throbber
IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`
`DOCKET NO.: 098173-0966641
`Filed on behalf of The Clorox Company
`By: Paul C. Haughey, Reg. No. 31,836
`A. James Isbester, Reg. No. 36,315
`Kilpatrick Townsend & Stockton LLP
`Two Embarcadero Center, Eighth Floor
`San Francisco, CA 94111-3834
`Tel: (415) 576-0200
`Email: phaughey@kilpatricktownsend.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`THE CLOROX COMPANY
`Petitioner
`
`v.
`
`AUTO-KAPS, LLC
`Patent Owner
`
`IPR2016-00821
`Patent 7,490,743
`
`PETITIONER’S REQUEST FOR REHEARING
`OF THE DECISION NOT TO INSTITUTE INTER PARTES REVIEW
`UNDER 37 C.F.R. § 42.7
`
`
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`RELIEF REQUESTED ................................................................................... 3
`
`III.
`
`STANDARD OF REVIEW ............................................................................. 3
`
`IV. MATTERS OVERLOOKED—ANTICIPATION BY GUSS ........................ 4
`
`A.
`
`It is respectfully suggested that the Board’s decision
`misapprehended the described coupling and mating
`arrangement elements of Guss. ............................................................. 4
`
`V. MATTERS OVERLOOKED—ANTICIPATION BY BARTIMES ............... 9
`
`A.
`
`It is respectfully suggested that the Board’s decision
`misapprehended the described coupling and mating
`arrangement elements of Bartimes. ....................................................... 9
`
`VI. CONCLUSION .............................................................................................. 13
`
`
`
`- i -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner respectfully requests reconsideration of limited portions of the
`
`Board’s Decision in Paper 8 (“Decision”) denying inter partes review of U.S.
`
`Patent 7,490,743 (the “’743 Patent”) as requested in the petition filed in IPR2016-
`
`00821 (the “Petition”).1
`
`The ’743 Patent is directed to a dispenser assembly for a container. The
`
`dispenser assembly has a pump cap with a pump and a tube (passageway) that
`
`engages a dip tube in the container. A non-circular “coupling arrangement” on the
`
`pump cap that couples to a non-circular “mating arrangement” on the container
`
`ensures that the tubes are aligned when the cap is attached to the container.
`
`The ’743 Patent describes four embodiments: (1) Container with dual dip
`
`tubes, (2) Container within a container, forming an annular space, (3) Oval
`
`container mouth and cap, (4) Annular trough in cap that mates with top of
`
`container dip tube. Petition at 8-9. The trough-related claims were a non-elected
`
`species and never pursued. As noted in the Petition at p. 9:
`
`“A modified embodiment with a projection allows only one rotational orientation:
`
`
`1 Prior art and other abbreviations are those used in the Petition and the Decision.
`
`- 1 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`For example, coupling arrangement 160 may include a projection
`(not shown) structured to communicate with a corresponding groove
`(not shown) of mating arrangement 165 to ensure that oval-shaped
`coupling arrangement 160 is coupleable to mating arrangement 165 in
`only one position.
`
`
`
`(Id. at 4:57-62 (emphasis added).)”
`
`The Decision overlooks and misapprehends two aspects of the Petition.
`
`First, the Decision misapprehended a labeling of “first” and “second” coupling
`
`arrangements in Ground 1 as suggesting separate, independent coupling
`
`arrangements, when in fact the Petition refers to them as two portions of the one
`
`coupling arrangement in the prior art Guss reference. Second, the Decision
`
`misapprehended and overlooked that Petitioner argued that the cap of the prior art
`
`Bartimes reference corresponds to the claimed “coupling arrangement,” not the
`
`threaded nut included in that cap.
`
`Petitioner respectfully requests rehearing on these points, which are
`
`elaborated below.
`
`- 2 -
`
`
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`II. RELIEF REQUESTED
`
`Petitioner requests a rehearing of the Decision and institution of an inter
`
`
`
`partes review (“IPR”) based on anticipation by Guss and Bartimes for claim 1, and
`
`obviousness for dependent claims, as set forth in the following grounds:
`
` Ground 1 of the Petition (Claim 1 is unpatentable as anticipated by
`
`Guss);
`
` Ground 2 (Claim 1 is unpatentable as anticipated by Bartimes);
`
` Grounds 5-14 and 16 (Claims 2-10 are unpatentable over Guss or
`
`Bartimes in view of other references showing dependent claim features as
`
`set forth in the Petition).
`
`III. STANDARD OF REVIEW
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`
`occurs when a “decision was based on an erroneous conclusion of law or clearly
`
`erroneous factual findings, or … a clear error of judgment.” PPG Indus. Inc. v
`
`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
`
`(citations omitted). The request 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 a reply.” 37 C.F.R.
`
`- 3 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`§ 42.71(d). The PTAB has noted that, “in [its] view, when [it] recognize[s] that [it
`
`has] misapprehended or overlooked a significant fact, the necessary abuse of
`
`discretion” is established. IPR2014-01279, Paper 18 at 8 (noting that “[t]he ‘abuse
`
`of discretion’ standard applicable to requests for rehearing of decisions not to
`
`institute is based on the Director’s rule (37 C.F.R. § 42.71(c)), and not necessarily
`
`Article III practice”).
`
`IV. MATTERS OVERLOOKED—ANTICIPATION BY GUSS
`
`A.
`
`It is respectfully suggested that the Board’s decision
`misapprehended the described coupling and mating arrangement
`elements of Guss.
`
`The Decision does not construe the terms “coupling arrangement” and
`
`“mating arrangement,” which contributes to a misapprehension of Petitioner’s
`
`arguments. Patent Owner argued in the Preliminary Response that these terms do
`
`not need to be construed. But then in describing the corresponding features of the
`
`disclosed embodiments Patent Owner identified only those embodiments that relate
`
`to the oval shape of the cap from the ’743 Patent, while ignoring others. By using
`
`only certain embodiments of the patent as exemplary, Patent Owner suggests a
`
`narrower interpretation than Patent Owner used in litigation. As noted in the
`
`Petition, Patent Owner took the position in litigation that the term “coupling
`
`arrangement” covers the circular cap of Petitioner’s product:
`
`- 4 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`
`“Patent Owner’s claim chart, however, identifies the bayonet
`tab 20 on the cap of the product as the “non-circular coupling
`arrangement” of the cap and a corresponding “protrusion”
`labeled 1d on
`the bottle as
`the “non-circular mating
`arrangement.” Petition at 15.
`Petitioner submits that if the Board is applying a specific claim construction,
`
`that claim constructions should be expressly stated. Patent Owner cannot be
`
`allowed to argue for a narrower construction in an IPR, and a broader construction
`
`in the litigation, which is exactly what Patent Owner has done.
`
`The Decision, on pages 9-10, states that it isn’t clear whether the Petition
`
`was arguing that the first and second coupling and mating arrangements of Guss
`
`separately were showing the claimed coupling and mating arrangements, or were
`
`to be considered together. On this basis, the Decision denies institution under
`
`Ground 1, anticipation based on Guss.
`
`Petitioner respectfully submits that the Decision relies upon a strained
`
`reading of the Petition. The Petition refers to the “first” and “second” parts of
`
`Guss in order to make clear what part of the coupling arrangement engaged what
`
`part of the mating arrangement, not to suggest that Guss disclosed two different
`
`structures, either of which by itself is a coupling arrangement. Nor did it occur to
`
`Patent Owner to suggest such a reading. Instead Patent Owner characterized the
`
`- 5 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`Petitioner’s argument as referring to different portions of the coupling and mating
`
`arrangements:
`
`“Petitioner’s reference to the rear portion 32 of the housing 30
`of the pump unit 14 as a “second coupling portion” is
`incorrect. The rear portion 32 merely sits on top of the
`protrusion 34 of the container 10.” Preliminary Response at
`14, emphasis added.
`The Petition actually refers to the “rear portion” as a portion of the coupling
`
`arrangement:
`
`“The cap also includes a rear portion that seats on a container
`projection.” Petition at 24, emphasis added.
`The claim chart in the Petition makes clear that the two different portions of
`
`the Guss cap (first and second coupling arrangements) together meet the
`
`requirement of element 1.5 of a coupling arrangement:
`
`“In FIG. 4, “[T]ubular portion 66 is provided with internal
`threads 70 [first “coupling arrangement”] which cooperate
`with the threads 24 [first “mating arrangement”] on the neck
`finish 18 ….” In Figs. 1 and 2, “[P]ump unit 14 includes a
`housing 30 which has a rear portion 32 [second “coupling
`arrangement”] that seats on an upstanding projection 34
`[second “mating arrangement”] formed on the container 10.
`Rear portion 32 and projection 34 “prevent twisting of the
`
`- 6 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`pump unit relative to the container.” (Id. at 2:57-58.)” Petition
`at 24, emphasis added.
`From the subsequent discussion in the Petition of both parts of the coupling
`
`
`
`arrangement on page 25, quoted in the Decision on page 10, it should be clear that
`
`they were to be considered together.
`
`“As the cap is screwed into place on the container, the
`projection interlocks with the “rear portion” receptacle to
`“prevent twisting of the pump unit relative to the container.”
`… The projection 34 and rear portion receptacle 32 are clearly
`non-circular.” Petition at 25, emphasis added.
`This argument shows that the threaded cap and the rear portion interact
`
`together as a coupling arrangement, since the rear portion interlocks with the
`
`projection as the front portion with the threads is being screwed onto the top of the
`
`container.
`
`Moreover, if one reads the Petition to argue that the threaded cap and the
`
`rear portion of the cap each separately meet the elements of the claims, then one
`
`must conclude that the Petition simply failed to discuss certain elements for one or
`
`the other of the cap or the rear portion. On the other hand, if one reads the Petition
`
`to assert that these two parts were to be considered together, then the Petition does
`
`address all the elements. This is clearly the intended and logical interpretation. It
`
`is also the interpretation understood by Patent Owner. Finally, as the Petition notes
`
`- 7 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`and as quoted above, coupling and mating arrangements that include, in addition to
`
`other components, a projection on one side with a groove for receiving that
`
`projection on the other is one of the embodiments described in the ’743 Patent. It
`
`is to be expected then, that when Petitioner identified a coupling and mating
`
`structure in the prior art that similarly includes, in addition to other components, a
`
`projection on the mating arrangement and a space for receiving that projection on
`
`the coupling arrangement, the intent is that these features are to be considered
`
`together.
`
`The larger picture is that, regardless of the labelling, the Petition clearly
`
`shows that the prior art discloses a threaded cap in conjunction with a tab or
`
`projection on the container that fits into a space on the cap, for coupling the cap to
`
`the container and that collectively, these structures are not circular. Accordingly,
`
`under the broadest reasonable interpretation, the “coupling arrangement” and
`
`“mating arrangement” elements have been met.
`
`Because the Decision’s basis for denying institution of the Guss anticipation
`
`ground was premised only on the Board’s oversight of the Petition’s arguments
`
`regarding the interpretation of the “coupling arrangement” limitation, rehearing to
`
`consider that argument should result in the Board instituting trial on the Guss
`
`anticipation of Ground 1. No objection was made in the Decision to the showing
`
`- 8 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`of obviousness for the dependent claims that rely on anticipation by Guss for the
`
`elements of claim 1, and thus institution against all the claims challenged on the
`
`basis of Guss, as set forth in Grounds 3, 4, 6, 8, 12, 13 and 15, is respectfully
`
`requested.
`
`V. MATTERS OVERLOOKED—ANTICIPATION BY BARTIMES
`
`A.
`
`It is respectfully suggested that the Board’s decision
`misapprehended the described coupling and mating arrangement
`elements of Bartimes.
`The Decision agrees with Patent Owner’s characterization of Bartimes that
`
`“nut 66 and the threads 68 formed thereon are circular in shape.” Patent Owner
`
`misled the Board by saying “The Petitioner incorrectly argues that the nut 66 of
`
`Bartimes corresponds to the ‘coupling arrangement’ of claim 1.” Petitioner said no
`
`such thing. Rather, Petitioner said “The threaded cap [not threaded nut] of
`
`Bartimes clearly meets this requirement [coupling arrangement].” Petition at 30,
`
`emphasis added. This part of the Petition discusses element [1.5] which only talks
`
`about the “detachably couple” aspect of the coupling arrangement, i.e., the threads.
`
`The cap includes not only the threaded nut, but also includes the projections 102.2
`
`
`2 Conceivably, Patent Owner disputes that the nut with its threads is part of
`the cap. These semantics are irrelevant. The claim requires a “coupling
`arrangement arranged on the pump cap body.” The threaded nut is clearly part of
`an “arrangement arranged on the pump cap body.”
`
`- 9 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`The projections are clearly described as part of the coupling arrangement (the cap),
`
`in addition to the threaded nut, on pp. 31-32 of the Petition, where element [1.6] is
`
`discussed (the element saying the coupling and mating arrangements are non-
`
`circular). The Petition clearly states that “V-shaped spaces 46” are part of the
`
`mating arrangement, and projections 102 are part of the cap, which is the coupling
`
`arrangement. These two features are described as non-circular, which makes both
`
`the coupling and mating arrangements non-circular:
`
`“Neither the projections nor the V-shaped spaces can be
`regarded as circular, and the shape of the opening [mating
`arrangement] is non-circular.” Petition at 31.
`The Decision says “[t]he projections 102 do not form part of threaded nut 66.”
`
`Decision at 19. Petitioner agrees, but Petitioner never argued this. The Petition
`
`clearly says the projections are part of the cap, not part of the threaded nut:
`
`“Bartimes discloses two downwardly extending projections 102
`on the pump cap (see Fig. 3).” Petition at 31, emphasis added.
`As noted in the Decision, the projections 102 are part of a backup disc,
`
`which is not the threaded nut. However, the backup disc, shown in Figure 3, along
`
`with the projections, are “arranged on the pump cap.”
`
`“Figure 3 of Bartimes shows the pump cap replacement
`assembly on the cap, with just the pump removed.” Petition at
`29.
`
`- 10 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`The annotated Figure 3 in the Petition shows the backup disc and projections
`
`as part of the cap assembly and nut in Figure 3. The term “assembly” does not
`
`exclude portions from the cap.
`
`
`
`The Patent Owner’s sole basis for disputing Bartimes is the bald assertion
`
`that the coupling arrangement is merely the threaded nut. The Patent Owner
`
`entirely ignores the projections 102. Nowhere does either the Decision or the
`
`Patent Owner set forth a construction of the claim term “coupling arrangement
`
`arranged on the pump cap body” that would exclude the combination of the
`
`- 11 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`threaded nut with the downward projections 102. Without such a construction the
`
`Decision lacks a basis for excluding the projections.
`
`Petitioner submits that Bartimes clearly shows the elements of claim 1 by
`
`anticipation in Ground 2, and thus an IPR trial should be instituted on this ground.
`
`No objection was made in the Decision to the showing of obviousness for the
`
`dependent claims that rely on anticipation by Bartimes for the elements of claim 1,
`
`and thus institution against all the claims challenged on the bases of Bartimes, as
`
`set forth in Grounds 5, 7, 9, 11, 14 and 16, is respectfully requested.
`
`
`
`
`
`- 12 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`
`
`VI. CONCLUSION
`
`The matters overlooked, as described above, led to an abuse of discretion
`
`(established by overlooking a significant fact) in the non-appealable denial of
`
`institution. The decision not to institute despite a clear showing of a reasonable
`
`likelihood of success in showing that all the elements being disclosed or obvious in
`
`light of Guss and Bartimes was based on erroneous factual findings or a clear error
`
`of judgment. For the foregoing reasons, Petitioner respectfully requests that the
`
`Board grant this request for rehearing.
`
`Dated: Sept. 26, 2016
`
`
`
`
`
`Lead Counsel
`
`
`Paul C. Haughey
`Registration No. 31,836
`phaughey@kilpatricktownsend.com
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`Two Embarcadero Center, Suite 1900
`San Francisco, CA 94111
`Telephone: (415) 576-0200
`Fax: (415) 576-0300
`
`
`
`
`Respectfully submitted,
`
`By: /Paul C. Haughey/
`Paul C. Haughey
`Registration No. 31,836
`Lead Counsel for Petitioners
`
`Back-Up Counsel
`
`
`A. James Isbester
`Registration. No. 36,315
`JIsbester@kilpatricktownsend.com
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`Two Embarcadero Center, Suite 1900
`San Francisco, CA 94111
`Telephone: (415) 576-0200
`Fax: (415) 576-0300
`
`- 13 -
`
`

`
`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of this Petitioner’s Request for
`
`Rehearing UNDER 37 C.F.R. § 42.71 ON THE DECISION NOT TO INSTITUTE
`
`INTER PARTIES REVIEW, is being served on the Patent Owner concurrently
`
`with the filing of this document via email and USPS Express Mail to the following
`
`persons:
`
`Keith J. Barkaus
`kbarkaus@ostrolenk.com
`
`Douglas A. Miro
`dmiro@ostrolenk.com
`
`OSTROLENK FABER LLP
`1180 Avenue of the Americas
`New York, New York 10036-8403
`
`
`Dated: Sept. 26, 2016
`
`
`
`/Paul C. Haughey/
`By:
`Paul C. Haughey
`Registration No. 31,836
`Kilpatrick Townsend & Stockton LLP
`Two Embarcadero Center, Suite 1900
`San Francisco, CA 94111
`Telephone: 415-576-0200
`Facsimile: 415-576-0300
`phaughey@kilpatricktownsend.com
`Counsel for Petitioner
`
`68733849V.1
`
`- 14 -

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