`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
`
`
`
`
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`TABLE OF CONTENTS
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`
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`RELIEF REQUESTED ................................................................................... 3
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`III.
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`STANDARD OF REVIEW ............................................................................. 3
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`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
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`I.
`
`INTRODUCTION
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`Petitioner respectfully requests reconsideration of limited portions of the
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`Board’s Decision in Paper 8 (“Decision”) denying inter partes review of U.S.
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`Patent 7,490,743 (the “’743 Patent”) as requested in the petition filed in IPR2016-
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`00821 (the “Petition”).1
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`The ’743 Patent is directed to a dispenser assembly for a container. The
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`dispenser assembly has a pump cap with a pump and a tube (passageway) that
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`engages a dip tube in the container. A non-circular “coupling arrangement” on the
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`pump cap that couples to a non-circular “mating arrangement” on the container
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`ensures that the tubes are aligned when the cap is attached to the container.
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`The ’743 Patent describes four embodiments: (1) Container with dual dip
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`tubes, (2) Container within a container, forming an annular space, (3) Oval
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`container mouth and cap, (4) Annular trough in cap that mates with top of
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`container dip tube. Petition at 8-9. The trough-related claims were a non-elected
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`species and never pursued. As noted in the Petition at p. 9:
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`“A modified embodiment with a projection allows only one rotational orientation:
`
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`1 Prior art and other abbreviations are those used in the Petition and the Decision.
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`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.
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`First, the Decision misapprehended a labeling of “first” and “second” coupling
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`arrangements in Ground 1 as suggesting separate, independent coupling
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`arrangements, when in fact the Petition refers to them as two portions of the one
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`coupling arrangement in the prior art Guss reference. Second, the Decision
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`misapprehended and overlooked that Petitioner argued that the cap of the prior art
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`Bartimes reference corresponds to the claimed “coupling arrangement,” not the
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`threaded nut included in that cap.
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`Petitioner respectfully requests rehearing on these points, which are
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`elaborated below.
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`II. RELIEF REQUESTED
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`Petitioner requests a rehearing of the Decision and institution of an inter
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`
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`partes review (“IPR”) based on anticipation by Guss and Bartimes for claim 1, and
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`obviousness for dependent claims, as set forth in the following grounds:
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` Ground 1 of the Petition (Claim 1 is unpatentable as anticipated by
`
`Guss);
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` Ground 2 (Claim 1 is unpatentable as anticipated by Bartimes);
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` Grounds 5-14 and 16 (Claims 2-10 are unpatentable over Guss or
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`Bartimes in view of other references showing dependent claim features as
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`set forth in the Petition).
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`III. STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” An abuse of discretion
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`occurs when a “decision was based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or … a clear error of judgment.” PPG Indus. Inc. v
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`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
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`(citations omitted). The request must “specifically identify all matters the party
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`believes the Board misapprehended or overlooked and the place where each matter
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`was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
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`IPR2016-00821 Request for Rehearing
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`§ 42.71(d). The PTAB has noted that, “in [its] view, when [it] recognize[s] that [it
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`has] misapprehended or overlooked a significant fact, the necessary abuse of
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`discretion” is established. IPR2014-01279, Paper 18 at 8 (noting that “[t]he ‘abuse
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`of discretion’ standard applicable to requests for rehearing of decisions not to
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`institute is based on the Director’s rule (37 C.F.R. § 42.71(c)), and not necessarily
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`Article III practice”).
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`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
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`arguments. Patent Owner argued in the Preliminary Response that these terms do
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`not need to be construed. But then in describing the corresponding features of the
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`disclosed embodiments Patent Owner identified only those embodiments that relate
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`to the oval shape of the cap from the ’743 Patent, while ignoring others. By using
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`only certain embodiments of the patent as exemplary, Patent Owner suggests a
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`narrower interpretation than Patent Owner used in litigation. As noted in the
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`Petition, Patent Owner took the position in litigation that the term “coupling
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`arrangement” covers the circular cap of Petitioner’s product:
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`“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,
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`that claim constructions should be expressly stated. Patent Owner cannot be
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`allowed to argue for a narrower construction in an IPR, and a broader construction
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`in the litigation, which is exactly what Patent Owner has done.
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`The Decision, on pages 9-10, states that it isn’t clear whether the Petition
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`was arguing that the first and second coupling and mating arrangements of Guss
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`separately were showing the claimed coupling and mating arrangements, or were
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`to be considered together. On this basis, the Decision denies institution under
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`Ground 1, anticipation based on Guss.
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`Petitioner respectfully submits that the Decision relies upon a strained
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`reading of the Petition. The Petition refers to the “first” and “second” parts of
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`Guss in order to make clear what part of the coupling arrangement engaged what
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`part of the mating arrangement, not to suggest that Guss disclosed two different
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`structures, either of which by itself is a coupling arrangement. Nor did it occur to
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`Patent Owner to suggest such a reading. Instead Patent Owner characterized the
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`Petitioner’s argument as referring to different portions of the coupling and mating
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`arrangements:
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`“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
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`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
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`the Guss cap (first and second coupling arrangements) together meet the
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`requirement of element 1.5 of a coupling arrangement:
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`“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
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`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
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`
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`arrangement on page 25, quoted in the Decision on page 10, it should be clear that
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`they were to be considered together.
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`“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
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`together as a coupling arrangement, since the rear portion interlocks with the
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`projection as the front portion with the threads is being screwed onto the top of the
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`container.
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`Moreover, if one reads the Petition to argue that the threaded cap and the
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`rear portion of the cap each separately meet the elements of the claims, then one
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`must conclude that the Petition simply failed to discuss certain elements for one or
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`the other of the cap or the rear portion. On the other hand, if one reads the Petition
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`to assert that these two parts were to be considered together, then the Petition does
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`address all the elements. This is clearly the intended and logical interpretation. It
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`is also the interpretation understood by Patent Owner. Finally, as the Petition notes
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`and as quoted above, coupling and mating arrangements that include, in addition to
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`other components, a projection on one side with a groove for receiving that
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`projection on the other is one of the embodiments described in the ’743 Patent. It
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`is to be expected then, that when Petitioner identified a coupling and mating
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`structure in the prior art that similarly includes, in addition to other components, a
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`projection on the mating arrangement and a space for receiving that projection on
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`the coupling arrangement, the intent is that these features are to be considered
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`together.
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`The larger picture is that, regardless of the labelling, the Petition clearly
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`shows that the prior art discloses a threaded cap in conjunction with a tab or
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`projection on the container that fits into a space on the cap, for coupling the cap to
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`the container and that collectively, these structures are not circular. Accordingly,
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`under the broadest reasonable interpretation, the “coupling arrangement” and
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`“mating arrangement” elements have been met.
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`Because the Decision’s basis for denying institution of the Guss anticipation
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`ground was premised only on the Board’s oversight of the Petition’s arguments
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`regarding the interpretation of the “coupling arrangement” limitation, rehearing to
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`consider that argument should result in the Board instituting trial on the Guss
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`anticipation of Ground 1. No objection was made in the Decision to the showing
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`of obviousness for the dependent claims that rely on anticipation by Guss for the
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`elements of claim 1, and thus institution against all the claims challenged on the
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`basis of Guss, as set forth in Grounds 3, 4, 6, 8, 12, 13 and 15, is respectfully
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`requested.
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`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
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`misled the Board by saying “The Petitioner incorrectly argues that the nut 66 of
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`Bartimes corresponds to the ‘coupling arrangement’ of claim 1.” Petitioner said no
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`such thing. Rather, Petitioner said “The threaded cap [not threaded nut] of
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`Bartimes clearly meets this requirement [coupling arrangement].” Petition at 30,
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`emphasis added. This part of the Petition discusses element [1.5] which only talks
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`about the “detachably couple” aspect of the coupling arrangement, i.e., the threads.
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`The cap includes not only the threaded nut, but also includes the projections 102.2
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`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.”
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`The projections are clearly described as part of the coupling arrangement (the cap),
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`in addition to the threaded nut, on pp. 31-32 of the Petition, where element [1.6] is
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`discussed (the element saying the coupling and mating arrangements are non-
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`circular). The Petition clearly states that “V-shaped spaces 46” are part of the
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`mating arrangement, and projections 102 are part of the cap, which is the coupling
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`arrangement. These two features are described as non-circular, which makes both
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`the coupling and mating arrangements non-circular:
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`“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.”
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`Decision at 19. Petitioner agrees, but Petitioner never argued this. The Petition
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`clearly says the projections are part of the cap, not part of the threaded nut:
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`“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,
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`which is not the threaded nut. However, the backup disc, shown in Figure 3, along
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`with the projections, are “arranged on the pump cap.”
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`“Figure 3 of Bartimes shows the pump cap replacement
`assembly on the cap, with just the pump removed.” Petition at
`29.
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`The annotated Figure 3 in the Petition shows the backup disc and projections
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`as part of the cap assembly and nut in Figure 3. The term “assembly” does not
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`exclude portions from the cap.
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`
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`The Patent Owner’s sole basis for disputing Bartimes is the bald assertion
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`that the coupling arrangement is merely the threaded nut. The Patent Owner
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`entirely ignores the projections 102. Nowhere does either the Decision or the
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`Patent Owner set forth a construction of the claim term “coupling arrangement
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`arranged on the pump cap body” that would exclude the combination of the
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`threaded nut with the downward projections 102. Without such a construction the
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`Decision lacks a basis for excluding the projections.
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`Petitioner submits that Bartimes clearly shows the elements of claim 1 by
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`anticipation in Ground 2, and thus an IPR trial should be instituted on this ground.
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`No objection was made in the Decision to the showing of obviousness for the
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`dependent claims that rely on anticipation by Bartimes for the elements of claim 1,
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`and thus institution against all the claims challenged on the bases of Bartimes, as
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`set forth in Grounds 5, 7, 9, 11, 14 and 16, is respectfully requested.
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`VI. CONCLUSION
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`The matters overlooked, as described above, led to an abuse of discretion
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`(established by overlooking a significant fact) in the non-appealable denial of
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`institution. The decision not to institute despite a clear showing of a reasonable
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`likelihood of success in showing that all the elements being disclosed or obvious in
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`light of Guss and Bartimes was based on erroneous factual findings or a clear error
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`of judgment. For the foregoing reasons, Petitioner respectfully requests that the
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`Board grant this request for rehearing.
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`Dated: Sept. 26, 2016
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`
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`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
`
`
`
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`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
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`IPR2016-00821 Request for Rehearing
`U.S. Patent 7,490,743
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of this Petitioner’s Request for
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`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
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`with the filing of this document via email and USPS Express Mail to the following
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`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
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`68733849V.1
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