EXHIBIT 2008
`
`EXHIBIT 2008
`
`
`
`EXHIBIT 2008
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 20
`Entered: July 22, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LAROSE INDUSTRIES, LLC
`Petitioner
`
`v.
`
`CAPRIOLA CORP.
`Patent Owner
`____________
`
`Case IPR2013-00120 (JTA)1
`Patent 7,731,558 B2
`
`
`
`Before KEVIN F. TURNER, JUSTIN T. ARBES, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`1 Case IPR2013-00121 (JTA) has been joined with this proceeding.
`
`Patent Owner Exhibit 2008
`Petition for IPR Review of Patent No. 8,059,015
`Page 1
`
`
`
`Case IPR2013-00120 (JTA)
`Patent 7,731,558 B2
`
`
`Introduction
`Petitioner filed a request for rehearing (Paper 19, “Rehearing
`Request”) of the Board’s decision (Paper 14, “Decision”) instituting an inter
`partes review of claims 1-27 of Patent 7,731,558 B2 (the “’558 patent”). In
`the Decision, the Board ordered a trial on three grounds of unpatentability
`asserted in the Petition. Dec. 27. Also, in Case IPR2013-00121, which was
`joined with Case IPR2013-00120, the Board ordered a trial on one additional
`ground. IPR2013-00121, Paper 11 at 22-23. Thus, the trial in the instant
`proceeding is based on the following grounds:
`Claims 1-27 under 35 U.S.C. § 103(a) as unpatentable over
`Teller (Ex. 1006) and Rosen (Ex. 1005);
`Claims 1-6, 8-22, 24, 26, and 27 under 35 U.S.C. § 102(e) as
`anticipated by Doherty (Ex. 1020);
`Claims 7, 23, and 25 under 35 U.S.C. § 103(a) as unpatentable
`over Doherty and Rosen; and
`Claims 18-25 under 35 U.S.C. § 103(a) as unpatentable over
`Feuerborn (Ex. 1022) and Rosen.
`Petitioner contends that the Board erred in not also instituting a trial based
`on the following two asserted grounds:
`Claims 1-6, 8-22, 24, 26, and 27 under 35 U.S.C. § 102(b) as
`anticipated by Atomic Blox (attached as Ex. B to Ex. 1018); and
`Claims 7, 23, and 25 under 35 U.S.C. § 103(a) as unpatentable
`over Atomic Blox and Rosen.
`For the reasons stated below, Petitioner’s request is denied.
`
`
`Analysis
`When rehearing a decision on petition, the Board reviews the decision
`for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting
`rehearing bears the burden of showing an abuse of discretion. 37 C.F.R.
`
`
`2
`
`
`Patent Owner Exhibit 2008
`Petition for IPR Review of Patent No. 8,059,015
`Page 2
`
`
`
`Case IPR2013-00120 (JTA)
`Patent 7,731,558 B2
`
`§ 42.71(d).
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes review were
`promulgated taking into account their effect on “the economy, the integrity
`of the patent system, the efficient administration of the Office, and the
`ability of the Office to timely complete proceedings.” The Board’s rules
`provide that they are to be “construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, in determining whether to institute an inter partes review of a patent,
`the Board may “deny some or all grounds for unpatentability for some or all
`of the challenged claims.” 37 C.F.R. § 42.108(b).
`In rendering the Decision, the Board observed that, according to the
`Affidavit of Gregory J. Doherty (Ex. 1018) submitted with the Petition, the
`illuminated building blocks disclosed in the Doherty reference are embodied
`in the Atomic Blox product packaging and instruction manual. Dec. 26. The
`Board exercised its discretion in denying the asserted grounds based on
`Atomic Blox as redundant in light of the determination that there is a
`reasonable likelihood that the challenged claims are unpatentable based on
`the Doherty reference itself. Id. Petitioner argues that the Board erred in
`doing so. Rehearing Req. 1-3. Specifically, Petitioner contends that while
`Atomic Blox is prior art to the ’558 patent under 35 U.S.C. § 102(b), Doherty
`is prior art under 35 U.S.C. § 102(e) and Patent Owner “may attempt to
`antedate Doherty and remove [it] as prior art.”2 Rehearing Req. 2.
`Therefore, according to Petitioner, Atomic Blox is “potentially more
`relevant” than Doherty. Id.
`
`
`2 The application that issued as the ’558 patent was filed on August 15,
`2007. Doherty was filed on February 7, 2006.
`
`
`3
`
`
`Patent Owner Exhibit 2008
`Petition for IPR Review of Patent No. 8,059,015
`Page 3
`
`
`
`Case IPR2013-00120 (JTA)
`Patent 7,731,558 B2
`
`
`Petitioner’s argument is not persuasive. The Board is charged with
`securing the just, speedy, and inexpensive resolution of every proceeding,
`and has the discretion to deny some or all grounds to ensure that objective is
`met. 37 C.F.R. §§ 42.1(b), 42.108(b). As such, the Board maintains
`impartiality in weighing relevant factors of a case to render a decision. As
`explained in our decisions in the joined proceedings, we evaluated all of the
`grounds of unpatentability asserted by Petitioner and instituted an inter
`partes review based on four grounds, setting a schedule for the joined
`proceedings that contemplates a final decision within one year of institution.
`We are not persuaded that the Decision should be altered based on what the
`parties “may” argue in the future or so that Petitioner may be in a better
`position to prevail. We also note that the focus of redundancy is on whether
`a petitioner articulated a meaningful distinction in terms of relative strengths
`and weaknesses with respect to application of the prior art reference
`disclosures to one or more claim limitations. See, e.g., CBM2012-00003,
`Paper 7 at 2-12. Petitioner has not explained any such strengths and
`weaknesses, and relies solely on the dates of Doherty and Atomic Blox. For
`these reasons, we are not persuaded that the Board abused its discretion in
`not going forward on the Atomic Blox grounds.
`Petitioner also requests, in the alternative, that the Board
`“conditionally approve the Atomic Blox Grounds so that the trial can proceed
`on these grounds in the event that the Patent Owner attempts to remove
`Doherty as prior art.” Rehearing Req. 2-3. Petitioner does not identify any
`authority for such a procedure. Moreover, doing so would separate the
`proceeding into two phases and thereby introduce unnecessary delay and
`inefficiency. Consequently, we decline Petitioner’s request.
`
`
`
`
`4
`
`
`
`Patent Owner Exhibit 2008
`Petition for IPR Review of Patent No. 8,059,015
`Page 4
`
`
`
`Case IPR2013-00120 (JTA)
`Patent 7,731,558 B2
`
`
`Petitioner has not carried its burden of demonstrating that the decision
`not to include the asserted grounds of unpatentability based on Atomic Blox
`in the instant inter partes review constitutes an abuse of discretion.
`In consideration of the foregoing, it is hereby ORDERED that
`Petitioner’s request for rehearing is denied.
`
`
`
`
`
`5
`
`
`
`Patent Owner Exhibit 2008
`Petition for IPR Review of Patent No. 8,059,015
`Page 5
`
`
`
`Case IPR2013-00120 (JTA)
`Patent 7,731,558 B2
`
`PETITIONER:
`
`Ralph W. Selitto, Jr.
`John K. Kim
`GREENBERG TRAURIG, LLP
`200 Park Avenue
`Florham Park, NJ 07932
`selittor@gtlaw.com
`kimjo@gtlaw.com
`
`PATENT OWNER:
`
`Justin R. Sauer
`Robert H. Thornburg
`ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A.
`255 South Orange Ave.
`Suite 1401
`Orlando, FL 32801
`jsauer@addmg.com
`
`
`
`
`6
`
`
`
`Patent Owner Exhibit 2008
`Petition for IPR Review of Patent No. 8,059,015
`Page 6
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