Paper No. 22
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2014-00509
`(U.S. Patent No. RE43,531)
`_____________
`
`Dated: October 31, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION FOR
`REHEARING ON JOINDER
`
`EAST\84728662.1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2014-00509
`(U.S. Patent No. RE43,531)
`_____________
`
`Dated: October 31, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION FOR
`REHEARING ON JOINDER
`
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`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`I.
`
`I.
`
`II.
`II.
`
`INTRODUCTION ..........................................................................................1
`
`INTRODUCTION ........................................................................................ ..1
`
`§ 315(C) ADDRESSES JOINDER OF PARTIES, NOT ISSUES ................1
`§ 315(C) ADDRESSES JOINDER OF PARTIES, NOT ISSUES .............. ..1
`
`III.
`
`CREATING AN EXPANDED PANEL WOULD VIOLATE DUE
`
`III. CREATING AN EXPANDED PANEL WOULD VIOLATE DUE
`PROCESS, THE APA, AND 35 U.S.C. § 2(b)(2) .........................................7
`PROCESS, THE APA, AND 35 U.S.C. § 2(b)(2) ....................................... ..7
`
`IV.
`IV.
`
`TARGET HAS NOT SATISFIED § 42.71'S REQUIREMENT TO
`TARGET HAS NOT SATISFIED § 42.71'S REQUIREMENT TO
`SHOW A MATTER "MISAPPREHENDED OR OVERLOOKED"..........13
`SHOW A MATTER "MISAPPREHENDED OR OVERLOOKED" ........ ..13
`
`V.
`
`V.
`
`CONCLUSION.............................................................................................15
`
`CONCLUSION ........................................................................................... ..15
`
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`
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`TABLE OF AUTHORITIES
`
`CASES
`Alaniz v. Office of Pers. Mgmt.,
`728 F.2d 1460, 1470 (Fed. Cir. 1984) ..........................................................10, 12
`
`Page(s)
`
`Ales v. Stern,
`2014 WL 950087, *2 (E.D.N.Y. Mar. 11, 2014)..................................................8
`
`Cushman v. Shinseki,
`576 F. 3d 1290, 1300 (Fed. Cir. 2009) ...............................................................12
`
`Dang v. Bank of Am., N.A.,
`2013 WL 2581432, at *2 (D. Md. June 10, 2013)..............................................14
`
`Florida Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank,
`527 U.S. 627, 642 (1999)....................................................................................11
`
`Georgetown Univ. Hosp. v. Bowen,
`821 F.2d 750, 757 (D.C. Cir. 1987)....................................................................10
`
`Goldberg v. Kelly,
`397 U.S. 254 (1970)............................................................................................12
`
`Historic Green Springs, Inc. v. Bergland,
`497 F. Supp. 839, 855-56 (E.D. Va. 1980).........................................................12
`
`In re Alappat,
`33 F. 3d 1526, 1575 (Fed. Cir. 1994) .....................................................10, 12, 13
`
`In re Lee,
`2010 WL 2228370, at *1 (D.S.C. June 1, 2010) ................................................14
`
`Morton v. Ruiz,
`415 U.S. 199, 232 (1974)....................................................................................10
`
`NI Indus., Inc. v. United States,
`841 F.2d 1104, 1107 (Fed. Cir. 1988) ................................................................12
`
`Stouffer v. Trammell,
`2014 U.S. Dist. LEXIS 33769 (E.D. Okla. Mar. 13, 2014)..................................8
`
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`Tafas v. Dudas,
`541 F. Supp. 2d 805, 812 (E.D. Va. 2008) ...........................................................9
`
`US v. Vasquez,
`985 F. 2d 491, 497 (10th Cir. 1993) ...................................................................14
`
`STATUTES
`
`5 U.S.C. § 552(a)(1).................................................................................................12
`
`5 U.S.C. § 552(a)(1)(C) &(B)..................................................................................10
`
`5 U.S.C. § 552(a)(1) (D) ..........................................................................................11
`
`35 U.S.C. § 2(b)(2)...........................................................................................7, 9, 10
`
`35 U.S.C. § 2(b)(2)(B) ...............................................................................................9
`
`35 U.S.C. § 315(c) .................................................................................................1, 2
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 1.640(c).................................................................................................11
`
`37 C.F.R. § 42.2 .........................................................................................................8
`
`37 C.F.R. § 42.71 .......................................................................................1, 9, 13, 15
`
`37 C.F.R. § 42.71(c)...................................................................................................1
`
`37 C.F.R. § 42.71(d) ..................................................................................................8
`
`Fed. R. App. P. 35......................................................................................................8
`
`Fed. R. App. P. 40(a)(2).............................................................................................8
`
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`LIST OF EXHIBITS
`
`EVIDENCE FILED WITH PATENT OWNER'S
`OPPOSITION TO PETITIONER'S MOTION FOR JOINDER
`
`Exhibit 2121:
`
`H.R. Rep. No. 112-98, pt. 1, at 47, 48, 76 (June 1, 2011)
`
`Exhibit 2122:
`
`Exhibit 2123:
`
`Exhibit 2124:
`
`Berman Introduction of Patent Reform Act (House), 153
`Cong. Rec. E773, E774
`
`Chart of Patent Harassment Concern Expressed in Legislative
`History
`
`Markup of H.R. 1249, America Invents Act, House of
`Representatives Committee on Judiciary, 1436-1439, at 72;
`1831-1834, at 91
`
`Exhibit 2125:
`
`Pierce, Administrative Law and Process 280-81 (1992)
`
`Exhibit 2126:
`
`Rules of Practice for Trials, 77 FR 48612-678, at 48,647, Cmt.
`& Resp. 199 (Aug. 14, 2013)
`
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`I.
`
`INTRODUCTION
`
`Patent Owner Destination Maternity Corporation opposes Petitioner Target
`
`Corporation's Motion for Rehearing under 37 C.F.R. § 42.71(c), which asks the
`
`panel to rehear its decision denying consolidation of this IPR and IPR No. 2014-
`
`508 with already-tried IPR Nos. 2013-533 and -531. See -508 Decision, Paper No.
`
`18; Rehearing Mot., Paper No. 20. Target reiterates the arguments already
`
`addressed by the dissent, and adds no new arguments. Id. The Motion should be
`
`denied because (a) the Board correctly distinguished between joinder of parties,
`
`authorized under 35 U.S.C. § 315(c), and consolidation of petitions, authorized
`
`under § 315(d), especially in view of the extensive legislative history forbidding
`
`patent-owner harassment from multiple petitions; (b) rehearing by a different or
`
`expanded panel is not authorized by statute or regulations, and the Patent Office
`
`may not create new procedures without notice and comment; and (c) no new
`
`matters were misapprehended or overlooked, but rehearing under 37 C.F.R. §
`
`42.71 is only appropriate where the Board misapprehended or overlooked an issue.
`
`II.
`
`§ 315(C) ADDRESSES JOINDER OF PARTIES, NOT ISSUES
`
`Section 315(c) states:
`
`(c) Joinder.-If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 ….
`
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`35 U.S.C. § 315(c) (emphasis added). By its own terms, § 315(c) refers to joinder
`
`of parties, not petitions and arguments. The joinder of parties addressed in §
`
`315(c) is identical to the joinder of parties addressed in Federal Rules of Civil
`
`Procedure 19 and 20, which also do not address joinder of petitions and arguments.
`
`Indeed, the House Report explaining § 315(c) states that "[t]he Director may allow
`
`other petitioners to join an inter partes or post-grant review." H.R. Rep. No. 112-
`
`98, pt.1, at 76 (June 1, 2011) attached as Ex. 2121, (emphasis added). It does not
`
`suggest joining other issues from the same petitioner.
`
`By contrast, where there are multiple proceedings involving the same patent,
`
`as here, Congress refers to "consolidation," which it addresses in the next
`
`paragraph of § 315. Section 315(d), entitled "multiple proceedings," allows
`
`another instituted proceeding to be consolidated with a pending proceeding.
`
`Target in fact seeks consolidation of IPR No. 2014-509 with IPR No. 2013-533,
`
`since they address the same patent. If IPR 2014-509 were an instituted proceeding,
`
`§ 315(d) would authorize its consolidation with 2013-533, subject to the Board's
`
`discretion regarding whether consolidation would promote efficiency. Here, since
`
`the Board denied IPR 2014-509's institution (Paper No. 19),
`
`it cannot be
`
`consolidated with any other proceedings.
`
`Target's reading of § 315(c) creates untenable results. As Target itself points
`
`out in its brief, nothing in § 315(c) requires that "the new petition should … relate
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`to the same patent," Paper No. 20 at 8 n.3 & at 8. There would be, as Target states,
`
`no limit on what can be addressed by a joined petition filed by the same party. Id.
`
`If § 315(c) is read as the Board correctly reads it—to address joinder of
`
`parties—there is no reason § 315(c) would also limit what patents may be joined,
`
`since adding another party and allowing it to "join an existing proceeding and the
`
`challenges presented in the proceeding," (-508 Decision, Paper 18, at 10; see also
`
`Paper No. 18) generally presents no new patents. By contrast § 315(d) regarding
`
`consolidation recites "the patent … before the Office," thus limiting the issues
`
`being consolidated to the same patent already under consideration.
`
`Target's reading of § 315(c) also places no limit on the number of petitions
`
`one petitioner can file. Indeed, under Target's reading, a petitioner can concatenate
`
`petitions, adding a new petition within the one month period following each
`
`joinder. For example, if the Board were to reverse its decision denying institution
`
`of IPR 2014-508, there is nothing in the statute under Target's reading forbidding
`
`Target from filing yet another petition and joining this new petition to IPR 2014-
`
`508, subject, of course, to the Board's discretionary authority.
`
`In sum, Target's reading, as Target concedes (Paper No. 20, at 8), allows
`
`joinder of petitions including any arguments and concerning any patents, and
`
`allows multiple, successive petitions. Such an unlimited ability to address multiple
`
`patents, multiple issues, and multiple sources of evidence seems unlikely, and is
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`not supported by either the plain meaning of the "may join as a party" language or
`
`anything in the legislative history suggesting that Congress would welcome a
`
`broad expansion of each inter partes review proceeding.
`
`To the contrary, Target's reading ignores one of Congress's greatest
`
`concerns—expressed throughout
`
`the legislative history: "harassment of patent
`
`owners who want to assume quiet title over their invention…." (Ex. 2122, Berman
`
`Introduction of Patent Reform Act (House), 153 Cong. Rec. E773, E774 (Apr. 18,
`
`2007).)
`
`Indeed, Congress expressed this concern numerous times throughout the
`
`process for enacting the AIA, and Destination Maternity has attached a chart to this
`
`brief listing many examples. (Ex. 2123.)
`
`As Chairman Smith stated in the House, "[t]he inter partes proceeding in HR
`
`1249 [the AIA] has been carefully written to balance the need to encourage its use
`
`while at the same time preventing the serial harassment of patent holders." (Ex.
`
`2124, Markup of H.R. 1249, America Invents Act, House of Representatives
`
`Committee on the Judiciary, 1436-1439, at 72.) Moreover, "[t]he program forces
`
`the party to make a decision, and if you decide to initiate inter partes review, you
`
`need to bring in your A game.
`
`Inter partes review is not meant to simply be a
`
`program that you can use to harass a patent owner." (Ex. 2124, id., 1831-1834, at
`
`91; see also Ex. 2121, H.R. Rep. No. 112-98, Part 1, at 48 ("The Committee
`
`recognizes the importance of quiet title to patent owners to ensure continued
`
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`investment resources"; and condemning "harassment … through repeated …
`
`administrative attacks on the validity of a patent.").)
`
`Target already had its opportunity to pursue inter partes review, and did so
`
`by filing four petitions on two patents.
`
`It apparently feels it did not bring its A
`
`game to its original four petitions, and now wishes to bring two more, which is
`
`precisely the type of behavior which Congress wished to prevent. Thus, to read §
`
`315(c) to allow successive petitions by the same party, as Target proposes, defeats
`
`Congress's overall purpose to prevent patent-owner harassment.
`
`The dissent, in reviewing the legislative history, did not consider these
`
`important (and frequently reiterated) concerns of Congress that patent owners
`
`would be harassed by serial petitions. Instead, the dissent focused on one remark
`
`made by Senator Kyl regarding the joinder provision. The majority ably explained
`
`why Senator Kyl's remarks do not support Target's reading of the "may join a
`
`party" language. (-508 Paper No. 18, at 8-9.) In Senator Kyl's remarks, he too is
`
`assuming that a party refers to another party being joined, and not joinder of issues,
`
`since he states "a party that files an identical petition will be joined to that
`
`proceeding." 157 Cong. Rec. S. 1376. It is inconceivable that a single party would
`
`file an identical petition: Senator Kyl is manifestly describing a different party.
`
`His remarks simply have no relevance to whether the same party can consolidate
`
`other issues from a new petition to a pre-existing instituted proceeding.
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`Finally, in the circumstance of the present IPR Nos. 2013-530 through -532,
`
`these proceedings have already been essentially completed, and merely await the
`
`Board's decision, currently due in February 2015. To now reopen this entire trial
`
`to address new arguments this late in the proceedings would prejudice Destination
`
`Maternity.
`
`First, Destination Maternity's case in the Eastern District of
`
`Pennsylvania is stayed pending this proceeding. Adding new issues and arguments
`
`to a case that has already been completed and is now just awaiting the Board's
`
`decision would necessarily require an extension of the February 2015 deadline,
`
`likely by six months, which would prejudice Destination Maternity by extending
`
`the stay of the case in the Eastern District of Pennsylvania.
`
`Second, Destination Maternity would, at a minimum, need to file a patent
`
`owner response to two new IPRs, conduct new depositions, enter new evidence to
`
`address Target's new arguments, conduct further motion practice, and reargue oral
`
`argument before the panel, thereby substantially increasing the burden and expense
`
`of this proceeding. In these circumstances, the Board should not join new issues to
`
`an otherwise completed proceeding. Compare with Sony Corp. of Am., et al., v.
`
`Network-1 Security Sol'ns, Case IPR 2013-00386 (PTAB July 29, 2013) (Paper 16)
`
`(finding substantive new issues raised in petition weighed against
`
`joinder).
`
`Accordingly, and in light of the foregoing, Target fails to show that the Board's
`
`decision was erroneous and thus an abuse of discretion.
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`III. CREATING AN EXPANDED PANEL WOULD VIOLATE DUE
`PROCESS, THE APA, AND 35 U.S.C. § 2(b)(2)
`
`In a self-serving attempt to get yet another bite at the apple, Target proposes
`
`that a panel of seven APJs be created, apparently on the theory that by adding two
`
`more judges, there is a mathematical possibility that these two judges would side
`
`with Target and change the 3 to 2 majority in favor of Destination Maternity to a 3
`
`to 4 vote. But there is no statutory or regulatory authority for this ad hoc and
`
`arbitrary procedure, nor does Target cite any statute or rule for creating this new
`
`procedure. Moreover, Target ignores that an enlarged panel of five members
`
`already heard and issued its decision on these issues.
`
`In IPR proceedings, the Board is acting essentially like a court of first
`
`instance, deciding the law in each case that comes before each panel. As with any
`
`court of first instance, different judges, ALJs, or panels may issue conflicting
`
`views on the law. Ex. 2125, Pierce, Administrative Law and Process 280-81
`
`(1992) (recognizing ALJ independence causes inter-ALJ inconsistencies). These
`
`conflicts are resolved by the appellate courts that review the agency or court
`
`decisions.
`
`In IPR proceedings, the Court of Appeals for the Federal Circuit
`
`reviews the decisions of the Board.
`
`For example, when the judges in the District of Delaware, or the ALJs at the
`
`ITC, disagree on the law, these judges do not meet en banc to resolve these
`
`differences.
`
`Instead, the appellate courts supervising the district court or agency
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`resolve any conflicts among the district court judges or ALJ. Similarly, when the
`
`Board's APJs disagree on the law, those disagreements will be resolved by the
`
`Court of Appeals for the Federal Circuit. Indeed, any en banc procedure to address
`
`a legal question would be wasteful, since the Federal Circuit will decide any legal
`
`questions de novo, without any deference to the Board.
`
`In any event, 37 C.F.R. § 42.71(d), which governs Target's motion for
`
`rehearing, does not authorize expanded panels for rehearing. To the contrary, §
`
`42.71(d) refers specifically to identifying matters "misapprehended or overlooked,"
`
`which is the same language used in the Federal Rules of Appellate Procedure
`
`regarding a Petition for Panel Rehearing by the same panel: "The petition must
`
`state with particularity each point of law or fact that the petitioner believes the
`
`court has overlooked or misapprehended and must argue in support of the petition.
`
`Oral argument is not permitted." Fed. R. App. P. 40(a)(2). This same Appellate
`
`Rule 40(a)(2) is used by district courts to evaluate motions for reconsideration.
`
`See, e.g., Stouffer v. Trammell, 2014 U.S. Dist. LEXIS 33769 (E.D. Okla. Mar. 13,
`
`2014); Ales v. Stern, 2014 WL 950087, *2 (E.D.N.Y. Mar. 11, 2014). This
`
`regulation is thus directed to rehearing by the same panel, not by a larger panel.
`
`Empanelling a larger panel is governed by Fed. R. App. P. 35, which is not
`
`concerned with overlooking or misapprehending. And 37 C.F.R. § 42.2 states
`
`"rehearing means reconsideration," and motions for reconsideration are considered
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`by the same judge or panel, not different or expanded panels.
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`Moreover, the notes and comments to 37 C.F.R. § 42.71 do not support
`
`rehearing by a larger panel, but only by the same panel. Comments requested that
`
`a different panel should address Rule 42.71 motions for rehearing, but the Patent
`
`Office rejected this approach. Ex. 2126, Rules of Practice for Trials, 77 FR 48612-
`
`701, at 48,647, Cmt. & Resp. 199 (Aug. 14, 2012).
`
`Regardless, without explicit authorization in its published regulations to
`
`convene a seven-member panel, the Board cannot do so. Under 35 U.S.C. §
`
`2(b)(2), the "Office … may establish regulations … which (A) shall govern the
`
`conduct of proceedings in the Office;" [which] "(B) shall be made in accordance
`
`with section 553 of title 5." Section 553 of the Administrative Procedure Act
`
`referred to in 35 U.S.C. § 2(b)(2)(B), entitled "Rule Making," requires "notice and
`
`comment" rulemaking, and "the structure of Section 2(b)(2) makes it clear that the
`
`USPTO must engage in notice and comment rulemaking when promulgating rules
`
`it is otherwise empowered to make—namely, procedural rules." Tafas v. Dudas,
`
`541 F. Supp. 2d 805, 812 (E.D. Va. 2008).
`
`There are no published rules allowing the Board to create an enlarged panel
`
`for rehearing. The Patent Office has not engaged in notice and comment
`
`rulemaking to provide for enlarged panels on rehearing, and it cannot do so on an
`
`ad hoc basis, as Target proposes. Whether procedural or substantive,
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`the
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`Administrative Procedure Act ("APA") and 35 U.S.C. § 2(b)(2) require that "rules
`
`of procedure" and "statements of the general course and method by which [the
`
`agency's] functions are channeled and determined,
`
`including the nature and
`
`requirements of all formal and informal procedures" be published in the Federal
`
`Register. 5 U.S.C. § 552(a)(1)(C) & (B). Indeed, "[t]he Administrative Procedure
`
`Act was adopted to provide,
`
`inter alia, that administrative policies affecting
`
`individual rights and obligations be promulgated pursuant
`
`to certain stated
`
`procedures so as to avoid the inherently arbitrary nature of unpublished ad hoc
`
`determinations." Morton v. Ruiz, 415 U.S. 199, 232 (1974). If the Patent Office
`
`proposes to create procedures for enlarged panel review,
`
`it must
`
`issue new
`
`regulations, and under § 2(b)(2) and section 553, these regulations must be issued
`
`under notice and comment procedures. And these new procedures cannot apply
`
`retroactively to Target's motion for rehearing, since new rules cannot be applied
`
`retroactively. Alaniz v. Office of Pers. Mgmt., 728 F.2d 1460, 1470 (Fed. Cir.
`
`1984); Georgetown Univ. Hosp. v. Bowen, 821 F.2d 750, 757 (D.C. Cir. 1987).
`
`Moreover, the designation of an enlarged panel to try to change the current
`
`panel's conclusion affects Destination Maternity's substantive rights, In re Alappat,
`
`33 F. 3d 1526, 1575 n.6 (Fed. Cir. 1994), since it is being done here to change the
`
`outcome of this inter partes proceeding, which is now not instituted.
`
`(Paper No.
`
`19, Decision Denying Institution). Under the APA, "substantive rules of general
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`applicability" must be published in the Federal Register. 5 U.S.C. § 552(a)(1)(D).
`
`Since Destination Maternity's patent is a constitutionally recognized property right,
`
`Florida Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S.
`
`627, 642 (1999), if the Patent Office takes this property right away through ad hoc
`
`procedures, it would be violating the Fifth Amendment's Due Process Clause.
`
`As Target cites, the BPAI had used expanded panels in considering appeals
`
`from examination procedures, in accordance with a Feb. 12, 2009, Standard
`
`Operating Procedure ("SOP") issued by an APJ on the former BPAI. However,
`
`Target provides no legal authority suggesting that this pre-AIA SOP applies here.
`
`The SOP traced its authority to MPEP § 1002.02(f) (2004), which in turn relied on
`
`37 C.F.R. § 1.640(c). But § 1.640(c) and the BPAI no longer exist, and the Board
`
`has not been authorized and cannot extend an SOP not implemented through notice
`
`and comment to create an ad hoc expanded panel for inter partes review. Instead,
`
`Congress expected "[t]hree-judge panels [where] [i]nter partes reviews will be
`
`conducted before a panel of three APJs. Decisions will be appealed directly to the
`
`Federal Circuit." (Ex. 2121, H.R. Rep. No. 112-98, at 47 (emphasis in original).)
`
`Importantly,
`
`the BPAI heard inter partes
`
`reexaminations and other
`
`examinational proceedings, not adjudicative proceedings. See id. at 46-47 ("The
`
`Act converts inter partes reexamination from an examinational to an adjudicative
`
`proceeding, and renames the proceeding 'inter partes review.'"). The APA subjects
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`adjudicative proceedings
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`to more
`
`exacting standards
`
`than examination:
`
`adjudicative proceedings concerning property rights must provide procedural due
`
`process in accordance with Goldberg v. Kelly, 397 U.S. 254 (1970). See Cushman
`
`v. Shinseki, 576 F. 3d 1290, 1300 (Fed. Cir. 2009) ("A fundamentally fair
`
`adjudication … is constitutionally required in all cases, and not just in the large
`
`majority."). Ad hoc adjudicative procedures cannot meet the APA's and Due
`
`Process Clause's procedural requirements, and courts have routinely struck down
`
`agency ad hoc procedures as violations of individual rights. See, e.g., NI Indus.,
`
`Inc. v. United States, 841 F.2d 1104, 1107 (Fed. Cir. 1988) (rejecting SOP because
`
`"[b]oth statutes and case law make clear the requirement that regulations that affect
`
`persons' substantive rights be published in the Federal Register); Historic Green
`
`Springs, Inc. v. Bergland, 497 F. Supp. 839, 855-56 (E.D. Va. 1980) (rejecting ad
`
`hoc procedures because "5 U.S.C. § 552(a)(1) … provides further that no person
`
`may be adversely affected by administrative action taken pursuant to unpublished
`
`procedures.").
`
`Indeed, "agency actions effected in violation of the notice and
`
`comment procedures are void." Alaniz, 728 F.2d at 1470.
`
`Since inter partes review is not examinational, In re Alappat is inapposite.
`
`Moreover, "Alappat … waived any due process argument by acquiescing to the
`
`Commissioner's actions[,] … and [t]here also is no case or controversy as to
`
`whether the Commissioner's actions in this case violated any provision of the APA,
`
`EAST\84728662.1
`
`- 12 -
`
`
`
`given that Alappat does not contest" an expanded panel. Alappat, 33 F. 3d at 1536;
`
`see also id. at 1532 n.4. While not challenged, as Judges Mayer and Michel
`
`explained, "[t]he lack of formal, published regulations covering the procedure to
`
`grant rehearings may itself make the Commissioner's practice of designating a
`
`new, or expanded panel unlawful [since] … the redesignation practice affected
`
`substantive rights [and thus,] … [u]nder the Administrative Procedure Act, … are
`
`required to be published in the Federal Register." Id. at 1575 n.6.
`
`In sum, Target's proposal for an enlarged panel is contrary to the regulation
`
`Target relies upon for rehearing, since § 42.71 refers only to rehearing by the same
`
`panel. Moreover, to create new enlarged-panel-rehearing proceedings, the Patent
`
`Office would need to issue new regulations subject to notice and comment, but has
`
`not done so. The Board does not have authority to create ad hoc new proceedings
`
`on its own without violating the APA, and the Due Process Clause.
`
`IV. TARGET HAS NOT SATISFIED § 42.71'S REQUIREMENT TO
`SHOW A MATTER "MISAPPREHENDED OR OVERLOOKED"
`
`Section 42.71 mandates that the current Board panel of five judges first
`
`consider "matters … the Board misapprehended or overlooked" before allowing
`
`rehearing, as Target itself recognizes.
`
`(Paper No. 20, at 1 ("Target … 'must
`
`specifically identify all matters it believes the Board misapprehended or
`
`overlooked ….'").) This "misapprehended or overlooked" standard has been
`
`addressed in numerous appellate and district court decisions. See, e.g., US v.
`
`EAST\84728662.1
`
`- 13 -
`
`
`
`Vasquez, 985 F. 2d 491, 497 (10th Cir. 1993) ("A petition for rehearing was not
`
`designed to be a crutch for dilatory counsel, nor, in the absence of a demonstrable
`
`mistake, to permit reargument of the same matters.") (citing cases); Dang v. Bank
`
`of Am., N.A., 2013 WL 2581432, at *2 (D. Md. June 10, 2013) ("A petition for
`
`rehearing is not a means by which to reargue a party's case …."); In re Lee, 2010
`
`WL 2228370, at *1 (D.S.C. June 1, 2010) ("Because petitions for rehearing
`
`function to ensure that
`
`the appellate court properly considered all relevant
`
`information in coming to its decision, petitions for rehearing should not simply
`
`reargue the petitioner's case ….").
`
`Here, Target's motion only reiterates arguments made by the dissent in the
`
`Board's Decision Denying Motion for Joinder (-508 Paper No. 18). Target's
`
`motion thus cannot meet the "misapprehended or overlooked" standard, and must
`
`be denied. The Board has routinely denied motions for rehearing for failing to
`
`meet this standard. See, e.g., Primera Tech., Inc. v. Accuplace, Case IPR2013-
`
`00196 (PTAB Aug. 29, 2014) (Paper 52); Nuvasive v. Warsaw Orthopaedic, Inc.,
`
`Case IPR2013-00206 (PTAB Aug. 28, 2014) (Paper 67).
`
`Target's motion fails to meet this standard in two ways. First, nowhere in
`
`Target's motion does Target identify with particularity, even once, a matter that
`
`was "misapprehended" or "overlooked."
`
`The words "misapprehended" and
`
`"overlooked" appear only once in Target's brief, where Target quotes the § 42.71
`
`EAST\84728662.1
`
`- 14 -
`
`
`
`standard. (Paper No. 20, at 1.) After reciting the standard, Target never refers to it
`
`again. This disregard for the identification standard alone mandates denial of
`
`Target's motion for rehearing.
`
`Second, Target rehashes the dissent's contention that "may join as a party" in
`
`§ 315(c) should be ignored, and should be effectively replaced by "any person."
`
`(Compare Paper No. 20, at 7-10 with -508 Paper No. 18, Dissent.) The remainder
`
`of Target's brief restates statutory construction law, and comments on legislative
`
`history. (Id. at 2, 10-14.) The majority and dissent already summarized this law (-
`
`508 Paper No. 18, Majority at 2, Dissent at 3), and Target did not disagree with
`
`these summaries. Thus, Target's reiteration of the dissent's arguments cannot meet
`
`the "misapprehended or overlooked" standard, and accordingly, Target's motion for
`
`rehearing must be rejected.
`
`V.
`
`CONCLUSION
`
`Accordingly, Petitioner's Motion for Rehearing should be denied.
`
`Date: October 31, 2014
`
`DLA PIPER LLP (US)
`s/ Paul A. Taufer
`Paul A. Taufer (Reg. No. 35,703)
`1650 Market Street, Suite 4900
`Philadelphia, PA 19103
`Phone: (215) 656-3385
`Facsimile: (215) 606-3385
`paul.taufer@dlapiper.com
`Attorneys for Patent Owner, Destination
`Maternity Corporation
`
`EAST\84728662.1
`
`- 15 -
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on October 31, 2014, a complete and entire
`
`copy of PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION FOR
`
`REHEARING ON JOINDER was provided via email to the Petitioner by serving
`
`the email correspondence address of record as follows:
`
`Norman J. Hedges
`R. Trevor Carter
`Daniel M. Lechleiter
`Faegre Baker Daniels LLP
`300 N. Meridian Street, Suite 2700
`Indianapolis, Indiana 46204-1750
`Phone: (317) 237-0300
`Fax: (317) 237-1000
`Norman.Hedges@FaegreBD.com
`trevor.carter@FaegreBD.com
`daniel.lechleiter@FaegreBD.com
`
`/s/ Paul Taufer
`Paul A. Taufer
`
`EAST\84728662.1
`
`- 16 -
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