Inter Partes Reviews Wipe Out Three Napkin Patents



Have you ever read an article about a new patent, or seen a patent number on a product, and thought to yourself, “You can patent that??”  After nearly eight years in the intellectual property field, I’ve read some patent applications that were real doozies, but rarely do the really “out-of-the-box” ideas make it all the way to being a granted patent.  Consider, for example, napkin folding.  Is napkin folding an area of intellectual property that is hotly sought after?  It turns out, yes it is, as highlighted by three inter partes reviews (IPRs) that were recently entered by the Patent Trial and Appeal Board (PTAB). 
In February, the PTAB entered three IPR decisions relating to three patents owned by Essity Hygiene and Health AB and all directed to folded napkins (8,597,761, 8,273,443, and 9,320,372).  Did you just ask yourself, “Someone got not one, not two, but three patents to folded napkins?”  Because I did.  But all  joking aside, not only did Essity own three folded napkin patents, but also one company (Cascades Canada LLC) thought that it was worth the costly and intensive effort to knock these patents down—highlighting that folded napkin patents are valuable.
            For example, claim 1 from 8,597,761 recites:
A stack of interfolded absorbent sheet products, comprising:
a plurality of absorbent sheets
wherein each sheet comprises a first fold that is offset from a line bisecting said sheet substantially parallel to said first fold, and an interfolding fold that is substantially perpendicular to said first fold,
wherein the first fold is unidirectionally peaked,
wherein panels defined by the first fold of each sheet directly contact each other, and
wherein at least one of the panels defined by the interfolding fold of each sheet is inserted between two panels defined by the interfolding fold of another sheet in the stack.

Unfortunately for Essity, the IPR decisions did not go their way, as all three of their patents “folded” under pressure from Cascades and the prior art cited in the petitions. On the upside, the prior art used to invalidate the three patents is owned mostly by Essity, so at least for the time being, Essity still maintains at least some share of the napkin IP landscape.
So what is the take-away? Well one lesson I learned from reading the patents and IPR decisions is that even mundane-sounding technology can be relevant and have value to multiple companies.  But the flip side is that it appears Essity had not innovated in its napkin technology over the last 10-20 years and had essentially tried to gain coverage for embodiments discussed but not claimed in their earlier filings, but without the benefit of continuations or other priority claims.  Such a strategy is obviously risky, and especially if your patents pose any market barrier to your competitors.

Popular posts from this blog

Surprising Uses for Oobleck

Image
Oobleck is a common name for a non-Newtonian fluid comprising cornstarch and water. Named after a substance humorously described in Dr. Seuss’s classic children’s story, Bartholomew and the Ooblek, the cornstarch and water concoction is frequently used in children’s science classes as a fun way to learn about fluid mechanics. You may have fond memories, yourself, of playing with oobleck as a youth. Oobleck behaves as a fluid when touched gently, but becomes hard as a solid when hit with great velocity. For example, a person could run across a swimming pool of oobleck without getting their feet wet. However, if a person stood still on the oobleck, then they would slowly sink. Because oobleck is a children’s plaything and because of its simple recipe (cornstarch and water), one may be surprised to learn that inventors have attempted to patent serious industrial uses for the material. As an example, one current patent application, US 2015/0016885 (now abandoned), is for a system of fi
Read more

Dispensing with the Formalities: Ex Parte Quayle Actions

Image
Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action.   Frustrated, I couldn’t resist skimming the substance of the rejection.   After all, like any patent practitioner, I thought my arguments were pretty irrefutable.   The news only got worse… or so it appeared.   The Office action was something called an “ Ex Parte Quayle action.”   Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection. To my surprise, I didn’t find myself knee-deep in case law the following day.   Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable.   In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable.   Accordingly, the mailing of these actions closes prosecution on the merits of the appl
Read more

Adaptive Headlight IP

Image
The recent Infrastructure bill signed into law by President Biden affects many things, but one aspect that affects the automotive world is adaptive headlights.  As noted by Jalopnik puts it somewhat crudely, this means “our headlights will suck way less” (link to https://jalopnik.com/finally-our-headlights-will-suck-way-less-1848067412 ). But with this sudden change, adaptive headlights in the US may be in for a particular messy IP situation since many companies may have considered it was not necessary to protect their adaptive headlight innovations in the US because of the 50-year old rule preventing such technology. Recent patents in the field from applicants such as Lumileds and Arex indicate that smaller players and startups may be able to break into the market which is expected to explode in the next few years once the final rules are implemented.  For those in the industry that have typically avoided US patent filings in the adaptive headlamp area, they may want to rethink th
Read more