UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
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`
`
`FORD MOTOR COMPANY
`Petitioner
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner
`_______________
`
`Case IPR2014-00570
`Patent No. 8,214,097
`
`
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`REQUEST FOR REHEARING OF NON-INSTITUTED GROUNDS
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner
`_______________
`
`Case IPR2014-00570
`Patent No. 8,214,097
`
`
`
`REQUEST FOR REHEARING OF NON-INSTITUTED GROUNDS
`
`
`
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`Table of Contents
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`I.
`
`II.
`
`Introduction ...................................................................................................... 1
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`The Decision to not Consider Grounds 2–5 during the Trial
`Constitutes an Abuse of Discretion under 37 C.F.R. § 42.108 ....................... 1
`
`A.
`
`B.
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`35 U.S.C. § 314(a) requires that the Board consider all
`proposed grounds when the petition presents a reasonable
`likelihood of prevailing as to at least one claim .................................... 2
`
`The Board misinterpreted or overlooked the teachings of
`Caraceni when deciding that Caraceni was not “meaningfully
`distinctive” from
`the
`teachings of Severinsky ’970
`in
`combination with Anderson .................................................................. 2
`
`C.
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`Failure to institute trial on grounds 2–5 is unjust .................................. 3
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`III. Conclusion ....................................................................................................... 4
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`
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`i
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`I.
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`INTRODUCTION
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`Ford thanks the Board for instituting trial on ground 6 (Severinsky ’970 in
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`view of Anderson), but for claim 38, ground 7 (Severinsky ’970 in view of
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`Anderson and Yamaguchi), and ground 8 (Severinsky ’970 in view of Anderson,
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`Yamaguchi, and Katsuno). However, Ford respectfully requests rehearing of the
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`decision to not institute trial on ground 2 (Caraceni), ground 3 (Caraceni in view of
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`Boberg), ground 4 (Caraceni in view of Boberg and Yamaguchi), or ground 5
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`(Caraceni in view of Boberg, Yamaguchi, and Katsuno) based on Ford’s alleged
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`failure to “… articulate reasonably how the implicit teaching of a stoichiometric
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`ratio by Caraceni and Boberg is meaningfully distinctive from the express teaching
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`of this same limitation by Severinsky and Anderson.” Decision, paper 10, p. 11.
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`II. THE DECISION TO NOT CONSIDER GROUNDS 2–5 DURING THE
`TRIAL CONSTITUTES AN ABUSE OF DISCRETION UNDER 37
`C.F.R. § 42.108
`
`An abuse of discretion exists if a decision is based on an erroneous
`
`interpretation of law, if a factual finding is not supported by substantial evidence,
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`or if the decision represents an unreasonable judgment in weighing relevant
`
`factors. Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). In this
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`request for rehearing, the relevant factors include whether the non-instituted
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`grounds are indeed redundant, as well as the requirement for a just, speedy, and
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`inexpensive trial. 37 C.F.R. § 42.1(b); see also, § 42.208(a).
`
`
`
`1
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`
`
`A.
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`35 U.S.C. § 314(a) requires that the Board consider all proposed
`grounds when the petition presents a reasonable likelihood of
`prevailing as to at least one claim
`
`The petition presented a reasonable likelihood of prevailing as to claims 30,
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`31, 35, 36, and 39. Accordingly, Ford met the threshold requirements for
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`instituting review of all challenged claims based on all grounds.
`
`Ford understands that the Board must consider “the economy, the integrity
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`of the patent system, the efficient administration of the Office, and the ability of
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`the Office to timely complete proceedings instituted.” 35 U.S.C. § 316(b). Per this
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`requirement, refusing to review the ’097 patent based on all grounds is inefficient
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`because the patent owner, Ford, and the district court may need to consider these
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`same grounds again, without the just, speedy, and inexpensive results allowed by
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`inter partes review. The Board should therefore review claims 30, 31, 35, 36, and
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`39, based on all proposed grounds in the interest of efficient administration of the
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`patent system.
`
`B.
`
`The Board misinterpreted or overlooked the teachings of
`Caraceni when deciding that Caraceni was not “meaningfully
`distinctive” from the teachings of Severinsky ’970 in combination
`with Anderson
`
`The petition demonstrated that Caraceni was not redundant of Severinsky
`
`’970 and Anderson because it presents different information in a different way than
`
`the combination of Severinsky ’970 and Anderson. Petition, paper 1, pp. 36–37
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`and 58–60. Accordingly, Caraceni alone or in combination with Boberg is not
`
`
`
`2
`
`
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`redundant of Severinsky ’970 and Anderson, and Caraceni is thus meaningfully
`
`distinct from Severinsky ’970 and Anderson. Liberty Mutual Ins. Co. v.
`
`Progressive Casualty Ins. Co., CBM2012-00003, Paper No. 7 at 2. The decision
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`misinterpreted or overlooked these teachings. Accordingly, the finding that “Ford
`
`… does not articulate reasonably how the implicit teaching of a stoichiometric
`
`ratio by Caraceni and Boberg is meaningfully distinctive from the express teaching
`
`of this same limitation by Severinsky and Anderson” is not supported by
`
`substantial evidence. Decision, paper 10, p. 11.
`
`C.
`
`Failure to institute trial on grounds 2–5 is unjust
`
`Ford is cognizant of the burden on the Board to speedily resolve many more
`
`review petitions than expected. Accordingly, Ford does not request rehearing of
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`every non-instituted ground. Ford only requests rehearing of non-instituted
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`grounds 2–5, and whether the decision not to institute these grounds was “just.” 37
`
`C.F.R. § 42.1(b).
`
`It would be unjust to simply institute trial on grounds 6–8 when Ford has
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`specifically identified non-redundant teachings in the prior art in connection with
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`grounds 2–5, and explained why those teachings are neither redundant as applied
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`to particular limitations of the claims, nor redundant of grounds 6–8. Petition,
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`paper 1, pp. 58–60.
`
`
`
`3
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`
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`As the Board is aware, Ford may be estopped from raising any ground that
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`“reasonably could have been raised.”1 Therefore, while providing for a speedy and
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`inexpensive resolution of this matter, the Board must also ensure that Ford has a
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`full, fair, and just hearing on the unpatentability issues before the Board.
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`
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`III. CONCLUSION
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`The purpose of requesting rehearing is two-fold. First, the request
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`demonstrates how the decision not to institute grounds 2–5 misapprehended or
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`overlooked the non-redundancy arguments in the petition. Second, while Ford
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`understands that the Board routinely denies requests for rehearing of allegedly
`
`redundant grounds, this request exhausts all administrative remedies in the event
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`
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`1 Though courts have not yet interpreted the meaning of “reasonably could have
`
`been raised,” the Board’s decision to refuse consideration of grounds deemed
`
`“redundant” amounts to a finding that such grounds were not reasonably raised. 35
`
`U.S.C. § 315(e). Unless the Board grants Ford’s request for rehearing, or enters a
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`new ground of unpatentability in view of a claim amendment, any future final
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`written decision will not address those grounds relying on Caraceni. Thus, Ford
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`could not reasonably raise all of the non-instituted grounds (2–5), and should not
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`be estopped from raising them in the future.
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`
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`4
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`Dated: October 14, 2014
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`that Ford desires to reassert the allegedly redundant grounds on appeal. Based on
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`the foregoing, Ford respectfully requests rehearing of non-instituted grounds 2–5.
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`Respectfully submitted,
`
`BROOKS KUSHMAN P.C.
`
`
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`
`
`/Sangeeta G. Shah/
`Sangeeta G. Shah ( Reg. No. 38,614)
`Frank A. Angileri (Reg. No. 36,733)
`Michael D. Cushion (Reg. No. 55,094)
`Andrew B. Turner (Reg. No. 63,121)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 64,121)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road; Suite 200
`Palo Alto, CA 94304-1125
`F +1 650 798 0310
`
`Attorneys for Petitioner
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`5
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`Request for Rehearing of Non-Instituted Grounds
`Case No.: IPR2014-00570
`
`CERTIFICATE OF SERVICE
`
`
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`
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on October 14, 2014, a copy of the Request For Rehearing Of Non-
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`Instituted Grounds was served on the patent owner via overnight courier at the
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`correspondence address of record for the subject patent as follows:
`
`Mr. Michael de Angeli
`34 Court Street
`Jamestown, RI 02835
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`Dated: October 14, 2014
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`Respectfully submitted,
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`BROOKS KUSHMAN P.C.
`
`
`
`
`
`/Sangeeta G. Shah/
`Sangeeta G. Shah ( Reg. No. 38,614)
`Frank A. Angileri (Reg. No. 36,733)
`Michael D. Cushion (Reg. No. 55,094)
`Andrew B. Turner (Reg. No. 63,121)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 64,121)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road; Suite 200
`Palo Alto, CA 94304-1125
`F +1 650 798 0310
`Attorneys for Petitioner
`
`
`
`6
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