op-
tical-grade fabric and in part by a strip of nonoptical-grade
fabric. We disagree. Although claim 15 introduces a non-
optical-grade fabric requirement, nothing in the claim re-
quires a strip of nonoptical-grade fabric to form any part of
an inner chamber. Rather, as to an inner chamber, all the
claim requires (as relevant here) is that it be “form[ed], in
part” by a strip of optical-grade fabric. To be sure, a strip
of nonoptical-grade fabric has to be part of the “doll-like
figure.” But nothing in the claim requires that a strip of
nonoptical-grade fabric form part of an inner chamber spe-
cifically.
Softbelly’s nonetheless insists that “in part” must
mean something less than the whole and that, therefore,
the inner chamber cannot be formed entirely by optical-
3 No. 22-1146, https://oralarguments.cafc.uscourts.g
ov/default.aspx?fl=22-1146_02072023.mp3.
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SOFTBELLYS, INC. v. TY INC. 5
grade fabric. Even if we accept (for argument’s sake) Soft-
belly’s interpretation of “in part,” this argument still fails
because it doesn’t account for other key claim language. In
claim 15, it is the claimed strip of optical-grade fabric that
must form the inner chamber “in part” (i.e., not in whole).
Nothing, however, prevents yet another strip of optical-
grade fabric from forming the rest of the inner chamber. In
such a configuration, the first strip would still form the in-
ner chamber only “in part.”
Accordingly, we reject Softbelly’s construction of the in-
ner-chamber element, which suffices to affirm.
CONCLUSION
We have considered Softbelly’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
AFFIRMED
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