Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 12
`Filed: November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.,
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA,
`Patent Owner.
`____________
`
`Case IPR2016-01359
`Patent 8,909,094 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a); 37 C.F.R. §§ 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 12
`Filed: November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.,
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA,
`Patent Owner.
`____________
`
`Case IPR2016-01359
`Patent 8,909,094 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a); 37 C.F.R. §§ 42.108
`
`
`
`
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`I. INTRODUCTION
`
`A.
`
`Background
`
`On July 8, 2016, a Petition (Paper 2, “Pet.”) was filed to institute inter
`
`partes review of claims 1, 7–9, and 29 of U.S. Patent No. 8,909,094 B2
`
`(Ex. 1001, “the ’094 patent”). Patent Owner filed a Preliminary Response
`
`(Paper 5, “Prelim. Resp.”) on August 29, 2016. We authorized Petitioner to
`
`file a Reply and Patent Owner to file a Sur-Reply. Paper 7. Petitioner filed
`
`a Reply (“Reply”). Paper 8. Patent Owner filed a Sur-Reply (“Sur-Reply”).
`
`Paper 10.
`
`For the reasons that follow, we exercise our discretion to deny the
`
`Petition and not institute inter partes review of claims 1, 7–9, and 29 of the
`
`’094 patent.
`
`B.
`
`Related Matters
`
`The parties indicate that the ’094 patent was the subject of an
`
`investigation (now terminated) before the International Trade Commission:
`
`In the Matter of Certain Toner Supply Containers And Components Thereof,
`
`Inv. No. 337-TA-960. Pet. 2; Paper 4, 2.
`
`Petitioner has, thus far, filed four separate petitions for inter partes
`
`review of the ’094 patent. The first, IPR2015-01954, was filed on
`
`September 25, 2015. Pet. 2. This petition challenged claims 1, 7–9, and 29
`
`(the same claims challenged here) as well as additional claims 11, 16–18,
`
`and 38 of the ’094 patent. IPR2015-01954 Paper 2, 1. After reviewing the
`
`petition in that proceeding, the Board declined, on March 9, 2016, to
`
`institute inter partes review of any challenged claim of the ’094 patent.
`
`IPR2015-01954 Paper 9, 27. Concurrently with the filing of this Petition, on
`
`2
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`July 8, 2016, Petitioner filed two additional petitions for inter partes review
`
`of the ’094 patent. Those petitions are now pending in IPR2016-01360 and
`
`IPR2016-01361.
`
`For the purposes of this Decision, we adopt Petitioner’s nomenclature
`
`for the various petitions it has filed challenging claims of the ’094 patent.
`
`Thus, Petitioner identifies the petition here as “Second Petition,” the petition
`
`in IPR2016-01360 as “Third Petition,” and the petition in IPR2016-01361 as
`
`“Fourth Petition,” all relative to the petition filed in IPR2015-01954, which
`
`we will refer to as “First Petition.”
`
`C.
`
`The ’094 Patent
`
`Of all challenged claims, claims 1 and 29 are independent and both
`
`are directed to a “toner supply container.”
`
`D.
`
`Evidence Relied Upon
`
`
`
`
`
`Reference
`
`Suzuki
`
`Jap. Pat. App. Pub.
`No. 2000-305346
`
`Date
`
`Nov. 2, 2000
`
`Ikesue
`
`U.S. Patent No. 5,598,254
`
`Jan. 28, 1997
`
`Exhibit
`
`Ex. 1006
`
`
`Ex. 1007
`
`
`Petitioner also relies on the Declaration of Brian Springett, Ph.D. Ex.
`
`1008. In addition, with its Reply, Petitioner provided a Declaration of Hui-
`
`Wen Hsieh. Ex. 1009.
`
`E. The Asserted Ground of Unpatentability
`
`
`
`Petitioner challenges claims 1, 7–9, and 29 on one ground:
`
`obviousness under 35 U.S.C. § 103 over Suzuki and Ikesue. Pet. 15.
`
`3
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`II. ANALYSIS
`
`A. Discretionary Non-Institution
`
`1.
`
`Overview
`
`
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108(a). A number of factors are considered in
`
`deciding whether to exercise discretion not to institute review, including:
`
`(a) the finite resources of the Board;
`
`(b) the requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on
`which the Director notices institution of review;
`
`(c) whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`
`(d) whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it;1
`
`(e) whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;2
`
`(f) the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition; and
`
`
`
`
`
`
`1 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00506, slip op.
`at 4 (PTAB Dec. 10, 2014) (Paper 25) (Informative), and slip op. at 6
`(PTAB July 7, 2014) (Paper 17); Toyota Motor Corp. v. Cellport Sys., Inc.,
`Case IPR2015-01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7).
`
`2 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00628, slip op.
`at 11 (PTAB October 20, 2014) (Paper 21) (discouraging filing of a first
`petition that holds back prior art for use in later attacks against the same
`patent if the first petition is denied); Toyota Motor Corp., slip op. at 8 (“the
`opportunity to read Patent Owner’s Preliminary Response in IPR2015-
`
`4
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`(g) whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent.
`
`LG Electronics Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-
`
`00986 (PTAB Aug. 22, 2016) (Paper 12) slip op. at 6–7; NVIDIA Corp. v.
`
`Samsung Elecs. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9)
`
`slip op. at 6–7 (“Nvidia”).
`
`
`
`
`
`
`
`
`
`2. The First Petition—Filed in IPR2015-01954
`
`As noted above, the Petition here is not the first petition filed by
`
`Petitioner challenging claims 1, 7–9, and 29 of the ’094 patent. The First
`
`Petition was filed on September 25, 2015, in IPR2015-01954, alleging two
`
`grounds of unpatentability for claims 1, 7–9, and 29:
`
`
`
`(1) that claims 1, 8–9, and 29 are anticipated by
`
`Matsuoka (U.S. Patent No. 5,903,806) under 35 U.S.C.
`
`§ 102(b); and
`
`
`
`(2) that claims 1, 7–9, and 29 are unpatentable as obvious
`
`over Matsuoka under 35 U.S.C. § 103.
`
`3. The Decision Denying Institution in IPR2015-01954
`
`
`
`The First Petition (in IPR2015-01954) was denied on March 9, 2016.
`
`Ex. 3001.3 More than nine months passed between Petitioner’s filing of the
`
`First Petition, on September 25, 2015, and Petitioner’s filing of the Second
`
`Petition, in this proceeding, on July 8, 2016. During that time, Patent Owner
`
`filed a preliminary response in IPR2015-01954, addressing, inter alia, why
`
`
`00634, prior to filing the Petition here, is unjust.”).
`
`3 General Plastic Industrial Co., LTD v. Canon Inc., Case IPR2015-01954,
`(PTAB March 9, 2016) (Paper 9).
`
`5
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`Petitioner’s challenge in the First Petition against claims 1, 7–9, and 29 was
`
`deficient. Also during that time, the Board rendered its decision in
`
`IPR2015-01954, declining to institute inter partes review for any challenged
`
`claim of the ’094 patent and explaining why Petitioner’s challenge against
`
`claims 1, 7–9, and 29 based on Matsuoka was deficient. Specifically, in
`
`denying the First Petition, in IPR2015-01954, we rejected Petitioner’s
`
`argument treating rotary power transmitting member 44 of Matsuoka’s
`
`copier’s developing agent replenishing apparatus 40 as a component of
`
`Matsuoka’s toner cartridge 30. Ex. 3001, 19–20, 24. On April 8, 2016,
`
`Petitioner requested rehearing. That request was denied on May 19, 2016.
`
`4. The Second Petition
`
`
`
`The Petition here (Second Petition) is a response to our decision
`
`denying institution in IPR2015-01954. In this challenge to claims 1, 7–9,
`
`and 29, Petitioner no longer relies on Matsuoka. In this Second Petition,
`
`Petitioner relies on Suzuki alone for claims 1 and 7–9. Pet. 39–47. With
`
`respect to claim 29, Petitioner additionally relies on Ikesue. Id. at 48–54.
`
`
`
`Patent Owner urges us to exercise our discretion to deny institution.
`
`Prelim. Resp. 4–10. Patent Owner asserts that Petitioner was aware of
`
`Ikesue at least as early as May 8, 2012, when Petitioner identified it as prior
`
`art in a district court action involving another patent, more than 40 months
`
`prior to the filing of the First Petition on September 25, 2015. Id. at 7–8.
`
`Patent Owner also asserts also that Ikesue was “of record during prosecution
`
`of the ’094 patent.” Id. at 8. These assertions are not disputed by Petitioner.
`
`Patent Owner further argues that Petitioner should have known of Suzuki:
`
`“In light of prior proceedings between the parties, Petitioner ‘should have’
`
`conducted any necessary searches before filing its first petition, and certainly
`
`6
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
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`before April 2016.” Sur-Reply 3.
`
`
`
` Petitioner responds that the Board should not exercise its discretion
`
`to deny the Second Petition. Petitioner argues that the Second Petition was
`
`“timely filed,” i.e., within the one-year statutory time limit under 35 U.S.C.
`
`§ 315(b). Reply 1–2. Petitioner argues also that a discretionary denial is not
`
`appropriate here because the Second Petition does not present the same or
`
`substantially the same prior art or arguments as the First Petition. Id. at 3–4.
`
`
`
`Petitioner asserts that it was unaware of Suzuki at the time the First
`
`Petition was filed. Id. at 4. According to Petitioner, Suzuki was uncovered
`
`when, subsequent to the Board’s denial of rehearing of its decision not to
`
`institute inter partes review in IPR2015-01954, Petitioner initiated two new
`
`prior art searches. Id. at 4–5. In response, Patent Owner points out that
`
`Petitioner provides no explanation as to why it did not institute the searches
`
`earlier, before the First Petition was filed or after it received Patent Owner’s
`
`Preliminary Response in IPR2015-01954. Sur-Reply 3–4.
`
`
`
`
`
`
`
`5. Discussion
`
`We are concerned here about the limited resources of the Board and
`
`fundamental fairness for both Petitioner and Patent Owner. In that regard,
`
`our rules and procedures “shall be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” See 37 C.F.R § 42.1(b).
`
`Specifically, we are concerned that the multiple petition filings by Petitioner
`
`here have unfairly prejudiced Patent Owner. As Patent Owner points out,
`
`Patent Owner is being forced “to expend time and money to defend its patent
`
`against multiple attacks.” Sur-Reply 5.
`
`
`
`An important consideration under Nvidia and the related decisions
`
`discussed supra is whether the Petitioner knew or should have known of the
`
`7
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`new art when filing the First Petition. Nvidia at 8. We have considered the
`
`record and find that, at the time of filing of the First Petition, in IPR2015-
`
`01954, Petitioner either had all the information it needed, or had opportunity
`
`to access such information, to assert each of the unpatentability grounds
`
`presented here. Petitioner was aware of Ikesue long before the First Petition
`
`was filed. See infra. And the fact that Suzuki was uncovered only in a
`
`patent search that was initiated after the Board declined to institute inter
`
`partes review in IPR2015-01954 is of little help to Petitioner, who could
`
`have performed the search prior to filing the First Petition. The record
`
`shows that Petitioner waited to see if the first attack was unsuccessful prior
`
`to committing further efforts to conduct additional patent searches. The
`
`record shows also that Petitioner chose, at the time of filing of the First
`
`Petition, and as a part of its litigation strategy, to go forward with the
`
`positions taken in that First Petition, even after receiving Patent Owner’s
`
`Preliminary Response. These factors weigh against Petitioner under Nvidia.
`
`
`
`The facts here suggest this is a case of undesirable incremental-
`
`petitioning, where a petitioner relies on a Board decision in a prior
`
`proceeding involving the same parties, the same patent, and the same claims,
`
`to mount a serial attack against after an unsuccessful first attack, by
`
`addressing deficiencies argued by the Patent Owner and determined by the
`
`Board. Allowing such serial challenges to the same patent, by the same
`
`petitioner, risks harassment of patent owners and frustration of Congress’s
`
`intent in enacting the Leahy-Smith America Invents Act. See Butamax
`
`Advanced Biofuels LLC, v. Gevo, Inc., Case IPR2014-00581, slip op. at 13
`
`(PTAB Oct. 14, 2014) (Paper 8) (citing H.R. Rep. No. 112-98, pt. 1, at 48
`
`(2011) (“While this amendment is intended to remove current disincentives
`
`8
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`to current administrative processes, the changes made by it are not to be
`
`used as tools for harassment or a means to prevent market entry through
`
`repeated litigation and administrative attacks on the validity of a patent.
`
`Doing so would frustrate the purpose of the section as providing quick and
`
`cost effective alternative to litigation.”)). Also, “it is more efficient for the
`
`parties and the Board to address a matter once rather than twice.” Samsung
`
`Elec. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-00114, slip op.
`
`at 6 (PTAB Jan. 28, 2015) (Paper 14). The Board’s resources would be
`
`more fairly expended on first petitions rather than on a follow-on petition
`
`like the Petition in this case.
`
`
`
`This Second Petition is not the consequence of a position surprisingly
`
`advanced by Patent Owner or adopted by the Board. The challenged claims
`
`clearly require the sealing member to be a component of the toner supply
`
`container, e.g., a toner cartridge. As the Board concluded in denying the
`
`First Petition:
`
`On this record, we are not sufficiently persuaded that
`
`Matsuoka’s “integrally combined fixed cover 32 and rotary
`power transmitting member 44” can be said to meet the “sealing
`member” recited in the challenged claims as a part of the “toner
`supply container.”
`
`Ex. 3001, 20. Thus, Petitioner seeks to remedy its own error in treating a
`
`component of Matsuoka’s copier as a part of Matsuoka’s toner cartridge by
`
`filing additional petitions challenging the same claims. This Second Petition
`
`has been filed as an attempt to cure a substantive and material defect in the
`
`petition filed in IPR2015-01954. This imposes an unnecessary burden on
`
`Patent Owner and the Board.
`
`9
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`
`
`We have considered Petitioner additional arguments and find them not
`
`persuasive. For instance, we are not persuaded that the assertions that the
`
`Petition here is timely, or that Petitioner relies on different art and arguments
`
`here, are sufficient. We look instead to the Nvidia factors set forth supra.
`
`Those factors do not require the challenges to be identical or substantially
`
`identical, only that at the time of filing of the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition.
`
`In that connection, we adopt Patent Owner’s reasoning that Petitioner should
`
`have known of Suzuki before filing the First Petition. Sur-Reply 2–4.
`
`B. Conclusion
`
`For all of the reasons discussed above, and given the limited resources
`
`of the Board, we exercise our discretion not to institute inter partes review
`
`for any of claims 1, 7–9, and 29 of the ’094 patent on any ground. See
`
`35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).
`
`III. ORDER
`
`It is
`
`ORDERED that the Petition is denied and no trial or inter partes
`
`review is instituted for any of claims 1, 7–9, and 29 of the ’094 patent on
`
`any ground.
`
`
`
`10
`
`
`
`IPR2016-01359
`Patent 8,909,094 B2
`
`
`For PETITIONER:
`
`Steven F. Meyer
`Tim Tingkang Xia
`LOCKE LORD LLP
`smeyer@lockelord.com
`txia@lockelord.com
`
`
`
`For PATENT OWNER:
`
`Edmund J. Haughey
`Michael Sandonato
`Justin J. Oliver
`FITZPATRICK, CELLA, HARPER & SCINTO
`canon094ipr@fchs.com
`
`
`
`11
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