Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: May 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.,
`Petitioner
`
`v.
`
`CANON INC.,
`Patent Owner
`____________
`
`Case IPR2015-01954
`Patent 8,909,094 B2
`____________
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: May 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.,
`Petitioner
`
`v.
`
`CANON INC.,
`Patent Owner
`____________
`
`Case IPR2015-01954
`Patent 8,909,094 B2
`____________
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2015-01954
`Patent 8,909,094 B2
`
`
`INTRODUCTION
`General Plastic Industrial Co., Ltd. (“Petitioner”) filed a Request for
`Rehearing pursuant to 37 C.F.R. § 42.71(d) of the Board’s Decision (Paper
`9, “Dec.”) declining to institute trial in this proceeding. Paper 10 (“Req.
`Reh’g.”). The Rehearing Request seeks rehearing of the Board’s Decision
`with respect to: (1) claims 1, 8, 9, 11, 17, 18, 29, and 38 of U.S. Patent
`No. 8,909,094 B2 (“the ’094 patent”) under 35 U.S.C. § 102(b) as
`anticipated by Matsuoka (Ex. 1006) and (2) claims 1, 7–9, 11, 16–18, 29 and
`38 of the ’094 patent under 35 U.S.C. §103(a) as rendered obvious over
`Matsuoka (Ex. 1006). See Req. Reh’g 1.
`In particular, Petitioner argues the Board: (1) “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 the context of anticipation; and (2) “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” in the context of obviousness. Id. at 1–15.
`We have reviewed Petitioner’s request for rehearing and carefully
`considered Petitioner’s arguments and cited authorities. However, we are
`not persuaded that the Board misapprehended or overlooked Petitioner’s
`arguments presented with respect to the patentability of claims 1, 7–9, 11,
`16–18, 29 and 38 of the ’094 patent or the cited authorities.
`
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`IPR2015-01954
`Patent 8,909,094 B2
`
`
`DISCUSSION
`First, Petitioner asserts the Board erred because we “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.” Id. at 2 (citing Dec. 19). According to Petitioner, (1) “[t]he
`plain meaning of the challenged claims does not require the sealing member
`to be of one-piece or inseparable construction” (id.); (2) the ’094 patent
`specification describes the sealing member as being manufactured through
`an injection molding or assembled from a plurality of separate parts (id. at
`2–3 (citing Ex. 1001, 13:49–53)); and (3) 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 (id. at 5).
`Contrary to Petitioner’s assertion, we did not inferentially construe the
`challenged claims “to require that the recited sealing member must be of a
`one-piece or inseparable construction.” See Req. Reh’g 2–5. As explained
`in the Decision, we found that Matsuoka’s toner cartridge 30 contains only
`(1) container main body 31 provided with opening 312, and (2) fixed cover
`32 including opening/closing cover 33. Dec. 19 (citing Ex. 1006, 7:22–30,
`Fig. 4(d)). Matsuoka’s toner cartridge 30 does not include rotary power
`transmitting member 44, which is a fixed part of Matsuoka’s copier’s
`developing agent replenishing apparatus 40 and is merely engageable “on a
`detachable basis” only when Matsuoka’s toner cartridge 30 is inserted into
`Matsuoka’s copier’s developing agent replenishing apparatus 40. Id. at 19
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`IPR2015-01954
`Patent 8,909,094 B2
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`(citing Ex. 1005, Fig. 6, 7:53–8:7).
`Because rotary power transmitting member 44 is part of Matsuoka’s
`copier’s developing agent replenishing apparatus 40, we were not
`sufficiently persuaded that Matsuoka’s “integrally combined fixed cover 32
`and rotary power transmitting member 44” can be said to meet the “sealing
`member” recited in the challenged claims as a part of the “toner supply
`container.” Id. at 20.
`Second, Petitioner asserts:
`That is, the 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).
`Req. Reh’g 5–6. Petitioner further relies on In re Schreiber, 128 F.3d 1473,
`1478 (Fed. Cir. 1997) for the legal proposition that “[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.” Id. at 7.
`We are uncertain as to what Petitioner regards as “‘part-time’
`anticipation” or the relevancy of In re Schreiber. The alleged principle of
`“‘part time’ anticipation” is not articulated clearly either in the Petition or
`the Rehearing Request. We have reviewed each of the above-cited cases,
`
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`IPR2015-01954
`Patent 8,909,094 B2
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`including In re Schreiber, and find nothing that would aid the Petitioner.
`For instance, none of these cases stands for the proposition: If element A
`gets attached to element B at some times during use of element A, element B
`can be regarded as a component of element A. Thus, the fact that
`Matsuoka’s toner cartridge 30, at some time during its use, is attached to
`rotary power transmitting member 44 of the copier provides no justification
`to regard member 44 of the copier as a component of Matsuoka’s toner
`cartridge 30.
`Third, Petitioner asserts the Board erred because we declined to adopt
`Petitioner’s proffered claim construction of the phrase “the opening [of
`container body] becoming unsealed by relative movement of the sealing
`member and the container body away from one another” recited in the
`challenged claims. Req. Reh’g 9–13 (citing Dec. 20–22). However, the
`Petitioner’s proffered construction is predicated upon the so-called “part-
`time” anticipation doctrine as discussed above.
`Lastly, Petitioner asserts the Board “misapprehended Petitioner’s
`obviousness argument to be limited to combining Matsuoka’s fixed cover 32
`and rotary power transmitting member 44 as a single-piece construction.”
`Req. Reh’g 13–15 (citing Dec. 23–26). According to Petitioner, “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” and “this composite structure satisfies all
`of the limitations” of the challenged claims. Id. at 14 (citing Pet. 57; Ex.
`1007 at ¶¶ 62–63, 72–73). However, we did not misapprehend or overlook
`
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`IPR2015-01954
`Patent 8,909,094 B2
`
`Petitioner’s obviousness arguments; rather, we provided our explanations on
`pages 24–26 of the Decision.
`
`
`CONCLUSION
`For the reasons discussed, Petitioner’s Request for Rehearing does not
`
`support a modification of the Decision, and is therefore denied.
`
`
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`IPR2015-01954
`Patent 8,909,094 B2
`
`For PETITIONER:
`Steven F. Meyer
`Tim Tingkang Xia
`LOCKE LORD LLP
`smeyer@lockelord.com
`ptopatentcommunication@lockelord.com
`
`
`
`For PATENT OWNER:
`Justin J. Oliver
`Edmund J. Haughey
`FITZPATRICK, CELLA, HARPER & SCINTO
`Canon094IPR@fchs.com
`
`
` 7
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