Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 29
`Entered: January 10, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CYANOTECH CORPORATION
`Petitioner
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`v.
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`THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS
`Patent Owner
`____________
`
`Case IPR2013-00401
`Patent 5,527,533
`____________
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`Before WILLIAM V. SAINDON, SCOTT E. KAMHOLZ, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
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`SNEDDEN, Administrative Patent Judge.
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`
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`DECISION
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`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`

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`Case IPR2013-00401
`Patent 5,527,533
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`I.
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`INTRODUCTION
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`Patent Owner, the Board of Trustees of the University of Illinois (“the
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`University”), filed a request for rehearing (Paper 25) of the Board’s decision, dated
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`Dec. 19, 2013 (“Decision”, Paper 17), which instituted inter partes review of
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`claims 1-15, 21, 22, and 26 of US Patent No. 5,527,533 (“the ’533 patent”). For
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`the reasons stated below, the University’s request is denied.
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`II. STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” An abuse of discretion
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`occurs when a “decision was based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
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`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988). See
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`also 37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the
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`party believes the Board misapprehended or overlooked”).
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`III. DISCUSSION
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`Petitioner Cyanotech Corporation filed a corrected petition (Paper 9) to
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`institute an inter partes review of claims 1-27 of Patent 5,527,533. The University
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`filed a preliminary response (Paper 15) that alleged that the institution of an inter
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`partes review involving Cyanotech is barred under 35 U.S.C. § 315(a)(1). The
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`Board considered the University’s contentions but determined that, under these
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`circumstances, Cyanotech’s actions did not bar institution of an inter partes review
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`because their case was dismissed without prejudice, which has the legal effect of
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`rendering the action a nullity and leaves the parties in the same legal position as if
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`the civil action was never filed. Decision 9-12.
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`
`
`2
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`

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`Case IPR2013-00401
`Patent 5,527,533
`
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`The University seeks rehearing of this decision, contending that the Board
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`misapprehended, or overlooked, the fact that the language of the statute is clear on
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`its face and that Petitioner’s filing of the civil action in the United States District
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`Court, District of Hawaii, barred the petitions at issue. Reh’g. Req. 2. We
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`disagree. We considered the University’s arguments and addressed them fully in
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`the Decision. The University has shown no abuse of discretion in the Decision in
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`this regard and may not use a Request for Rehearing to re-argue its prior,
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`unsuccessful, arguments.
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`The University further contends that the cases cited in the Decision to guide
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`our interpretation of the terms “filed a civil action” are not relevant to § 315(a)(1).
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`Decision, 3. The University’s arguments are not persuasive. While the cases cited
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`in the Decision do not discuss § 315(a)(1) specifically, the cases are instructive to
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`show that federal courts, including our reviewing court, uniformly treat dismissals
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`without prejudice as if the actions were never filed. Id. at 9-12. The University
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`has shown no abuse of discretion in the Decision in this regard.
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`The University further contends that its interpretation of the statute is wholly
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`consistent with the legislative history of the statute. Reh’g. Req. 4. The
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`University, however, does not set forth any persuasive rationale as the why the
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`Board’s interpretation of legislative history is in error. According, the University
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`has shown no abuse of discretion.
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`Finally, the University contends that the Hawaii Action was not simply
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`dismissed without prejudice—it was dismissed “without prejudice to Cyanotech
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`bringing its claims in the pending parallel action in the U.S. District Court for the
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`Middle District of Florida.” Id. at 5. The University, however, fails to explain the
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`legal effect of the dismissal and why the parties were not left in the same legal
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`position as if the civil action had never been file. We find this argument
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`3
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`

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`Case IPR2013-00401
`Patent 5,527,533
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`conclusory and unpersuasive to show abuse of discretion.
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`IV. ORDER
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`Accordingly, it is hereby
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`ORDERED that Patent Owner’s request for rehearing is denied.
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`Petitioner:
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`Joseph A. Rhoa
`jar@nixonvan.com
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`George E. Darby
`cyan@teleport-asia.com
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`Patent Owner:
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`Mark Schuman
`mschuman@carlsoncaspers.com
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`Iain McIntyre
`imcintyre@carlsoncaspers.com
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`4
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