DiapersIt’s well understood that waiting until reply to present any expert testimony comes with a risk that the testimony will be excluded. But that’s not what happened in a recent IPR, where a petitioner waited until reply to present such testimony, and the PTAB, in view of the straightforward nature of the technology, found the challenged claims obvious.


On May 28, 2015, the PTAB issued its final written decision in First Quality Baby Products, LLC, v. Kimberly-Clark Worldwide, Inc., regarding U.S. Patent No. 8,579,876. The ’876 patent is directed to absorbent garments, such as children’s diapers and training pants, with refastenable side seams folded in a specific manner. According to the patent, portions of these garments had typically been folded or tucked for compact packaging, but fastener performance was compromised if resilient side-seam fastening components were creased during packaging. The patent reports that orientating these components in a tucked position prevents creases, making fasteners less likely to disengage when the garments are worn. The challenged claims are accordingly directed to folded garments where refastenable side seams lie parallel to the garment.

Presentation of expert testimony

In support of its petition, the petitioner submitted no expert declaration. The PTAB granted the petition, finding it more important that the “Patent Owner has not explained why Petitioner’s rationale for combining the references is flawed.” Paper No. 9 at 14-15.

In support of its response, the patent owner submitted an expert declaration addressing asserted references and corresponding combinations. Then, in reply, the petitioner submitted its own expert declaration, addressing various alleged flaws with the patent owner’s declaration. The patent owner later moved to exclude select paragraphs in the petitioner’s declaration on the ground that the testimony should have been offered in support of the petition.

Claims found obvious 

The PTAB found the challenged claims obvious. It noted it did not matter that the petitioner presented no expert testimony in support of its assertion that folding a prior art diaper in a certain way would result in the claimed configuration because “the invention and prior art references are directed to relatively straightforward and easily understandable technology.” Paper No. 41 at 17 n.6. On other points, the PTAB weighed the experts’ testimony and found the testimony of the petitioner’s expert more compelling. The PTAB repeatedly found that the conclusions of the patent owner’s expert were inadequately explained or based on faulty premises, and credited the testimony of petitioner’s expert, including regarding how persons of ordinary skill in the art would understand the references. Finally, and as usual, the PTAB dismissed as moot the patent owner’s motion to exclude, saying it did not consider the challenged paragraphs.

After the patent owner submitted its own testimony, the petitioner presented the only expert testimony on which it relied, and succeeded on the merits


This case illustrates a successful presentation of expert testimony by a petitioner, albeit with a certain amount of risk. The petitioner presented no expert testimony in supports of its petition, but the PTAB found the technology and petition arguments straightforward enough to grant the petition. After the patent owner submitted its own testimony, the petitioner presented the only expert testimony on which it relied, and succeeded on the merits.