EXHIBIT 2007
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`EXHIBIT 2007EXHIBIT 2007
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`EXHIBIT 2007EXHIBIT 2007
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`Paper No. 18
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` August 23, 2013
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`Trials@uspto.gov
`571.272.7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SCENTAIR TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`
`
`
`PROLITEC, INC.
`Patent Owner
`____________
`
`Case IPR2013-00179
`Patent 7,712,683
`____________
`
`
`
`Before JAMESON LEE, MICHAEL J. FITZPATRICK, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Patent Owner Exhibit 2007
`Petition for IPR Review of Patent No. 8,004,497
`Page 1
`
`
`
`Case IPR2013-00179
`Patent 7,712,683
`
`
`BACKGROUND
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`Petitioner, ScentAir Technologies, Inc., requests rehearing (Paper 15,
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`“Req. Reh’g”) of our Decision instituting inter partes review of claims 1 and
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`2 of Patent No. 7,712,683 (Paper 13, “Dec.”).
`
`In the Decision, the Board ordered a trial on the following two
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`grounds of unpatentability asserted in the Petition (Paper 2):
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`Claims 1 and 2 as anticipated by Benalikhoudja; and
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`Claims 1 and 2 as obvious over Benalikhoudja and Sakaida.
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`The Board denied all other grounds in the Petition as redundant in
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`light of the grounds on which the Board instituted review. Dec. 19.
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`ScentAir requests rehearing of the denial of a trial based on those other
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`grounds. Req. Reh’g 1. “Specifically, ScentAir requests that the Board
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`instead authorize, at least conditionally, the grounds the Board found
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`‘redundant.’” Id.
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`For the reasons stated below, the request is denied.
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`ANALYSIS
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`When rehearing a decision on petition, the Board reviews the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting
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`rehearing bears the burden of showing an abuse of discretion. 37 C.F.R.
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`§ 42.71(d).
`
`ScentAir does not identify, let alone demonstrate, any purported abuse
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`of discretion. Instead, ScentAir merely states that “it believes the Board
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`may have overlooked potential prejudice to ScentAir.” Req. Reh’g 1
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`(emphasis added). In particular, ScentAir states:
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`ScentAir will be effectively foreclosed from relying on the
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`
`
`2
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`Patent Owner Exhibit 2007
`Petition for IPR Review of Patent No. 8,004,497
`Page 2
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`
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`Case IPR2013-00179
`Patent 7,712,683
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`inter partes review
`in an
`references deemed redundant
`proceeding with respect to distinctions advanced by Prolitec —
`for example, through amendments or substitute claims —
`despite the existence of those distinctions in references deemed
`redundant, and thus, not applied.
`
`
`Req. Reh’g 2.
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`ScentAir, however, is not foreclosed from relying on references it
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`relied on in the non-instituted grounds to account for new claim limitations
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`that Prolitec may seek to add. Although the Board denied certain grounds as
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`redundant in the decision instituting inter partes review, the Board did not
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`state that the references involved in those grounds may not be relied upon to
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`address distinctions advanced by Prolitec in a motion to amend or substitute
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`claims.1
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`That ScentAir ultimately may not prevail in challenging the
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`patentability of claims 1 and 2 on at least one of the grounds instituted does
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`not mean it was an abuse of discretion not to have instituted trial on
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`additional grounds.
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`To avoid a determination that a requested ground of review is
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`redundant of another requested ground, a petitioner must articulate a
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`meaningful distinction in terms of relative strengths and weaknesses with
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`respect to application of the prior art reference disclosures to one or more
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`claim limitations. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty
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`Inc. Co., CBM2012-00003, Paper 7 at 2-12. Distinctions based on how
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`1 Guidance on motions to amend is provided in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14, 2012) and recent
`Board decisions, including Idle Free Sys., Inc. v. Bergstrom, Inc., Case
`IPR2012-00027, Paper 26 (June 11, 2013) (expanded panel).
`
`
`
`3
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`Patent Owner Exhibit 2007
`Petition for IPR Review of Patent No. 8,004,497
`Page 3
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`Case IPR2013-00179
`Patent 7,712,683
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`Prolitec may amend the claims are speculative and should not be the basis of
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`our decision to institute.
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`Pursuant to 35 U.S.C. § 316(b), rules for inter partes review were
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`promulgated taking into account their effect on “the economy, the integrity
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`of the patent system, the efficient administration of the Office, and the
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`ability of the Office to timely complete proceedings.” The Board’s rules
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`provide that they are to be “construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
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`result, in determining whether to institute an inter partes review of a patent,
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`the Board may “deny some or all grounds for unpatentability for some or all
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`of the challenged claims.” 37 C.F.R. § 42.108(b).
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`ScentAir has not demonstrated an abuse of discretion in instituting an
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`inter partes review of claims 1 and 2 on two, but not all, of the grounds for
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`review sought by the Petition.
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`ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that ScentAir’s Request for Rehearing is denied.
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`
`
`
`
`4
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`
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`
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`Patent Owner Exhibit 2007
`Petition for IPR Review of Patent No. 8,004,497
`Page 4
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`
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`Case IPR2013-00179
`Patent 7,712,683
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`For PETITIONER:
`
`Walter Renner
`Kevin Greene
`Fish & Richardson, P.C.
`axf@fr.com
`apsi@fr.com
`
`
`
`For PATENT OWNER:
`Jennifer L. Gregor
`James D. Peterson
`Nicholas A. Kees
`GODFREY & KAHN, S.C.
`jgregor@gklaw.com
`jpeterson@gklaw.com
`nkees@gklaw.com
`
`
`
`
`5
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`Patent Owner Exhibit 2007
`Petition for IPR Review of Patent No. 8,004,497
`Page 5
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