Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: July 23, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZETEC, INC.,
`Petitioner,
`
`v.
`
`WESTINGHOUSE ELECTRIC COMPANY, LLC,
`Patent Owner.
`
`Case IPR2014-00384
`Patent 6,823,269 B2
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, SCOTT R. BOALICK, Vice Chief
`Administrative Patent Judges, KEVIN F. TURNER,
`BARBARA A. BENOIT, and NEIL T. POWELL, Administrative
`Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`IPR2014-00384
`Patent 6,823,269 B2
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`INTRODUCTION
`
`Zetec, Inc. (“Petitioner”) filed an amended Petition (Paper 5, “Pet.”)
`
`requesting an inter partes review of claims 1-18 (the “challenged claims”) of
`
`U.S. Patent No. 6,823,269 B2 (Exhibit 1001, “the ’269 patent”). Patent
`
`Owner, Westinghouse Electric Company, filed a Preliminary Response.
`
`Paper 8 (“Prelim. Resp.”). For the reasons that follow, we deny institution
`
`of an inter partes review.
`
`Petitioner represents that the ’269 patent was asserted in
`
`Related Matters
`
`Westinghouse Electric Company LLC v. Zetec, Inc., Case No. 2:13-cv-01124
`
`(W.D. Pa.). Pet. 1; see also Paper 6 (Patent Owner’s Mandatory Notice).
`
`The ’269 Patent
`
`The ’269 patent issued November 23, 2004, from an application filed
`
`April 12, 2002, and relates to methods of synthesizing nondestructive
`
`examination data to be used for training data analysts and/or testing
`
`inspective techniques. Ex. 1001, Abstract, 4:40-44 (claim 1), 5:28-30
`
`(claim 11), 6:10-12 (claim 14). The ’269 patent explains that nondestructive
`
`examination of components is important particularly in the periodic
`
`inspection of certain tubing in a pressurized water nuclear reactor steam
`
`supply system. Id. at 1:11-16. More specifically, inspection of the tubing
`
`“is essential to assure that radioactive coolant from the reactor does not
`
`contaminate” other parts of the system. Id. at 1:16-22.
`
`To inspect the tubing, a probe is inserted into one of the hundreds of
`
`tubes to be inspected in a nuclear reactor, and signals from the probe then
`
`are analyzed to identify flaws in the tube. Id. at 1:32-44. If flaws are
`
`2
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`IPR2014-00384
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`detected, then the “tubing is plugged and thus taken out of service to reduce
`
`the likelihood of failure during the forthcoming reactor operating cycle.” Id.
`
`at 1:43-47. According to the ’269 patent, “a great deal of experience” is
`
`needed to interpret the signal data and identify the existence, type, and
`
`extent of any flaws that may be present in the tubing. Id. at 1:40-44. Also,
`
`obtaining signal data representative of various kinds of flaws, for use in
`
`training data analysts and testing inspection techniques, is extremely
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`difficult and expensive. Id. at 1:49-58.
`
`A purpose of the invention of the ’269 patent is to provide signal data
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`representative of various flaws and “suitable for training and qualifying
`
`analysts, and testing inspection techniques.” Id. at 1:59-62. To do so, the
`
`’269 patent describes techniques “for the injection of electronic
`
`nondestructive examination signals either from field data or data obtained
`
`from specimens, into a data stream to produce a data set that is the
`
`combination of the two data sets, i.e., the basic data stream plus the injected
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`signal.” Id. at 2:50-54.
`
`Illustrative Claims
`
`The ’269 patent includes independent claims 1, 11, and 14, which are
`
`reproduced below and are illustrative of the claimed subject matter:
`
`1. A method of synthesizing nondestructive examination
`data to be used for training data analysts and/or testing
`inspection techniques comprising the steps of:
`
`generating data collected at a field site of a component
`from non-destructive examination of the component, which
`data collected at the field site includes noise;
`
`creating a specimen that simulates the component
`undergoing non-destructive examination with a selected flaw;
`
`3
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`IPR2014-00384
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`generating nondestructive examination data at a
`laboratory site, remote from the field site, from the specimen of
`the component undergoing non-destructive examination; and
`
`the nondestructive
`some of
`least
`combining at
`examination data collected at the field site with at least some of
`the nondestructive examination data collected at the laboratory
`site to establish a combined data train that reflects the
`nondestructive examination response to the selected flaw in a
`background representative of data collected at the field site.
`
`Ex. 1001, 4:42-61. Independent claim 11 includes the limitations recited by
`
`claim 1 and additionally recites:
`
`separately calibrating the data collected at the field site
`and the data collected at the laboratory site so that the data
`collected at the field site and the data collected at the laboratory
`site have the same relative signal strengths corresponding to a
`first flaw, wherein the calibration is achieved by the steps of
`operating a first detector used at the field site to non-
`destructively test a first flaw and provide a first output
`indicative thereof and adjusting the first output received from
`the first detector in response to the first flaw by a first
`calibration factor to modify the first output to exhibit a first
`characteristic; and
`
`operating a second detector used at the laboratory site to
`non-destructively test a second flaw which is substantially
`identical to the first flaw and provide a second output indicative
`thereof and adjusting the second output by a second calibration
`factor to modify the second output to exhibit the first
`characteristic.
`
`Id. at 5:28-58. Independent claim 14 includes the limitations recited by
`
`claim 1 and additionally recites:
`
`separately calibrating the data collected at the field site
`and the data collected at the laboratory site so that the data
`collected at the field site and the data collected at the laboratory
`site have the same relative signal strengths corresponding to a
`first flaw;
`
`4
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`and storing the data collected at the field site along with a
`first calibration factor obtained from the step of calibrating the
`data collected at the field site and storing data collected at the
`laboratory site along with a second calibration factor obtained
`from the step of calibrating the data collected at the laboratory
`site.
`
`Id. at 6:10-39.
`
`LEGAL STANDARDS
`
`The standard for instituting an inter partes review is set forth in 35
`
`U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`35 U.S.C. § 314(a). The standard for institution is written in permissive
`
`terms—identifying when the United States Patent and Trademark Office
`
`(“the Office”) is authorized to institute an inter partes review. Thus,
`
`Congress has given the Office discretion whether to institute a review or not
`
`institute a review.
`
`Congress has mandated that the Office must make a determination
`
`whether to institute an inter partes review within three months after
`
`receiving a Preliminary Response to the Petition (or, if no Preliminary
`
`Response is filed, three months after the last date on which such response
`
`may be filed) and, if instituted, the Office must issue a final written
`
`determination in an inter partes review not more than one year after
`
`institution, absent a showing of good cause or other circumstances not
`
`applicable here. 35 U.S.C. §§ 314(b), 316(a)(11).
`
`5
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`To be considered, a petition for inter partes review must identify, “in
`
`writing and with particularity, each claim challenged, the grounds on which
`
`the challenge to each claim is based, and the evidence that supports the
`
`grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The
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`Board’s rules further specify that a petition must include “[a] full statement
`
`of the reasons for the relief requested, including a detailed explanation of the
`
`significance of the evidence” and “where each element of [each challenged]
`
`claim is found in the prior art patents or printed publications relied upon
`
`[and] the relevance of the evidence to the challenge raised.” 37 C.F.R.
`
`§§ 42.22(a)(2), 42.104(b)(4), (5). These rules were promulgated taking into
`
`consideration, among other things, “the efficient administration of the
`
`Office, and the ability of the Office to timely complete proceedings.”
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`35 U.S.C. § 316(b).
`
`THE PETITION AND THE PRELIMINARY RESPONSE
`
`Claim Construction in the Petition
`
`Petitioner filed a Petition (Paper 2) that did not include any express
`
`claim construction for individual claim terms. The Board found that Petition
`
`defective for not identifying “[h]ow the challenged claim is to be construed,”
`
`and required correction. Paper 4 at 2 (quoting 37 C.F.R. § 42.104(b)(3)).
`
`The Board also noted “[i]n most cases, claim construction is an important
`
`step in the determination of whether the challenged claims are unpatentable
`
`over the cited prior art.” Id.
`
`In response, Petitioner filed an amended Petition that proposed
`
`constructions for six claim terms “based on their ordinary meaning in view
`
`of the full disclosure of the ’269 Patent.” Pet. 7-8. Petitioner’s proposed
`
`constructions, however, do not cite any portion of the specification of the
`
`6
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`’269 patent or provide any other evidence as to why the proffered
`
`constructions reflect each term’s ordinary and customary meaning, as would
`
`be understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`Numerous Asserted Grounds in the Petition
`
`The Petition lists, in a summary table, 68 grounds of unpatentability
`
`that rely on one or more of fourteen references, including Sullivan,1 Begley,2
`
`Hölzl,3 Junker,4 Eberhard,5 Hedengren,6 Sapia,7 Winslow,8 and Holt.9 Pet. 2-
`
`7. Many of the 68 listed grounds, however, represent groups of multiple
`
`grounds. For example, the Petition includes a ground asserting claim 1
`
`would have been obvious “over Hedengren et al. in view of Hölzl, Junker et
`
`al., Begley et al., or Sullivan” (Pet. 4), which, in essence, is four grounds:
`
`Hedengren and Hölzl; Hedengren and Junker; Hedengren and Begley; and
`
`
`1 S.P. SULLIVAN, Guidelines for Qualifying Eddy Current Technology for
`CANDU Steam Tube Inspection, CANDU Owners Group COG-98-371-I,
`March 1999 (Ex. 1002) (“Sullivan”).
`2 J.A. BEGLEY, ET AL. Depth Based Structural Analysis Methods for SG
`Circumferential Indications, Interim Report TR-107197-P1, Westinghouse
`Electric Corporation and Aptech Engineering Services, Inc., December 1997
`(Ex. 1018) (“Begley”).
`3 U.S. Patent No. 6,566,871 B2, issued May 6, 2003 (Ex. 1011) (“Hölzl”).
`4 U.S. Patent No. 4,763,274, issued Aug. 9, 1988 (Ex. 1012) (“Junker”).
`5 U.S. Patent No. 4,920,491, issued Apr. 24, 1990 (Ex. 1007) (“Eberhard”).
`6 U.S. Patent No. 5,371,462, issued Dec. 6, 1994 (Ex. 1009) (“Hedengren”).
`7 U.S. Patent No. 4,942,545, issued July 17, 1990 (Ex. 1008) (“Sapia”).
`8 European Patent Application Publication EP 0 990 897 A2, published
`April 5, 2000 (Ex. 1014) (“Winslow”).
`9 U.S. Patent No. 4,194,149, Mar. 18, 1980 (Ex. 1005) (“Holt”).
`
`
`7
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`Hedengren and Sullivan. In another example, the Petition includes a ground
`
`asserting claim 16 would have been obvious over “any of Hölzl, Holt,
`
`Eberhard et al., or Hedengren et al. in view of Junker et al. and Sullivan or
`
`Begley et al.” (Pet. 7), which is, in reality, eight grounds. Of the 68 grounds
`
`presented in the summary table, at least 22 are multiple grounds resulting, at
`
`least, in an additional 59 grounds. See Pet. 4-7. Thus, the Petition presents
`
`no fewer than 127 asserted grounds of unpatentability.
`
`Anticipation Assertions in the Petition
`
`Anticipation requires each limitation recited in a claim to be found,
`
`either expressly or inherently described, in a single prior art reference,
`
`arranged as in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`
`1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722
`
`F.2d 1542, 1548 (Fed. Cir. 1983)); Verdegaal Bros. v. Union Oil Co. of
`
`California, 814 F.2d 628, 631 (Fed. Cir. 1987). In an apparent attempt to
`
`satisfy these requirements, the Petition in this case presents underdeveloped
`
`arguments.
`
`Regarding the assertion that claim 1 is anticipated by Sullivan, for
`
`example, the Petition states only the following:
`
`Sullivan discloses each element of Claim 1 of the ’269
`patent. The specific references are listed with the claim
`elements in the claim chart below. Sullivan refers to the
`process as “signal injection” p. 9. The “field site” data of the
`claim are taken from an “in-service tube” in Sullivan. Flawed
`tubes are created in the lab (p. 9), scanned and the flaw signal
`superimposed on the in-service tube data (p. 9) to create a
`combined data signal.
`
`8
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`Pet. 16-17.10 An excerpt from the Petition’s claim chart is set forth below,
`
`with elements of claim 1 appearing in the left column and the corresponding
`
`portion where the limitation allegedly is disclosed in Sullivan appearing in
`
`the right column:
`
`Claim 1
`creating a specimen that simulates the
`component undergoing non-
`destructive examination with a
`selected flaw;
`generating nondestructive
`examination data at a laboratory site,
`remote from the field site, from the
`specimen of the component
`undergoing non[]destructive
`examination;
`
`Pet. 17.
`
`Anticipated by Sullivan (Ex. 1002)
` “These laboratory measurements may consist of
`scans of the flawed tubes” (p. 9).
`
` “Laboratory methods have been developed that can
`induce real fatigue cracks and SCC [stress corrosion
`cracks] in SG [steam generator] tubes” (p.4).
`
`Neither the textual argument, nor the claim chart, explains adequately
`
`where each element of claim 1 is found in the reference, much less how
`
`these elements are arranged as in the claim. For example, the Petition does
`
`not explain adequately how Sullivan’s equivocating description that
`
`laboratory measurements may consist of scans of the flawed tubes discloses
`
`“creating a specimen that simulates the component undergoing non-
`
`destructive examination with a selected flaw,” as recited in claim 1.
`
`See Pet. 17. Nor does the Petition explain sufficiently how Sullivan’s
`
`indication of the existence of laboratory methods to induce flaws discloses
`
`the specific claim element that requires generating data from a particular
`
`component—“from the specimen of the component undergoing non-
`
`destructive examination.” See id.
`
`
`10 The Petition refers to the page numbers at the top of the page, not the
`exhibit page numbers appearing at the bottom of the page. For clarity, we
`will adopt the same convention.
`
`9
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`The Petition also presents sparse analyses for the other grounds of
`
`anticipation asserted against claim 1. For example, the Petition includes an
`
`assertion that Begley anticipates claim 1, in part, because Begley’s
`
`description of cutting sectors of flaw signals to provide a large database of
`
`flaw signals and Begley’s description of preparing test data using signal
`
`flaws disclose the required combining step, as recited in claim 1. Pet. 24.
`
`The Petition, however, does not explain adequately how creating a database
`
`of flaw signals and preparing test data disclose the particular elements of the
`
`combining step in the manner claimed—combining nondestructive
`
`examination data collected at the field site with nondestructive examination
`
`data collected at the laboratory site to establish a combined data train that
`
`reflects the nondestructive examination response to the selected flaw in a
`
`background representative of data collected at the field site.
`
`Moreover, the Petition includes a number of contentions that a claim
`
`element is inherent in a purportedly anticipating reference, without sufficient
`
`explanation and evidence why such a feature necessarily would be present.
`
`See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002)
`
`(“Under the principles of inherency, if the prior art necessarily functions in
`
`accordance with, or includes, the claimed limitations, it anticipates.”
`
`(citations and internal quotation marks omitted)).
`
`For example, claim 2 depends from claim 1 and further recites “the
`
`steps of separately calibrating the data collected at the field site and the data
`
`collected at the laboratory site so that the data collected at the field site and
`
`the data collected at the laboratory site have the same relative signal
`
`strengths corresponding to a first flaw.” The Petition, without relying on
`
`expert testimony or including further analysis as to what one skilled in the
`
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`art would understand Hölzl to disclose, contends claim 2 is anticipated by
`
`Hölzl, relying in part on a purportedly inherent disclosure by Hölzl. The
`
`argument regarding claim 2 is:
`
`Claim 2 is anticipated by Hölzl (Ex. 1011). Claim 2 is
`directed to calibrating the lab and field data to the same signal
`strengths, i.e. amplitude. This is a common sense step for any
`measurement method. Hölzl discloses that fault signals are
`displayed as a function of amplitude and phase (c. 1, ll. 28-32).
`It is inherent in Hölzl that the two signals would have to be
`aligned as to signal strength to produce a consistent combined
`data stream.
`
`Pet. 28 (italic emphasis added).
`
`Similarly, claim 4, which depends from claim 1, additionally recites
`
`“separately calibrating the data collected at the field site and the data
`
`collected at the laboratory site so that the data collected at the field site and
`
`the data collected at the laboratory site have the same relative signal
`
`orientation.” The Petition asserts, without further support or evidence, that
`
`“[i]t is inherent in Hölzl that the two signals would have to be aligned as to
`
`signal orientation to produce a consistent combined data stream that
`
`consistently reflects material thickness and therefore any damage.” Pet. 28.
`
`Obviousness Assertions in the Petition
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
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`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`The Petition, however, addresses the issue of obviousness with
`
`perfunctory assertions. For example, turning again to the grounds asserted
`
`against claim 1, the Petition also includes eight grounds that claim 1 would
`
`have been obvious over various references. Many of those asserted grounds
`
`are analyzed together—claim 1 would have been obvious over Hedengren in
`
`view of any of Hölzl, Junker, Begley, or Sullivan (Pet. 31-32), and claim 1
`
`would have been obvious over Holt in view of Junker, Sullivan, or Begley
`
`(Pet. 32-34).
`
`The Petition does not include expert testimony or other evidence to
`
`support its allegations concerning reasons why one skilled in the art would
`
`have combined features of references to arrive at the claimed invention. See,
`
`e.g., Pet. 18 (asserting claim 2 would have been obvious over Sullivan in
`
`view of any of Sapia, Winslow, or Junker); Pet. 19 (asserting claim 3 would
`
`have been obvious over Sullivan in view of Winslow or Junker).
`
`Moreover, many of the obviousness grounds in the Petition allege
`
`limitations are obvious, “common sense” steps without a specific prior art
`
`reference. For example, the Petition asserts independent claim 14 would
`
`have been obvious over Sullivan because, in part, two recited steps “are
`
`obvious common sense measures.” Pet. 45; see also Pet. 47 (alleging the
`
`same with regard to the assertion that independent claim 14 would have been
`
`obvious over Begley); Pet. 49 (alleging the same with regard to the assertion
`
`that independent claim 14 would have been obvious over Hölzl in view of
`
`Junker).
`
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`The reliance on “common sense” is unhelpful in this case because the
`
`Petition fails to explain adequately or provide sufficient evidence as to why
`
`one skilled in the art “would store both data and the calibration factors to
`
`ensure integrity of the data and that the next user of the data was aware of
`
`the calibration factor used in obtaining the data” (Pet. 45).
`
`Patent Owner’s Preliminary Response
`
`Patent Owner’s remarks in its Preliminary Response similarly are
`
`sparse, presumably due to having to address many multiple grounds in page
`
`limits assigned to that response. For example, Patent Owner presents only a
`
`single paragraph discussion of the asserted ground that claim 3 would have
`
`been obvious over Sullivan in view of Winslow or Junker (Prelim. Resp. 12,
`
`¶ D), and only a single paragraph discussion of the asserted ground that
`
`claim 3 would have been obvious over Sullivan in view of Sapia or Hölzl,
`
`and in further view of Sullivan (Prelim. Resp. 13, ¶ E). See also Prelim.
`
`Resp. passim § V, ¶¶ H-M, O-W, Z, AA-GG, LL, MM, OO, PP, RR, SS,
`
`ZZ, AAA, CCC-FFF, KKK-QQQ (each a single paragraph challenging a
`
`ground asserted in the Petition).
`
`ANALYSIS
`
`“Although parties are given wide latitude in how they present their
`
`cases, the Board’s experience is that the presentation of an overwhelming
`
`number of issues tends to detract from the argument being presented . . . .
`
`Thus, parties should . . . focus on concise, well-organized, easy-to-follow
`
`arguments supported by readily identifiable evidence of record.” Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012).
`
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`In contrast to that guidance, the Petition asserts a large number of
`
`grounds and presents underdeveloped arguments against each claim.
`
`Moreover, numerous grounds are presented and argued together in the
`
`Petition, thereby obfuscating the arguments as to each ground. Although the
`
`Petition includes proposed claim constructions, the bases of the proffered
`
`constructions are not stated. In addition, the sparse arguments and claim
`
`charts in the Petition do not adequately tie the evidence of the references to
`
`specific claim limitations. Further, sufficient evidence is not presented to
`
`support assertions that limitations were inherent in a particular reference or
`
`would have been “common sense” steps. Nor does the Petition include
`
`adequate supporting evidence for obviousness rationales for combining the
`
`teachings of the cited references.
`
`For these reasons, the Petition does not comply with the Board’s rules
`
`that a petition must include “[a] full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the
`
`evidence” and “where each element of [each challenged] claim is found in
`
`the prior art patents or printed publications relied upon [and] the relevance
`
`of the evidence to the challenge raised.” 37 C.F.R. §§ 42.22(a)(2),
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`42.104(b)(4),(5).
`
`Further, the Petition places a significant and unfair burden on the
`
`Patent Owner to respond adequately to underdeveloped arguments for
`
`numerous asserted grounds. The burden on the Patent Owner is evident in
`
`its cursory responses to the numerous grounds asserted in the Petition,
`
`presumably necessitated by the Petition’s underdeveloped arguments. See,
`
`e.g., Prelim. Resp. 12, ¶ D (presenting one paragraph challenging the
`
`asserted ground that claim 3 would have been obvious over Sullivan in view
`
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`IPR2014-00384
`Patent 6,823,269 B2
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`of Winslow or Junker); Prelim. Resp. 13, ¶ E (presenting one paragraph
`
`challenging the asserted ground that claim 3 would have been obvious over
`
`Sullivan in view of Sapia or Hölzl, and in further view of Sullivan).
`
`Moreover, under these circumstances, attempting to evaluate fully the
`
`numerous grounds and underdeveloped assertions in the Petition to
`
`determine whether Petitioner has shown that it would be likely to prevail in
`
`any unpatentability challenge would place a significant burden on the Board
`
`and contravene the efficient administration of the Office. Cf. Heckler v.
`
`Chaney, 470 U.S. 821, 831 (1985) (acknowledging an agency decision not to
`
`undertake permitted action “often involves a complicated balancing of a
`
`number of factors which are peculiarly within its expertise”); Schumer v.
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`Lab. Computer Sys., Inc., 308 F.3d 1304, 1316 (Fed. Cir. 2002) (“It is not
`
`our task, nor is it the task of the district court, to attempt to interpret
`
`confusing or general testimony to determine whether a case of invalidity has
`
`been made out . . . .”).
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`Therefore, we decline to expend our resources scouring the numerous
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`grounds for one that demonstrates a reasonable likelihood that Petitioner
`
`would prevail in showing unpatentability of at least one of the claims
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`challenged in the Petition (see 35 U.S.C. § 314(a)). Nor will we attempt to
`
`fit evidence together into a coherent explanation that supports an argument
`
`that demonstrates a reasonable likelihood that Petitioner would prevail. See
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`Stampa v. Jackson, 78 USPQ2d 1567, 1571 (BPAI 2005) (quoting Ernst
`
`Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 111-12 (2d Cir. 1999)
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`(“Appellant’s Brief is at best an invitation to the court to scour the record,
`
`research any legal theory that comes to mind, and serve generally as an
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`advocate for appellant. We decline the invitation.”)).
`
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`IPR2014-00384
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`Moreover, in the present circumstances, to attempt to determine,
`
`within the three-month period mandated by Congress, whether any of the
`
`grounds asserted by the Petitioner shows that there is a reasonable likelihood
`
`that Petitioner would prevail on at least one of the claims challenged in the
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`Petition undermines the Board’s ability to complete determinations
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`regarding other petitions awaiting decisions on institution and to complete
`
`instituted trials in the time periods mandated by Congress. See 35 U.S.C.
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`§§ 314(b), 316(a)(11); cf. Heckler v. Chaney, 470 U.S. at 831 (indicating an
`
`agency, when deciding whether to take action in a particular matter, must
`
`determine whether its resources are best spent on one matter or another).
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`CONCLUSION
`
`The Office promulgated regulations concerning the requirements for a
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`petition for inter partes review, taking into consideration “the efficient
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`administration of the Office[] and the ability of the Office to timely
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`complete proceedings instituted,” among other factors. 35 U.S.C. § 316(b).
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`Further, we are to construe our rules “to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).
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`Therefore, we exercise our discretion and do not institute an inter
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`partes review of any claim in the ’269 patent for reasons of administrative
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`efficiency. See 37 C.F.R. § 42.108.
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`For the foregoing reasons, it is:
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`ORDER
`
`ORDERED that the Petition is denied as to all challenged claims, and
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`no trial is instituted.
`
`
`
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`IPR2014-00384
`Patent 6,823,269 B2
`
`
`
`For PETITIONER:
`
`Manny D. Pokotilow
`Nicholas Tinari
`CAESAR, RIVISE, BERNSTEIN, COHEN & POKOTILOW, LTD.
`mpokotilow@crbcp.com
`nmtinari@crbcp.com
`
`
`
`For PATENT OWNER:
`
`Alan G. Towner
`Douglas M. Hall
`PIETRAGALLO, GORDON, ALFANO, BOSICK & RASPANTI, LLP
`agt@pietragallo.com
`dmh@pietragallo.com
`
`17
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`