Filed: May 12, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
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`Case IPR2016-00041
`Patent 8,099,823
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`PETITIONER’S REQUEST FOR REHEARING
`OF THE FINAL WRITTEN DECISION
`AS TO CLAIM 6 OF U.S. PATENT NO. 8,099,823
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`COSTCO WHOLESALE CORPORATION,
`Petitioner,
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`v.
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`ROBERT BOSCH LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00041
`Patent 8,099,823
`____________
`
`PETITIONER’S REQUEST FOR REHEARING
`OF THE FINAL WRITTEN DECISION
`AS TO CLAIM 6 OF U.S. PATENT NO. 8,099,823
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED ........................ 1
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`REASONS FOR THE RELIEF REQUESTED ................................... 1
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`A.
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`B.
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`The ’823 Decision Overlooked All of the Evidence That
`the ’264 Decision Credited in Holding Claim 3 of the
`’264 Patent Unpatentable ........................................................... 7
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`The ’264 Decision Precludes an Inconsistent Outcome on
`the Same Issues in This Proceeding ......................................... 13
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`III. CONCLUSION................................................................................... 15
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`IPR2016-00041
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`TABLE OF AUTHORITIES
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`Cases
`B & B Hardware, Inc. v. Hargis Indus., Inc.,
`135 S. Ct. 1293 (2015) ................................................................................ 13
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`Page(s)
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`Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found.,
`402 U.S. 313 (1971) .................................................................................... 15
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`In re Freeman,
`30 F.3d 1459 (Fed. Cir. 1994) ........................................................ 13, 14, 15
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`KSR Int’l Co. v. Teleflex,
`550 U.S. 398 (2007) ............................................................................ 7, 9, 10
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`Mendenhall v. Barber-Greene Co.,
`26 F.3d 1573 (Fed. Cir. 1994) .................................................................... 13
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`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) .................................................................. 14
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`Pharmacia & Upjohn Co. v. Mylan Pharm., Inc.,
`170 F.3d 1373 (Fed. Cir. 1999) .................................................................. 15
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`Sakraida v. Ag Pro, Inc.,
`425 U.S. 273 (1976) ...................................................................................... 7
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`Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC,
`778 F.3d 1311 (Fed. Cir. 2015) .................................................................. 14
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`Statutes and Rules
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`37 C.F.R. § 42.2 ............................................................................................... 15
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`37 C.F.R. § 42.71(d) .................................................................................. 1, 6, 7
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`35 U.S.C. § 315(e) ........................................................................................... 15
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`IPR2016-00041
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`TABLE OF AUTHORITIES
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`Administrative Proceedings
`Institution Decision, Costco Wholesale Corp. v. Robert Bosch LLC,
`IPR2016-00040,
`Paper No. 16 (PTAB Apr. 25, 2016) ............................................................ 2
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`Page(s)
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`Trial Hearing Order, Costco Wholesale Corp. v. Robert Bosch LLC,
`IPR2016-00040,
`Paper No. 61 (PTAB Dec. 29, 2016) ............................................................ 3
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`Final Written Decision, Costco Wholesale Corp. v. Robert Bosch LLC,
`IPR2016-00040,
`Paper No. 67 (PTAB Mar. 30, 2017) ...................................................passim
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`Square, Inc. v. Rem Holdings 3, LLC, IPR2014-00312,
`Paper No. 68 (PTAB Nov. 20, 2015)............................................................ 6
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`Valeo North America, Inc. v. Magna Elecs., Inc., IPR2014-00220,
`Paper No. 61 (PTAB July 14, 2015) ............................................................. 6
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`Pursuant to 37 C.F.R. § 42.71(d), Petitioner respectfully requests Rehearing
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`of the Board’s decision that the evidence did not show claim 6 of U.S. Patent No.
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`8,099,823 (the “’823 Patent”; Ex. 1001) to be unpatentable. See Final Written De-
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`cision (Paper No. 70) at 36 (the “’823 Decision”). The Board held the exact oppo-
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`site with respect to the exact same claim limitation challenged on the exact same
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`grounds in a related proceeding involving the parent patent. See Final Written De-
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`cision, Costco Wholesale Corp. v. Robert Bosch LLC, IPR2016-00040, Paper No.
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`67 (PTAB March 30, 2017) (the “’264 Decision”).1 The ’823 Decision overlooked
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`Petitioner’s evidence and, in any event, is precluded by the ’264 Decision.
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner requests that the Board grant Rehearing of the ’823 Decision as to
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`claim 6 and amend its Final Written Decision to hold claim 6 unpatentable for the
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`same reasons articulated in the ’264 Decision.
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`II. REASONS FOR THE RELIEF REQUESTED
`The ’823 Patent shares a specification with, and claims priority to, U.S. Pa-
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`tent No. 7,484,264 (the “’264 Patent”). The ’823 and ’264 Patents each disclose
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`and claim the substantially same windshield wiper assembly, comprising three
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`1 Hereafter, any citation beginning with “’264,” e.g., “’264 Petition,” including any
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`associated Paper Number, refers to a filing in IPR2016-00040; any citation begin-
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`ning with “’823” refers to a filing in IPR2016-00041.
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`1
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`basic elements: (i) a flexible spring support element, (ii) a wiper strip, and (iii) a
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`wind deflector. See ’823 Petition (Paper No. 9) at 4–5; see also ’264 Petition (Pa-
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`per No. 1) at 4–5. The independent claims of both patents also encompass claw-
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`like extensions attached to the wind deflector (or spoiler). Cross-sections of the
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`claimed wipers are reproduced below:
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`’264 Patent Fig. 2
`(reproduced in ’264 Petition at 5)
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`’823 Patent Fig. 2
`(reproduced in ’823 Petition at 5)
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` The ’264 Patent was at issue in parallel proceeding IPR2016-00040. In both
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`proceedings, Petitioner asserted the same grounds of invalidity, supported by the
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`same rationales (see ’264 Petition at 51–56; ’823 Petition at 48–54); the Board in-
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`stituted inter partes review on the same grounds of invalidity (see ’264 Institution
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`Decision (Paper No. 16) at 16–17; ’823 Institution Decision (Paper No. 20) at 17–
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`18)2; Patent Owner disputed Petitioner’s showing with the exact same argument
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`2 Inter partes review of the ’823 Patent was instituted on all of the same grounds as
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`the ’264 inter partes review, and several additional grounds as well.
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`2
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`(see ’264 Patent Owner Response (Paper No. 28) at 10–11; ’823 Patent Owner Re-
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`sponse (Paper No. 32) at 11–12); Petitioner filed the same response to this argu-
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`ment in both proceedings (see ’264 Reply (Paper No. 34) at 15–18; ’823 Reply
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`(Paper No. 38) at 15–17); the parties proffered the same expert testimony (see ’264
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`Davis Decl. (Ex. 1018), Dubowsky Decl. (Ex. 2003); ’823 Davis Decl. (Ex. 1014),
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`Dubowsky Decl. (Ex. 2003)); and, at Petitioner’s request (see ’264 Request for
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`Oral Argument (Paper No. 48) at 1; ’823 Request for Oral Argument (Paper No.
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`52) at 1), the Board consolidated oral argument (see ’264 Trial Hearing Order (Pa-
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`per No. 61) at 2; ’823 Trial Hearing Order (Paper No. 64) at 2).
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`The Board’s review of the ’264 Patent concluded with a Final Written Deci-
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`sion that held all challenged claims to be unpatentable. Among the challenged—
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`and now invalid—claims of the ’264 Patent is claim 3, which is directed to the rel-
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`ative hardness of the materials to be used in the spoiler having claw-like exten-
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`sions, and specifies generally the location of such materials. Petitioner also chal-
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`lenged claim 6 of the ’823 Patent, which is also directed to the relative hardness of
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`the materials to be used in a spoiler having claw-like extensions; claim 6 depends
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`from claim 5 and merely adds a more particular location of where the transition be-
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`tween materials occurs (’264 Petition at 51–52; ’823 Petition at 49–50), as shown
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`below:
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`3
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`IPR2016-00041
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`’264 Patent Claim 3
`3. A wiper blade according to claim 1,
`characterized in that the wind deflec-
`tion strip (42) is designed as a binary
`component whose longitudinal area
`provided with the claw-like extensions
`(56) is made of a harder material than
`a longitudinal area lying closer to the
`base point (46).
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`’823 Patent Claim 6
`5. A wiper blade according to claim 1,
`characterized in that the wind deflection
`strip is designed as a binary component
`whose longitudinal area provided with
`the claw-shaped extensions is made of a
`harder material than a longitudinal area
`lying closer to the base point.
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`6. A wiper blade according to claim 5,
`characterized in that a transition from
`the harder longitudinal area to the softer
`longitudinal area occurs near the wall.
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`In both proceedings, the Board held that combinations of PCT Pub. No.
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`WO99/12784 to Merkel et al. (“Merkel”; Exs. 1008, 1009), PCT Pub. No.
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`WO99/02383 to Kotlarski et al. (“Kotlarski ‘383”; Exs. 1003, 1004), and U.K. Pa-
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`tent No. GB 2,106,775 to Prohaska et al. (“Prohaska”; Ex. 1005) rendered the in-
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`dependent claims obvious, both of which encompassed the same spoiler-and-claw
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`structure, but did not specify a material. When confronted with the dependently
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`claimed spoiler having claw-like extensions made of two materials, however, the
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`Board reached diametrically opposed conclusions. The disparate treatment of the
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`substantially identical claimed subject matter should not stand and clearly warrants
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`rehearing.
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`As to the “binary component” limitation in both challenged claims, Petition-
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`er argued that it would have been obvious to apply the materials related teachings
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`of either U.S. Patent No. 3,121,133 (“Mathues”; Ex. 1019) or PCT Publication No.
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`4
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`WO00/34090 to Kotlarski (“Kotlarski ’090”; Exs. 1020; 1021) to upgrade the hol-
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`low spoiler with claws described in Prohaska and arrive at the claimed “binary
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`component.” See ’823 Petition at 48–54; ’264 Petition at 51–56; see also ’823 Re-
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`ply at 15–17; ’264 Reply at 15–18; Davis Decl. (Ex. 1014) ¶¶ 73–75.
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`On March 30, 2017, the Board agreed: in the ’264 Decision, the Board ac-
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`cepted the Mathues- and Kotlarski ’090-based grounds and held claim 3 of the
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`’264 Patent to be unpatentable. See ’264 Decision at 32–38 (“The improvement
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`was the use of a familiar element according to a known method to produce predict-
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`able results.”).
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`But despite the near-identity of claim 6 of the ’823 patent3; the same insti-
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`tuted grounds; the same prior art; the same expert testimony; the same arguments
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`made by Patent Owner; and the consolidated oral argument, the Board contradicted
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`its own well-reasoned holding and entered a Final Written Decision in this pro-
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`ceeding holding that the evidence did not show claim 6 of the ’823 Patent to be
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`unpatentable. See ’823 Decision at 21–23. The Board did not distinguish the dif-
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`ferent outcome, and its decisions are irreconcilable. Consider the following exem-
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`plary excerpts from the Board’s decisions:
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`3 The ’823 Decision gave no patentable weight to claim 6’s recital that the transi-
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`tion of materials occurs near the wall. See ’823 Decision at 17–18, 21–23.
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`5
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`IPR2016-00041
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`’264 Decision
`“Petitioner contends that the resulting
`combination retains a flexible spoiler.
`Pet. 53–54 (noting that Prohaska de-
`scribes the desirability of a flexible
`spoiler, Ex. 1003, 3:108–112).” Id. at 34
`(emphasis added).
`“Petitioner’s reasoning that a person of
`ordinary skill in the art would have uti-
`lized claw-like extensions being made of
`a harder material (plastic) than the lon-
`gitudinal area closer to the base of the
`spoiler (rubber), as disclosed by Ma-
`thues, in order to grip the spring rails is
`well supported by the evidence of rec-
`ord.” Id. at 37–38 (emphasis added).
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`’823 Decision
`“There is no evidence before us that
`states why it would be beneficial to
`the upper portion of the spoiler to be
`more flexible, and Petitioner has given
`us no other reason to make it more
`flexible.” Id. at 23 (emphasis added).
`“Although Mathues teaches that the
`wiper portion should be softer than the
`retention portion, and is not clear to
`us, nor does Petitioner explain, how
`this is applicable to spoilers.” Id. at
`22–23 (emphases in original).
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`Petitioner submits that this is the rare instance that warrants rehearing to
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`amend a final written decision pursuant to 37 C.F.R. § 42.71(d). See, e.g., Valeo
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`North America, Inc. v. Magna Elecs., Inc., IPR2014-00220, Paper No. 61 at 2–3
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`(PTAB July 14, 2015) (granting rehearing and amending final written decision to
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`correct inconsistency); see also Square, Inc. v. Rem Holdings 3, LLC, IPR2014-
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`00312, Paper No. 68 at 5–10 (PTAB Nov. 20, 2015) (amending final written deci-
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`sion to find claims unpatentable where Board overlooked Petitioner’s reliance on a
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`prior art reference for a specific claim limitation). The Board’s initial ’264 Deci-
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`IPR2016-00041
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`sion accurately assessed the record and conclusively determined that the claimed
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`subject matter was unpatentable. The ’823 Decision, on the other hand, overlooked
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`evidence that Petitioner previously addressed (see 37 C.F.R. § 42.71(d))—and that
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`the ’264 Decision relied upon—and impermissibly conflicts with the ’264 Decision
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`under the doctrine of collateral estoppel.
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` The ’823 Decision Overlooked All of the Evidence That the ’264 A.
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`Decision Credited in Holding Claim 3 of the ’264 Patent Un-
`patentable
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`Regarding both the Mathues- and Kotlarski ’090-based grounds, the ’264
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`Decision held that improving the Prohaska spoiler-and-claw structure to have
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`harder claws “was the use of a familiar element according to a known method to
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`produce predictable results.” ’264 Decision at 35, 38; see also KSR Int’l Co. v. Te-
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`leflex, 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
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`282 (1976)) (“[W]hen a patent ‘simply arranges old elements with each performing
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`the same function it had been known to perform’ and yields no more than one
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`would expect from such an arrangement, the combination is obvious.”). And it held
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`“Petitioner’s reasoning that a person of ordinary skill in the art” would have made
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`this “improvement” to be “well supported by the evidence of record.” ’264 Deci-
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`sion at 35, 37–38. The ’823 Decision plainly overlooked the evidence and reason-
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`ing that the Board relied on in the ’264 Decision to reach its conclusion.
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`Consider, for example, the ’823 Decision’s rejection of the Mathues-based
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`IPR2016-00041
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`grounds because it found “no evidence before us that states why it would be bene-
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`ficial to the upper portion of the spoiler to be more flexible, and Petitioner has giv-
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`en us no other reason to make it more flexible.” ’823 Decision at 23. To the contra-
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`ry, Petitioner provided this evidence and the ’264 Decision relied on it. See, e.g.,
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`’264 Decision at 34 (citing ’264 Petition for proposition that “Prohaska describes
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`the desirability of a flexible spoiler, Ex. 1003, 3:108–112”). Indeed, the record is
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`replete with evidence demonstrating that it was known that “flexible spoilers are
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`preferable to rigid spoilers,” ’823 Reply at 17, because they are less likely to “re-
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`sist flexibility in the support element, thereby impairing wipe quality,” ’823 Peti-
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`tion at 51–52 (citing Davis Decl. ¶¶ 55–57, 74–75).4 All of this evidence was ap-
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`4 See, e.g., ’823 Petition at 16 (“To avoid these concerns [in the prior art], Prohaska
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`discloses a wiper blade having a wiper element made of a rubber-elastic materi-
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`al.”); ’823 Petition at 52 (citing Prohaska, 3:108–112) (“Prohaska itself mentions
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`the desirability of a flexible spoiler.”); ’823 Reply at 17 (citing Kotlarski ’383,
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`Merkel, Kotlarski ’090, and Prohaska for the teaching that “flexible spoilers are
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`preferable to rigid spoilers”); Merkel, 1:57–62 (claiming a flexible spoiler as a so-
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`lution to the prior art problem that “fastening . . . a rigid spoiler to the support ele-
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`ment would render the flexibility of the support element virtually nil.”); Davis
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`Decl. ¶ 54 (“[I]n any structure that has bending as its primary purpose, a part that
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`parently overlooked by the ’823 Decision when it analyzed claim 6.
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`With the prior art brimming with flexible spoilers—one of which was Pro-
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`haska—the ’264 Decision agreed with Petitioner that a person of ordinary skill in
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`the art would have had reason to make Prohaska’s claw-like extensions harder
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`than its already-flexible spoiler. See ’264 Decision at 35–38. Mathues supplied the
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`rationale for this improvement by teaching that “making the retention portion of an
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`article harder than the remainder . . . helps enhance the security of the joint,” ’823
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`Petition at 9–10, 53 (quoting Ex. 1012 at 64–65, 1085); ’823 Reply at 16, and that
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`“windshield wiper components can be co-extruded with materials of different de-
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`grees of hardness, tailored to a given application,” ’823 Reply at 17; see also ’823
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`Petition at 5; ’264 Decision at 36 (holding that Petitioner established by a “prepon-
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`derance of the evidence” that Mathues discloses “a retention portion of greater
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`hardness than the remainder”). All of this evidence supported the conclusion
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`reached in the ’264 Decision: “The improvement was [the] use of a familiar ele-
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`ment according to a known method to produce predictable results.” ’264 Decision
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`at 38; see also ’823 Reply at 17 (citing KSR, 550 U.S. at 427; Davis Decl. ¶¶ 73,
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`‘adversely affected’ bending would be . . . undesirable.”).
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`5 As the ’823 Decision observed, “Petitioner actually cites to pages 71 to 72, but
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`that citation is clearly erroneous.” ’823 Decision n.10.
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`76); ’823 Petition at 54 (citing KSR, 550 U.S. at 417).
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`Likewise, as to the Kotlarski ’090-based grounds, the ’823 Decision faults
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`Petitioner for allegedly omitting “an explanation for why it would have been obvi-
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`ous to combine the two separate components in Kotlarski ’090 into a single com-
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`ponent.” ’823 Decision at 22. But not only did Petitioner provide this explanation
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`(see, e.g., ’823 Petition at 52 (citing Davis Decl. ¶¶ 55–57, 74–75)), the Board al-
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`ready credited it in the ’264 Decision, finding that “[t]he improvement was the use
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`of a familiar element according to a known method to produce predictable results.”
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`’264 Decision at 35. The ’823 Decision appears to have overlooked the explanation
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`that “[e]ach part of the ‘binary component’ performs the same function in the same
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`way as the distinct components of Kotlarski ‘090.” Davis Decl. ¶ 74.
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`Moreover, unlike the ’264 Decision, the ’823 Decision’s analysis of claim
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`6—and only of claim 6—seems to have forgotten what both Decisions already and
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`necessarily found in invalidating the independent claims6: that the Prohaska spoiler
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`is already formed as a single, binary component and there was reason to combine it
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`6 Independent claim 1 of each patent requires that “the sides of the wind deflection
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`strip have respective free ends having thereon respective claw-like extensions that
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`fittingly grip around the outer edges of the support element at least in sections.”
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`E.g., ’264 Petition at 28 (quoting Ex. 1001); ’823 Petition at 29 (quoting Ex. 1001).
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`IPR2016-00041
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`with a flat-spring wiper.7 In holding that Petitioner provided no reason “why it
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`would have been obvious to combine the two separate components in Kotlarski
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`’090 into a single component,” ’823 Decision at 22, the ’823 Decision apparently
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`overlooked all of the evidence proffered in support of the invalidity of claim 1 as to
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`why a person of ordinary skill in the art would attach a spoiler to a flat-spring sup-
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`port element using claw-like extensions. See, e.g., ’823 Petition at 17, 43 (citing
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`Prohaska, 1:68–70, 2:61–3:2, Fig. 3) (“Prohaska teaches claw-like extensions as
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`the preferred manner of securing these spoilers to a wiper assembly.”); 46–48 (cita-
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`tion omitted) (“[T]he choice between claws formed on the wind deflector that en-
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`gage with the wiper strip [i.e., Prohaska], claws formed on separate retainers that
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`7 See, e.g., ’264 Decision at 12 (citing Ex. 1003, 1:68–83, 2:61–70, 80–86) (noting
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`that Prohaska’s “spoiler includes downwardly directed elongations having claws”),
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`31–32 (reasoning); ’823 Decision at 16–17 (“Petitioner directs us to Prohaska for
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`the particular configuration of the spoiler, e.g., the . . . claw-shaped extensions. Id.
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`at 35–37. We . . . adopt Petitioner’s findings as our own.”); see also ’823 Petition
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`at 51 (“Prohaska discloses (i) a spoiler and (ii) claw-like extensions (elongations
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`32, 33), which are formed into a binary component.”); ’823 Reply at 15 (citing
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`Prohaska, 1:68–79, 3:108–116) (“Prohaska describes a comparable, two-part spoil-
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`er (i.e., a ‘binary component’), but the two parts are made of the same material.”).
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`engage with protruding spring rails (e.g., Kotlarski ‘090), and claws formed on the
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`wind deflector that engage with protruding spring rails, among others, is a choice
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`‘between alternative means obvious to any mechanic.’”). But such evidence was
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`expressly incorporated, as the ’264 Decision implicitly recognized. ’823 Petition at
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`50 (“The discussion of Claim 1 above is incorporated by reference.”); see also
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`’264 Decision at 33 (“Petitioner builds upon the ground of unpatentability . . . .”).
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`With the starting point for the dependent claim analysis being an unpatenta-
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`ble wiper assembly having a spoiler with claw-like extensions formed as a single
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`component, the question was one of materials, not one of structure—as the ’264
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`Decision correctly noted. See, e.g., ’264 Decision at 34 (“Petitioner contends that
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`Kotlarski ’090 teaches retainers of a greater stiffness than the spoiler and applying
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`this teaching to the combination of either Prohaska and Kotlarski ’383 or Prohaska
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`and Merkel would result in the wind deflector strip corresponding to a binary com-
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`ponent as claimed.” (emphasis added)). The ’264 Decision held that Kotlarski ’090
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`taught which materials should be used for which functions, see, e.g., ’264 Decision
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`at 33–34 (adopting Petitioner’s characterization of Kotlarski ’090 as having a
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`spoiler made of “a soft flexible material” and claws “formed of a relatively stiff
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`material”), and agreed with Petitioner that “[t]he improvement was the use of a
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`familiar element according to a known method to produce predictable results,” id.
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`at 35. The ’823 Decision is irreconcilable and should be corrected.
`
`12
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`B.
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`The ’264 Decision Precludes an Inconsistent Outcome on the
`Same Issues in This Proceeding
`
`In IPR2016-00040, the Board held that adding a “binary component” limita-
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`tion to an otherwise unpatentable wiper-spoiler combination did not make the wip-
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`er-spoiler combination patentable. The Board’s Decision in IPR2016-00040 should
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`be held conclusive of that same issue that Patent Owner raised in this proceeding
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`as to claim 6 of the ’823 Patent. See In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir.
`
`1994); see also B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293,
`
`1302–05 (2015) (holding that administrative agency decisions can have preclusive
`
`effect). “[T]he defense of collateral estoppel based on a final judgment of patent
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`invalidity in another suit can ‘be timely made at any stage of the affected proceed-
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`ings.’” Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1579 (Fed. Cir. 1994) (ci-
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`tations omitted).
`
`Issue preclusion applies if: “(1) the issue is identical to one decided in the
`
`first action; (2) the issue was actually litigated in the first action; (3) resolution of
`
`the issue was essential to a final judgment in the first action; and (4) plaintiff had a
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`full and fair opportunity to litigate the issue in the first action.” Freeman, 30 F.3d
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`at 1465. All four factors are satisfied here.
`
`First, the “binary component” issues in the two proceedings are identical.
`
`Claim 3 of the ’264 Patent encompasses the same subject matter as claim 6 of the
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`13
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`’823 Patent. In both proceedings, the Board considered the same grounds of inva-
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`lidity; the same arguments; the same expert testimony; and the same consolidated
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`oral hearing. The minor differences between the claims are of no consequence be-
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`cause “[c]omplete identity of claims is not required to satisfy the identity-of-issues
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`requirement.” Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt.,
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`LLC, 778 F.3d 1311, 1319–20 (Fed. Cir. 2015) (holding that issue preclusion ap-
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`plies where an “additional limitation” does not “materially alter the question of va-
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`lidity”); see also Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342
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`(Fed. Cir. 2013) (“Our precedent does not limit collateral estoppel to patent claims
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`that are identical. Rather, it is the identity of the issues that were litigated . . . .”).
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`Second, “[t]he requirement that the issue have been actually decided is gen-
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`erally satisfied if the parties to the original action disputed the issue and the trier of
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`fact decided it.” Freeman, 30 F.3d at 1466. After evaluating all of the evidence and
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`arguments in the ’264 Proceeding (see ’264 Petition at 51–56; ’264 Patent Owner
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`Response (Paper No. 28) at 10–11; ’264 Reply at 15–18; Davis Decl. ¶¶ 73–75;
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`Ex. 2003 ¶ 80), the Board decided the “binary component” of claim 3 of the ’264
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`Patent was obvious. ’264 Decision at 32–38.
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`Third, the Board’s finding that the instituted references disclose a “binary
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`component” was “necessary to the judgment” that claim 3 of the ’264 Patent is un-
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`patentable. Freeman, 30 F.3d at 1466. The Board’s Final Written Decision consti-
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`14
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`tutes a “final judgment.” See 37 C.F.R. § 42.2 (“Final means final for the purpose
`
`of judicial review to the extent available.”); id. (“Judgment means a final written
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`decision by the Board, or a termination of a proceeding.”); Pharmacia & Upjohn
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`Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1381 (Fed. Cir. 1999) (citation omitted)
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`(compiling cases and noting the “established rule . . . that a final judgment retains
`
`all of its res judicata consequences pending decision of the appeal”); cf. 35 U.S.C.
`
`§ 315(e) (final written decision pursuant to § 318(a) triggers estoppel).
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`Fourth, Patent Owner “had a full and fair opportunity” in IPR2016-00040 to
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`litigate the issue—indeed, there is nothing it did in this second proceeding that it
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`had not done in the first. Patent Owner “fully took advantage of [the] opportunity
`
`to have this issue decided,” and there is “no reason to doubt the quality, extensive-
`
`ness, or fairness of the procedures followed” in the ’264 proceeding. Freeman, 30
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`F.3d at 1467. Likewise, as the Supreme Court cautioned in Blonder-Tongue Labs.,
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`Inc. v. Univ. of Illinois Found., 402 U.S. 313 (1971), where the “issue is nonobvi-
`
`ousness, appropriate inquiries would be whether . . . the prior case was one of those
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`relatively rare instances where the courts wholly failed to grasp the technical sub-
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`ject matter and issues in suit.” Id. at 333. Clearly, no such unfairness occurred.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant Rehearing of the ’823 Decision as to claim 6 and hold it to be unpatentable.
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`15
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`Dated: May 12, 2017
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`Respectfully Submitted,
`
`/Stefanie M. Lopatkin/
`Stefanie M. Lopatkin
`Registration No. 74,312
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004
`Stefanie.lopatkin@hugheshubbard.com
`(212) 837-6393
`Attorney for Petitioner
`Costco Wholesale Corporation
`
`
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`16
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`IPR2016-00041
`PETITIONER’S REQUEST FOR REHEARING
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 12th day of May, 2017, the foregoing Petition-
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`er’s Request for Rehearing of the Final Written Decision as to Claim 6 of U.S. Pa-
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`tent No. 8,099,823 was served in its entirety by email on the attorneys of record for
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`Patent Owner:
`
`•
`
`•
`
`•
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`Patrick R. Colsher (patrick.colsher@shearman.com)
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`Mark Hannemann (mark.hannemann@shearman.com)
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`Joseph Purcell (joseph.purcell@shearman.com)
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`/Stefanie M. Lopatkin/
`Stefanie M. Lopatkin
`Registration No. 74,312
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`77257674
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`1
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