`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: March 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01223
`Patent 8,504,746 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2016-01223
`Patent 8,504,746 B2
`
`INTRODUCTION
`Petitioner, listed above, filed a Request for Rehearing (Paper 11,
`“Request” or “Reh’g Req.”) of our decision denying institution of inter
`partes review (Paper 10, “Institution Decision” or “Inst. Dec.”). The
`Request contends that we misapprehended Petitioner’s position regarding
`disclosure of the claimed “analog signal acquisition channel.” Reh’g Req.
`“When rehearing a decision on petition, a panel will review the
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of
`showing a decision should be modified lies with the party challenging the
`decision[,]” which party “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. § 42.71(d).
`We grant Petitioner’s request insofar as we have reconsidered our
`analysis of whether Petitioner has shown that the prior art discloses the
`claimed “analog acquisition channel,” but we decline to modify our previous
`decision.
`
`ANALYSIS
`
`A. Background
`In the Institution Decision, we found that the Petition did not show
`sufficiently that McNeill discloses or would have made obvious an “analog
`signal acquisition channel” as required by all the challenged claims. Inst.
`Dec. 10–13. In particular, we stated that
`According to Petitioner, “[i]t is implicit and inherent for a
`scanner to have an analog signal acquisition channel for
`receiving a signal from analog source.” [Pet. 35.] Petitioner
`goes on to assert that a typical scanner, as of the priority date,
`
`2
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`IPR2016-01223
`Patent 8,504,746 B2
`
`would produce a digital representation of an image and transmit
`that image “to an interface device (e.g. McNeill’s target
`computer) across a peripheral device communications channel,
`such as a SCSI bus or a parallel bus conforming to the IEEE
`1284 standard.” Id. (citing Ex. 1306 ¶ 98). Nothing in this
`analysis, however, explains how the communications channel is
`an analog data acquisition channel. Nor does Petitioner point
`to anything else in McNeill that it is relying on for disclosure of
`such an analog data acquisition channel. Id.
`
`Dec. 10–11.
`Based on this language in the Institution Decision, Petitioner asserts
`that “the Board mistakenly believed that the Petition relied on the
`‘communications channel’ connecting the scanner and the target computer of
`the McNeill prior art as the ‘analog signal acquisition channel.’” Reh’g Req.
`1, 3. According to Petitioner, the Petition instead relied on “McNeill’s
`disclosure of a scanner that produces analog signals (via its CCD sensor),
`and transmits the analog signals to the analog-digital converter in the
`scanner, [which] necessarily also discloses an analog signal acquisition
`channel.” Id. at 5. Petitioner also contends that its reading of McNeill is
`confirmed by a decision instituting an inter partes review in a different
`proceeding challenging US Patent No. 8,966,144 B2 (“the ’144 patent”),
`which is related to the ’746 patent. Id. (citing Case No. IPR2016-01225,
`Paper 10, 25–26). Petitioner concludes that “[t]he Board, thus, should
`institute inter partes review of the ’746 patent for reasons similar to those
`presented for the ’144 patent.” Id. at 5–6.
`We have considered Petitioner’s arguments, but do not agree that this
`proceeding should be instituted.
`
`3
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`IPR2016-01223
`Patent 8,504,746 B2
`B. “analog signal acquisition channel”
`Petitioner asserts that although McNeill does not expressly disclose
`the claimed “analog signal acquisition channel,” such an element is
`inherently disclosed by McNeill’s scanner. Reh’g Req. 3–5. Because
`McNeill’s scanner produces analog signals and then transmits those signals
`to an analog-to-digital converter, Petitioner asserts the scanner must
`“necessarily” include a channel connecting the analog sensor. Id. at 5 (citing
`Ex. 1306 ¶ 98. However, Petitioner’s evidence does not adequately support
`a finding of inherency.
`Petitioner relies on expert testimony to support its assertion of
`inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent
`for a scanner to have an analog signal acquisition channel for receiving a
`signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This
`sentence is exactly, word for word, the same as the sentence in the Petition it
`is relied upon to support. Pet. 35. Repetition of this legal conclusion in a
`declaration signed by a technical expert adds nothing to Petitioner’s attorney
`argument. It is not persuasive evidence. Second, both the Petition and the
`expert state that “[a] typical scanner at the priority date of the ’746 patent
`had a CCD and analog to digital circuitry to produce a digital representation
`of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately
`support a finding that the scanner discussed in McNeill necessarily discloses
`an analog signal acquisition channel. “Inherency . . . may not be established
`by probabilities or possibilities. The mere fact that a certain thing may result
`from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d
`578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all
`
`4
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`IPR2016-01223
`Patent 8,504,746 B2
`
`scanners. Petitioner has not directed us to any other evidence supporting a
`finding of inherency.
`And as noted in our Institution Decision (Inst. Dec. 11), the Petition
`does not address why a person of ordinary skill in the art would find the
`addition of an analog signal acquisition channel obvious based on McNeill’s
`disclosure. The closest Petitioner gets to addressing this issue is in a
`statement that says “[a]dding an analog sensor to the ‘exemplary system’ of
`McNeill is inherent, but if it is not, a POSITA would find it obvious to do
`so.” Pet. 35. This vague and conclusory statement, part of a section of the
`brief which does not even reference the term “analog signal acquisition
`channel,” is insufficient to show that Petitioner is reasonably likely to
`prevail in showing that a limitation of the claim, not expressly disclosed in
`the reference, would have been obvious.
`
`C. IPR2016-01225
`We also do not agree with Petitioner’s assertion that the institution of
`a review in IPR2016-01225 leads to a conclusion that we should institute
`inter partes review in this case. Petitioner does not address the differences
`in the claims between the ’144 patent (challenged in IPR2016-01225) and
`the ’746 patent, but those differences are significant. Most importantly, the
`’144 patent claims do not recite “an analog signal acquisition channel.”
`Thus, whether such an element is disclosed by McNeill is not an issue in that
`case.
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is granted insofar
`as we have reconsidered our analysis of whether Petitioner has shown that
`
`5
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`IPR2016-01223
`Patent 8,504,746 B2
`
`the prior art discloses the claimed “analog acquisition channel,” but we
`decline to modify our previous decision not to institute trial in this
`proceeding.
`
`
`
`
`
`
`
`
`6
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`
`
`IPR2016-01223
`Patent 8,504,746 B2
`
`For PETITIONER:
`Gregory Cordrey
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`gcordrey@jmbm.com
`
`T. Vann Pearce, Jr.
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`
`David M. Maiorana
`F. Drexel Feeling
`Matthew W. Johnson
`David L. Witcoff
`Marc S. Blackman
`JONES DAY
`dmaiorana@jonesday.com
`f.dfeeling@jonesday.com
`mwjohnson@jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`
`Dion Bregman
`MORGAN, LEWIS & BOCKIUS LLP
`Dion.bregman@morganlewis.com
`
`For PATENT OWNER:
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`Anthony Meola, Jr.
`The Meola Firm, PLLC
`info@themeolafirm.com
`
`7
`
`
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