UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §42.71(d)
`
`Case No. IPR2015-01954
`
`NY 816375v.1
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §42.71(d)
`
`Case No. IPR2015-01954
`
`NY 816375v.1
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF
`REQUESTED..................................................................................................1
`LEGAL STANDARDS ...................................................................................1
`II.
`III. BASIS FOR RELIEF REQUESTED ..............................................................2
`A.
`Independent Claims 1, 11, 29 And 38 Do Not Require
`The Recited Sealing Member To Be Of One-Piece Or
`Inseparable Construction.......................................................................2
`
`B.
`
`The Anticipation Determination Can Be Made In The
`Context Of Matsuoka’s Copier .............................................................5
`
`C. Matsuoka’s Container Body Moves Away From The
`Sealing Member ....................................................................................9
`
`D.
`
`The Challenged Claims Would Have Been Obvious..........................13
`
`IV. CONCLUSION..............................................................................................15
`
`NY 816375v.1
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`- i -
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`
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`TABLE OF AUTHORITIES
`
`Cases
`Alza Corp. v. Mylan Labs., Inc.,
`388 F. Supp.2d 717 (N.D. W.V. 2005),
`aff’d on other grounds, 464 F.3d 1286 (Fed. Cir. 2006)........................................6
`
`Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Can.,
`687 F.3d 1266 (Fed. Cir. 2012)..............................................................................5
`
`Celeritas Techs., Ltd. v. Rockwell Int’l. Corp.,
`150 F.3d 1354 (Fed. Cir. 1998)..........................................................................7, 8
`
`Epos Tech. Ltd. v. Pegasus Tech. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014)..............................................................................4
`
`Hazani v. U.S. Int’l Trade Comm’n,
`126 F.3d 1473 (Fed. Cir. 1997)..............................................................................6
`
`Hewlett-Packard Co. v. Mustek Sys., Inc.,
`340 F.3d 1314 (Fed. Cir. 2003)..............................................................................6
`
`In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) .............................................. 7, 8, 9
`
`Kalman v. Kimberly-Clark Corp., 713 F.2d 760 (Fed. Cir. 1983) ........................7, 8
`
`Lacavera v. Dudas, 441 F.3d 1380 (Fed. Cir. 2006).................................................1
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ...........................................5
`
`SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107 (Fed. Cir. 1985)........................7
`
`Statutes
`
`35 U.S.C. §102(b) ......................................................................................................1
`
`35 U.S.C. §103...........................................................................................................1
`
`Regulations
`37 C.F.R. §42.71(d) ...................................................................................................1
`
`NY 816375v.1
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`Other Authorities
`MPEP§2143(G)........................................................................................................14
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`NY 816375v.1
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`- iii -
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`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. §42.71(d), the Petitioner, General Plastic Industrial
`
`Co., Ltd. (“Petitioner”), requests rehearing of the Decision (Paper 9) denying
`
`institution of an inter partes review of claims 1, 7-9, 11, 16-18, 29, and 38 of U.S.
`
`Patent No. 8,909,094 (“the ‘094 patent”) based on Matsuoka U.S. Patent
`
`No. 5,903,806 (“Matsuoka”, Ex. 1006) under 35 U.S.C. §102(b) (Ground 1) and
`
`§103 (Ground 2). Because the challenged claims do not mention a copier, it is
`
`axiomatic that the recited toner supply container can be located either within a
`
`copier or outside of a copier. In denying Ground 1, the Board misapprehended or
`
`overlooked Federal Circuit caselaw that would allow the element-by-element
`
`anticipation analysis to be conducted on the multi-part composite structure formed
`
`when the toner cartridge 30 is engaged within Matsuoka’s copier.
`
`In denying
`
`Ground 2, the Board misapprehended or overlooked the structure and operation of
`
`the multi-part composite structure formed by disengaging the rotary power
`
`transmitting member 44 from the copier’s turning gear 47, and removing it along
`
`with, and still attached to, the toner cartridge 30.
`
`II.
`
`LEGAL STANDARDS
`
`A request for rehearing “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R.
`
`NY 816375v.1
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`- 1 -
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`§42.71(d).
`
`“An abuse of discretion occurs where the decision is based on an
`
`erroneous interpretation of the law....” Lacavera v. Dudas, 441 F.3d 1380, 1383
`
`(Fed. Cir. 2006).
`
`III.
`
`BASIS FOR RELIEF REQUESTED
`
`A.
`
`Independent Claims 1, 11, 29 And 38 Do Not Require The Recited
`Sealing Member To Be Of One-Piece Or Inseparable Construction
`
`The Board inferentially construed independent claims 1, 11, 29 and 38 of the
`
`‘094 patent to require that the recited sealing member must be of a one-piece or
`
`inseparable construction. See Decision (Paper 9) at p. 19 (“Fixed cover 32 and
`
`rotary power transmitting member 44 are merely engageable ‘on a detachable
`
`basis’ only when Matsuoka’s toner cartridge 30 is inserted into a copier’s
`
`developing agent replenishing apparatus 40.”). In doing so, the Board erred. The
`
`plain meaning of the challenged claims does not require the sealing member to be
`
`of one-piece or inseparable construction.
`
`Indeed, the ‘094 patent specification
`
`describes an embodiment wherein the sealing member is assembled from a
`
`plurality of separate parts. There is nothing in the ‘094 patent specification
`
`requiring those separate parts to be permanently affixed to another during assembly
`
`into the sealing member.
`
`Claim 1, for example, recites that the sealing member comprises a sealing
`
`portion and a coupling portion, and that
`
`the coupling portion includes
`
`(i) a supporting portion, (ii) an engaging portion, which includes a rotational force
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`NY 816375v.1
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`receiving portion and a locking portion, and (iii) a displacing force receiving
`
`portion. See Ex. 1001 at pp. 49-50.
`
`“While challenged claim 1 recites that
`
`‘the supporting portion, the engaging portion, and the displacing force receiving
`
`portion are integrally molded,’ the challenged claims do not require the recited
`
`sealing member’s sealing portion and coupling portion to be integrally molded.
`
`Indeed, the ‘094 patent specification explains that while it is preferred for the
`
`sealing member to be integrally molded, other manufacturing methods are usable
`
`such as ‘by connecting separate members.’” See Petition (Paper 2) at p. 25 (citing
`
`Ex. 1001 at col. 13, ln. 49-53).
`
`More particularly, the ‘094 patent specification states:
`
`It is preferable that sealing member 2 is manufactured
`through an injection molding from a plastic resin material
`or
`the
`like,
`but
`another material,
`or
`another
`manufacturing method is usable. They may be provided
`by connecting separate members.
`
`Ex. 1001 at col. 13, ln. 49-53 (emphasis added). The ‘094 patent specification
`
`explains that two parts may be considered “locked” together by a “snap-fit”
`
`connection, even though those parts can be readily separated. See, e.g., Ex. 1001
`
`at col. 3, ln. 5-1; col. 7, ln. 52 - col. 8, ln. 8; & col. 14, ln. 60 - col. 15, ln. 22
`
`(“sealing member 2 ... is firmly fixed to the driving portion 20”). Simply put, the
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`NY 816375v.1
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`word “connecting” as used in the ‘094 patent specification does not connote a
`
`permanent, inseparable affixing of the constituent parts.
`
`The alternative manufacturing method of connecting separate members is
`
`used in Embodiment 4 of the ‘094 patent which is depicted in Figure 30(A)
`
`reproduced below.
`
`Ex. 1001 at p. 31. “In this embodiment as shown in FIG. 30, a sealing member 2,
`
`an engaging projection 3 and a releasing portion 4 mounted to the opening 1a of
`
`the toner bottle 1 are manufactured separately with respect to other, and then they
`
`are assembled.” Ex. 1001 at col. 21, ln. 19-23. There is no reason to believe that
`
`spring 3j, for instance, is permanently and inseparably affixed to projections 3f, as
`
`opposed to being engageable therewith on a detachable basis. See Ex. 1001 at
`
`col. 21, ln. 24-41.
`
`“[A] claim construction that excludes a preferred embodiment ... is rarely, if
`
`ever, correct and would require highly persuasive evidentiary support.” Epos
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`NY 816375v.1
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`Tech. Ltd. v. Pegasus Tech. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (internal
`
`citation and quotations omitted). At this initial stage of the inter partes review,
`
`there is no evidentiary support for a construction of the challenged independent
`
`claims that would exclude embodiment 4 of the ‘094 patent specification.
`
`Lastly, the doctrine of claim differentiation precludes a construction of the
`
`challenged claims that requires the sealing portion and the coupling portion to be
`
`integrally molded, which would result in a one-piece sealing member. Claims 10
`
`and 19 depend from claims 1 and 11, respectively, and further recite “wherein the
`
`sealing portion and the coupling portion are integrally molded.” Ex. 1001 at p. 50.
`
`Under the doctrine of claim differentiation, when a dependent claim adds a
`
`limitation relative to the independent claim on which it depends,
`
`there is a
`
`rebuttable presumption that the independent claim does not require that limitation.
`
`Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266, 1275
`
`(Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). At
`
`this initial stage of the inter partes review, this presumption stands unrebutted.
`
`B.
`
`The Anticipation Determination Can Be Made In The Context Of
`Matsuoka’s Copier
`
`To the extent
`
`that
`
`the Board held the element-by-element anticipation
`
`analysis of the challenged claims cannot be made on the composite copier-toner
`
`cartridge structure depicted in Figures 6, 10(a), 10(b) and 11 of Matsuoka, the
`
`Board’s holding is based on an erroneous interpretation of the law. That is, the
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`NY 816375v.1
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`Board overlooked that so-called “part-time” anticipation is legally sufficient to
`
`invalidate a product claim. See Alza Corp. v. Mylan Labs., Inc., 388 F. Supp.2d
`
`717, 735 (N.D. W.V. 2005), aff’d on other grounds, 464 F.3d 1286, 1289
`
`(Fed. Cir. 2006); Hazani v. U.S. Int’l Trade Comm’n, 126 F.3d 1473, 1477
`
`(Fed. Cir. 1997); see also Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314,
`
`1326 (Fed. Cir. 2003) (part-time anticipation of method claim).
`
`It is undisputed that Matsuoka’s toner cartridge 30 can be physically located
`
`either (1) within Matsuoka’s copier, or (2) outside of, and disengaged from,
`
`Matsuoka’s copier. Because the challenged claims of the ‘094 patent do not recite
`
`that
`
`the toner supply cartridge is to be located outside of a copier,
`
`the
`
`element-by-element comparison can be made between challenged claims and the
`
`resulting structure when the toner cartridge 30 is positioned within the copier as
`
`depicted in Figures 6, 10(a), 10(b) and 11 of Matsuoka. See Hazani, 126 F.3d at
`
`1477 (“claim 1 of the ‘904 patent does not require a structure that stores charge in
`
`all modes of operation.”); Alza, 388 F. Supp.2d at 735 (“the ‘355 patent claims are
`
`not limited to administration of sustained-release oxybutynin to patients in a
`
`‘fed state.’”). That the challenged claims may not read on Matsuoka’s toner
`
`cartridge 30 when it is outside of, and disengaged from, Matsuoka’s copier is
`
`irrelevant. See Hazani, 126 F.3d at 1477 (disregarding the prior art’s failure to
`
`satisfy claim limitation during “erase mode” of operation); Alza, 388 F. Supp.2d at
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`NY 816375v.1
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`735 (disregarding the prior art being “outside the claimed ranges under fed
`
`conditions”).
`
`Petitioner has provided a one-to-one mapping of the limitations recited in the
`
`challenged independent claims of the ‘094 patent onto the structure depicted in the
`
`Figures 6, 10(a), 10(b) and 11 of the prior art Matsuoka patent. See Petition
`
`(Paper 2) at pp. 33-56. As a matter of law, this is all that is necessary to prove
`
`anticipation.
`
`See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)
`
`(“A reference may be from an entirely different field of endeavor than that of the
`
`claimed invention or may be directed to an entirely different problem from the one
`
`addressed by the inventor, yet the reference will still anticipate if it explicitly or
`
`inherently discloses every limitation recited in the claims.").
`
`The Board faults Matsuoka’s
`
`failure to describe the rotary power
`
`transmitting member 44 as becoming part of the toner cartridge 30. See Decision
`
`at pp. 19-20. This perceived shortcoming of Matsuoka is irrelevant as a matter of
`
`law. “The law of anticipation does not require that the reference ‘teach’ what the
`
`subject patent teaches. Assuming that a reference is properly ‘prior art,’ it is only
`
`necessary that
`
`the claims under attack, as construed by the court, ‘read on’
`
`something disclosed in the reference, i.e., all limitations of the claim are found in
`
`the reference, or ‘fully met’ by it.” Kalman v. Kimberly-Clark Corp., 713 F.2d
`
`760, 772 (Fed. Cir. 1983), overruled in part on other grounds, SRI Int’l v.
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`NY 816375v.1
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`Matsushita Elec. Corp., 775 F.2d 1107, 1125 (Fed. Cir. 1985); see also Celeritas
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`Techs., Ltd. v. Rockwell Int’l. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
`
`It should have been legally sufficient that Petitioner showed that the “sealing
`
`member” limitations recited in the challenged claims read on the integrally
`
`combined fixed cover 32 and rotary power transmitting member 44 depicted in
`
`Figures 6, 10(a), 10(b) and 11 of the prior art Matsuoka patent. See Kalman,
`
`713 F.2d at 772; Celeritas, 150 F.3d at 1361. As explained in the Petition, “[t]he
`
`power transmitting member 44 and the fixed cover 32 are integrally combined by
`
`the coming-off preventing portion 444.” See Petition (Paper 2) at p. 27. More
`
`particularly, Matsuoka explains that the “engagement portion 328 of the fixed
`
`cover 32 engages with cartridge coming-off preventing portion 444 of the rotary
`
`power transmitting member 44 and is kept to be locked.” Ex. 1006 at col. 9,
`
`ln. 48-51 (emphasis added). Thus, Matsuoka’s integrally combined fixed cover 32
`
`and rotary power transmitting member 44 would be encompassed by a claim
`
`construction of
`
`the recited sealing member
`
`limitations that also reads on
`
`Embodiment 4 of the ‘094 patent specification, as required by Federal Circuit case
`
`law. See supra at pp. 4-5.
`
`In short, Figures 6, 10(a), 10(b) and 11 disclose the
`
`recited structures arranged as in the challenged claims.
`
`That Matsuoka fails to expressly use the term “toner supply container” or the
`
`alike to describe the interconnected power transmitting member 44 - fixed cover 32
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`NY 816375v.1
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`- cartridge main body 31 structure depicted in Figures 6, 10(a), 10(b) and 11, is
`
`irrelevant to the anticipation issue. Cf. Decision at pp. 19-20.
`
`In Schreiber, the
`
`Federal Circuit affirmed the Board’s rejection of claims directed to a device for
`
`dispensing popped popcorn under §102(b) based on the Harz patent which
`
`discloses a spout for dispensing oil from an oil can, but makes no mention of
`
`popcorn. Schreiber, 128 F.3d at 1475-79. The Federal Circuit found the structure
`
`disclosed in the Harz patent to be determinative of the anticipation issue, not the
`
`functionally descriptive name given to that structure. Id. at 1477-78.
`
`C. Matsuoka’s Container Body Moves Away From The Sealing
`Member
`
`The Board found that “[a]t this stage of the proceeding, neither party has
`
`identified a term for construction that is dispositive on any of the challenges.”
`
`Decision (Paper 9) at p. 13. This statement is incorrect in view of the Board’s
`
`conclusion that Matsuoka does not satisfy the “the opening becoming unsealed by
`
`relative movement of the sealing member and the container body away from one
`
`another” limitation. See Decision at pp. 20-22 (emphasis added). Petitioner
`
`presented two alternative proposed constructions for this limitation and showed
`
`that Matsuoka satisfies this limitation under either of its proposed constructions.
`
`See Petition at pp. 18-22, & 27-29. Patent Owner argued that this limitation should
`
`be given its plain and ordinary meaning (Preliminary Response at pp. 20-25),
`
`which the Board adopted without explanation. See Decision at p. 13.
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`NY 816375v.1
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`“Petitioner is correlating Matsuoka’s integrally combined fixed cover 32 and
`
`rotary power transmitting member 44 with the ‘sealing member’ recited in the
`
`challenged claims.” Petition (Paper 2) at p. 25. The Board found that “Matsuoka’s
`
`toner cartridge 30 is unsealed by advancing toner cartridge 30 with its fixed cover
`
`32 toward rotary power transmitting member 44, which causes the expandable
`
`bellows of opening/closing cover 33 to compress and unseal opening 321.
`
`Ex. 1006, 8:5-7, 33-37, 45-50; see also Pet. at 28-29.” Decision (Paper 9) at
`
`pp. 21-22.
`
`In so finding,
`
`the Board misapprehended that
`
`the rotary power
`
`transmitting member 44, which is depicted in Figure 8(b) reproduced below, is
`
`located partly inside Matsuoka’s container main body 31.
`
`As will be shown in more detail below, when the container main body 31 is
`
`moved to the left and toward the engagement claw portion 443, the left hand axial
`
`end of the container main body 31 (having opening 312) will be moved away from
`
`the hollow cylindrical portion 447 and the ring-shaped recessed portion 446 at the
`
`right hand axial end of the rotary power transmitting member 44. Patent Owner
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`NY 816375v.1
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`acknowledged that such a configuration includes a moving away. See Preliminary
`
`Response (Paper 6) at pp. 22-23 n. 5 (“This could occur, for example, if the sealing
`
`member is partly inside the container body.
`
`In that situation, when the sealing
`
`member and the container body move toward each other, the axial end of the
`
`sealing member that is inside the container body would move away from an axial
`
`end of the container body as the sealing member moves farther into the container
`
`body.”) (emphasis added).
`
`Matsuoka’s container main body 31 has an opening 312 in its left hand axial
`
`end as depicted in Figure 4(d). See Ex. 1006 at col. 7, ln. 22-27. As depicted in
`
`Figure 6 reproduced below with Petitioner’s highlighting the right hand end of the
`
`sealing member, i.e., integrally combined fixed cover 32 (highlighted in yellow)
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`and rotary power transmitting member 44 (highlighted in red) extends through the
`
`opening 312, into the container main body 31 (highlighted in blue).
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`NY 816375v.1
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`In Figure 6 above, the opening 312 is located at the left hand axial end of the
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`container main body 31 engaged within the recessed portion 322 provided in the
`
`right hand axial end of the fixed cover 32. See Ex. 1006 at col. 7, ln. 30-34.
`
`As discussed in the Petition at pages 27-28, Figure 10(b) of Matsuoka,
`
`which is reproduced below, correlates to the “first position” recited in the
`
`challenged claims wherein the opening 312 is sealed.
`
`Figure 10(b) has been highlighted and annotated by Petitioner with a vertical black
`
`line to show that the opening 312 in the container main body 31 is located just to
`
`the right of the ring-shaped recess portion 446 of the rotary power transmitting
`
`member 44.
`
`As discussed in the Petition at pages 28-29, Figure 11 of Matsuoka, which is
`
`reproduced below, correlates with the “second position” recited in the challenged
`
`claims wherein the opening 312 is open.
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`NY 816375v.1
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`Figure 11 has been highlighted and annotated by Petitioner with a vertical black
`
`line to show that the opening 312 in the container main body 31 is now located to
`
`the left of (i.e., away from) the ring-shaped recess portion 446 of the rotary power
`
`transmitting member 44. This movement of the opening 312 in the container main
`
`body 31 away from the ring-shaped recess portion 446 causes the opening/closing
`
`cover 33 to move relatively away from the opening 312 (i.e., to the right in
`
`Fig. 11), thereby unsealing the pathway 321 through the opening 312.
`
`In short, the Board erred by overlooking the evidence of record, and by
`
`instead relying upon Patent Owner’s contrary attorney argument at the preliminary
`
`stage. See Decision at pp. 21-22.
`
`D.
`
`The Challenged Claims Would Have Been Obvious
`
`The Board has apparently misapprehended Petitioner’s obviousness
`
`argument to be limited to combining Matsuoka’s fixed cover 32 and rotary power
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`NY 816375v.1
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`transmitting member 44 as a single-piece construction. See Decision at pp. 23-26.
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`Instead, Petitioner argued that because there is a disengageable snap-fit connection
`
`between the rotary shaft portion 442 and the copier’s turning gear 47, a person of
`
`ordinary skill would have recognized that the toner cartridge 30 can be withdrawn
`
`from the copier with the rotary power transmitting member 44 still attached to the
`
`fixed cover 32. See Petition at p. 57; Ex. 1007 at ¶¶62-63 & 72-73. Petitioner
`
`provided an articulated reasoning with a rational underpinning for actually doing
`
`so. See Petition at pp. 57-58 (citing MPEP§2143(G)); Ex. 1007 at ¶74.
`
`“The structural composition resulting from this removal process will
`
`comprise container main body 31, fixed cover 32 and power transmitting member
`
`44 which is still engaged with the fixed cover 32 by way of coming-off preventing
`
`portion 444.” Ex. 1007 at ¶75. Because the challenged claims do not require a
`
`sealing member of one-piece construction (see supra at pp. 2-5), this composite
`
`structure satisfies all of the limitations thereof. While the challenged claims do not
`
`require the sealing portion to go from the second (“open”) position back to the first
`
`(“sealed”) position, this resulting structural composition could be manipulated to
`
`go from the Figure 11 (“open”) configuration to the Figure 10(b) (“sealed”)
`
`configuration by a user manually disconnecting the snap-fit connection between
`
`the coming-off preventing portion 444 and the fixed cover 32. See Ex. 1006 at
`
`col. 10, ln. 50 - col. 11, ln. 2. Simply put, this multi-part composition would be
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`NY 816375v.1
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`capable of being resealed, even though that functionality is not recited in the
`
`challenged claims or even mentioned in the ‘094 patent specification’s Summary
`
`of Invention section. Consequently, the Board erred in denying Ground 2.
`
`As an alternative, conditional argument, Petitioner further contended that “to
`
`the extent
`
`that Patent Owner argues that Matsuoka’s resulting structural
`
`composition has too many parts,
`
`it ‘would be merely a matter of obvious
`
`engineering choice’ to use a one-piece construction instead.” Petition (Paper 2) at
`
`p. 58 (citing Ex. 1007, Springett Decl. at ¶76). However, because Patent Owner
`
`never argued that the structural composition resulting from this removal process
`
`(i.e., container main body 31, fixed cover 32 and power transmitting member 44
`
`which is still engaged with the fixed cover 32 by way of coming-off preventing
`
`portion 444) has too many parts (see Preliminary Response at pp. 41-45) and the
`
`challenged claims do not require the sealing member to be one-piece (see supra at
`
`pp. 2-5), the Board erred by relying on the one-piece construction issue to deny
`
`Ground 2. See Decision at p. 25.
`
`IV. CONCLUSION
`For the foregoing reasons, this Request for Rehearing should be granted and
`
`an inter partes review should be instituted on Grounds 1 and 2.
`
`Dated: April 8, 2016
`
`Respectfully submitted,
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`
`NY 816375v.1
`
`- 15 -
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §§42.6(e)(4) and 42.105(a), the undersigned hereby
`certifies that on April 8, 2016 a complete copy of the foregoing PETITIONER’S
`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. §42.71(d) was
`served in its entirety via electronic mail, as follows:
`Canon094IPR@fchs.com
`
`and
`
`Justin J. Oliver, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`joliver@fchs.com
`
`and
`
`Edmund J. Haughey, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`ehaughey@fchs.com
`
`Dated: April 8, 2016
`
`NY 816375v.1
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`LOCKE LORD LLP
`Brookfield Place
`200 Vesey Street, 20th Floor
`New York, New York 10281-2101
`Attorneys for Petitioner
`General Plastic Industrial Co., Ltd.
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