Trials@uspto.gov
`571-272-7822
`
` Paper 18
`
`Entered: November 26, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
` Paper 18
`
`Entered: November 26, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`
`
`INTRODUCTION
`Patent Owner, Paice LLC & The Abell Foundation, Inc., requests
`
`rehearing (Paper 12, “Req. Reh’g.”) of the Board’s Decision (Paper 10,
`“Dec.”), which instituted inter partes review of claims 30–33, 35, 36, and 39
`of Patent No. 8,214,097 B2 (“the ’097 patent”). In particular, Paice
`contends that the Board should not have instituted review of dependent
`claims 32 and 33 as challenged under grounds 7 and 8 of the Petition. Req.
`Reh’g. 1. Paice’s request for rehearing is denied.
`ANALYSIS
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`
`a panel will review the decision for an abuse of discretion.” An abuse of
`discretion occurs when a decision is based on an erroneous interpretation of
`the law, or if a factual finding is not supported by substantial evidence, or if
`the decision represents an unreasonable judgment in weighing relevant
`factors. Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
`Paice has not demonstrated an abuse of discretion in our decision to institute
`review of challenged claims 32 and 33.
`
`Arguing that our Decision misapprehended or overlooked certain
`arguments in its Preliminary Response (Paper 8), Paice hones in on our
`statement that Paice did “not argue” dependent claims 32 and 33
`“separately” from independent claim 30.1 Req. Reh’g. 1. We note that
`
`
`1 Ford asserted two different grounds against each of claims 32 and
`
`33. Pet. 4. Paice, in its arguments, consolidated the different grounds
`together. Prelim. Resp. 26–29 (grounds 4 and 7), 29–33 (grounds 5 and 8).
`1
`
`
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`
`Paice unquestionably argued these claims separately. See Prelim. Resp. 26–
`33. What the Decision should have said was that Paice did “not persuasively
`argue” dependent claims 32 and 33, as its arguments are premised on
`attorney conjecture without sufficient evidentiary support. See Prelim Resp.
`26–33; Req. Reh’g. 4–7. Indeed, our Decision went on to state that “[b]ased
`on our review of the detailed claim chart and reasoning presented in the
`Petition, we are persuaded that Ford has shown sufficiently that the
`dependent limitations are taught by Severinsky and Anderson . . . together
`with Yamaguchi (claim 32) and Katsuno (claim 33).” Dec. 11.
`
`More specifically, Ford’s Petition cited to specific disclosures in
`Yamaguchi and Katsuno, in support of its position that dependent claims 32
`and 33 are unpatentable. Pet. 55–58. For example, with respect to claim 32,
`Yamaguchi describes an embodiment in which the engine is not started until
`it is “sufficiently heated” for ignition, in other words, “the temperature of the
`engine 1 having reached a predetermined value.” Ex. 1007, 9:55–10:19,
`11:27–33; 13:18–21, Fig. 11. That disclosure, buttressed by the testimony
`of Ford’s declarant, Dr. Stein, evinces a reasonable likelihood that
`Yamaguchi teaches the limitation of claim 32. See Ex. 1002 ¶¶ 401–406
`(discussing Yamaguchi’s disclosure of claim 32).
`
`To the extent that Paice takes issue with Yamaguchi’s disclosure that
`the engine is heated prior to “starting the engine” as opposed to prior to
`“supplying fuel for starting the engine” (Req. Reh’g. 4–5), we are not
`persuaded. Common sense dictates that operation of Yamaguchi’s engine
`depends on the introduction of fuel. See, e.g., Ex. 1006 at 7 (describing
`
`2
`
`
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`
`“hot-start” of the engine in terms of “air to fuel ratio”); Ex. 1002 ¶¶ 79, 403–
`406. Paice’s attempt to contravene common sense lacks merit. As such, we
`are not persuaded of error in our instituting review of claim 32.
`
`With respect to claim 33, Ford’s declarant, Dr. Stein, explains in
`detail how Katsuno teaches that, during starting of the engine (i.e., open loop
`control), the air-fuel ratio cycles “around 1.0 of the stoichiometric ratio” but
`“no more than 1.2 of the stoichiometric ratio.” Ex. 1002 ¶¶ 408–419
`(explaining Katsuno Figs. 5B, 5C). Again, Paice fails to proffer any credible
`evidence to rebut Dr. Stein’s detailed testimony, instead choosing to argue in
`conclusory and unsupported fashion that Katsuno’s air-fuel ratio correction
`of 1.0 is inapplicable “when the engine is in a starting state.” Prelim. Resp.
`31–33; Req. Reh’g. 7. But, in direct contrast to Paice’s argument, Fig. 5C of
`Katsuno expressly depicts the 1.0 correction amount as being applied in the
`starting state of the engine. Ex. 1008, 5:60-68, Fig. 5C; Ex. 1002 ¶ 413. As
`such, we are not persuaded of error in our instituting review of claim 33.
`
`Although we may have misstated the extent of Paice’s arguments
`regarding dependent claims 32 and 33, we nonetheless conclude that such
`oversight was harmless and does not cause us to reach a different conclusion
`as to the adequacy of Ford’s challenge of those claims. In sum, Paice has
`not demonstrated an abuse of discretion in our instituting inter partes review
`of claim 32 on the ground of obviousness over Severinsky, Anderson, and
`Yamaguchi (ground 7), or claim 33 on the ground of obviousness over
`Severinsky, Anderson, Yamaguchi, and Katsuno (ground 8).
`
`3
`
`
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`
`
`CONCLUSION
`For the foregoing reasons, Paice’s request for rehearing is denied.
`
`
`
`FOR PETITIONER:
`
`Sangeeta G. Shah
`FPGP0106IPR1@brookskushman.com
`
`Frank A. Angileri
`FPGP0106IPR1@brookskushman.com
`
`Kevin Greenleaf
`kevin.greenleaf@dentons.com
`
`Lissi Mojica
`lissi.mojica@dentons.com
`
`
`
`
`
`FOR PATENT OWNER:
`
`Timothy W. Riffe
`riffe@fr.com
`
`Kevin E. Greene
`IPR36351-0012IP1@fr.com
`
`4
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