`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §42.71(d), AND
`FOR AN EXPANDED PANEL
`
`Case No. IPR2016-01359
`
`NY 835315v.1
`
`
`
`TABLE OF CONTENTS
`
`Introduction......................................................................................................1
`I.
`Background......................................................................................................2
`II.
`Legal Standards ...............................................................................................5
`III.
`IV. Basis For Relief Requested..............................................................................5
`A.
`The Board Misapplied 35 U.S.C. §314(a) And The
`Nvidia Factors........................................................................................6
`
`1.
`
`2.
`
`There Was No Finding That The Second
`Petition Needed To Be Denied As A “Safety
`Valve”...............................................................................6
`Petitioner Submitted Evidence of Lack of
`Actual Knowledge Of Suzuki Until After
`The Denial Of First Petition .............................................7
`The Denial Of The First Petition Should Not
`Be Fatal...........................................................................10
`There Is Minimal Additional Burden On The
`Patent Office ...................................................................12
`Prejudice To Patent Owner Is Not A
`Nvidia Factor ..................................................................13
`The Board’s Application Of The Nvidia Factors
`Improperly Conflicts With 35 U.S.C. §325(d)....................................13
`
`3.
`
`4.
`
`5.
`
`B.
`
`Request For Expanded Panel On Rehearing .................................................14
`V.
`VI. Conclusion .....................................................................................................15
`
`NY 835315v.1
`
`- i -
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Atlas Copco Airpower N.V. v. Kaeser Kompressoren SE,
`IPR2015-01421............................................................................................. passim
`
`Butamax v. Gevo, IPR2014-00581...........................................................................13
`
`Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) ..............................................................................12
`
`Conopco v. Procter & Gamble, IPR2014-00506.....................................................10
`
`HCSC-Laundry v. U.S., 450 U.S. 1 (1981)..............................................................15
`
`IMS Tech., Inc. v. Haas Automation, Inc.,
`206 F.3d 1422 (Fed. Cir. 2000)............................................................................12
`
`In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) .............................................................9
`
`Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449.............................. passim
`
`Nvidia v. Samsung, IPR2016-00134............................................................... 6, 9, 10
`
`Renda Marine, Inc. v. U.S., 509 F.3d 1372 (Fed. Cir. 2007).....................................5
`
`Roche Prods., Inc. v. Bolar Pharm. Co.,
`733 F.2d 858 (Fed. Cir. 1984) ..............................................................................14
`
`Samsung v. Rembrandt Wireless, IPR2015-00118..................................................13
`
`Target v. Destination Maternity, IPR2014-00508...................................................15
`
`The Brinkman Corp. v. A&J Mfg., LLC, IPR2015-00056 .........................................4
`
`Toyota Motor v. Cellport Sys., IPR2015-01423 ......................................................10
`
`Statutes
`35 U.S.C. §311.......................................................................................................2, 5
`
`NY 835315v.1
`
`- ii -
`
`
`
`35 U.S.C. §314(a) ............................................................................................ passim
`
`35 U.S.C. §315(b) ......................................................................................................4
`
`35 U.S.C. §316(a)(11)................................................................................................7
`
`35 U.S.C. §325(d) ............................................................................................ passim
`
`Regulations
`19 C.F.R. §210.13(b)(3).............................................................................................4
`
`37 C.F.R. §42.108(a)..................................................................................................1
`
`37 C.F.R. §42.15(a)(1)-(2).......................................................................................13
`
`37 C.F.R. §42.71(c)....................................................................................................5
`
`37 C.F.R. §42.71(d) ......................................................................................... passim
`
`Other Authorities
`“A Guide to the Legislative History of the America Invents Act: Part II of II”,
`21 Fed. Cir. B.J. 539 (2012) ...................................................................................6
`
`America Invents Act, Sec. 10(a)(2) .........................................................................13
`
`Board’s SOP 1 §III(A)(2) (Rev. 14, May 8, 2015)..............................................2, 15
`
`NY 835315v.1
`
`- iii -
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. §42.71(d), Petitioner General Plastic Industrial Co.
`
`(“Petitioner”) requests rehearing of the Decision (Paper 12) denying its Second
`
`Petition (IPR2016-01359,
`
`filed July 8, 2016) under 35 U.S.C. §314(a) and
`
`37 C.F.R. §42.108(a), without assessing the substantive merits of the two grounds
`
`of unpatentability presented in the Second Petition. Petitioner filed a first petition
`
`(IPR2015-01954, filed Sept. 25, 2015) asserting two grounds based on Matsuoka
`
`and the Second Petition asserting one ground based on Suzuki (which was not
`
`actually known to Petitioner until after the denial of the first petition) and a second
`
`ground based on Suzuki and Ikesue. Neither the Board nor Patent Owner Canon
`
`contends that the Second Petition relies upon “the same or substantially the same
`
`prior art or arguments” as previously presented in the first petition, within the
`
`meaning of 35 U.S.C. §325(d). The rationale used by the Board under §314(a) to
`
`deny the subject Second Petition would effectively bar the filing of a second
`
`petition after the denial of a first petition in every other inter partes proceeding
`
`going forward, which directly conflicts with §325(d) and Board decisions
`
`instituting inter partes reviews on just such second petitions. The statutory
`
`framework and rules implementing inter partes reviews contemplate that a
`
`petitioner may file more than one petition during the statutory period, and the
`
`discretion implicit in §314(a) should not amount to a de facto bar against all
`
`NY 835315v.1
`
`- 1 -
`
`
`
`second petitions filed after the denial of the first petition.
`
`Here, the Board was overly concerned with the perceived burdens that
`
`would be imposed on the Patent Office and Patent Owner Canon, but ignored the
`
`overarching purpose of Section 6 of the America Invents Act (“AIA”), 35 U.S.C.
`
`§§311 et seq., which is to improve the quality of patents by cancelling unpatentable
`
`claims. The Second Petition evidences that the challenged claims are unpatentable
`
`under one newly presented ground based in part on the newly discovered Suzuki.
`
`The Board has overlooked this overarching purpose by not even addressing the
`
`substantive merits of this sole new ground. See Decision (Paper 12).
`
`Patent policy dictates rehearing by an expanded panel to address inconsistent
`
`panel interpretation of §314(a), and its interplay with 35 U.S.C. §325(d), including
`
`the proper scope and requirements for a panel’s analysis thereunder. See Board’s
`
`SOP 1 §III(A)(2) (Rev. 14, May 8, 2015). Petitioner therefore requests that an
`
`expanded panel of the Board rehear and reverse the Board’s Decision (Paper 12)
`
`and address the substantive merits of the Second Petition.
`
`II.
`
`BACKGROUND
`
`Neither the first petition nor the Second Petition can be properly viewed as
`
`being a litigation tactic to delay the day of reckoning in a patent infringement suit
`
`because there was no such infringement suit on the challenged ‘094 patent pending
`
`on, or filed after, the filing of the first petition. Because the Board and Patent
`
`NY 835315v.1
`
`- 2 -
`
`
`
`Owner referred to various litigations between Patent Owner and Petitioner,
`
`Petitioner believes that the following summary of those litigations will be helpful
`
`to the present request for rehearing.
`
`Prior to the issuance of the challenged ‘094 patent, Patent Owner filed a
`
`patent
`
`infringement suit asserting the
`
`different, but
`
`related, U.S. Patent
`
`No. 7,647,012 (Ex. 1003, “the ‘012 patent”) against Petitioner. See Ex. 2005. As
`
`explained in the Second Petition, the ‘012 patent claims recite the connection
`
`between the copier and the toner container. On the other hand, the preamble of the
`
`challenged claims of the ‘094 patent recite “[a] toner supply container” only and
`
`make no mention of a copier or the container being detachably mounted to the
`
`copier’s hollow cylindrical driving member. See Second Petition (Paper 2) at
`
`pp. 10-15. Given this difference in scope between the ‘012 patent claims and the
`
`challenged ‘094 patent claims, it is readily apparent that the scope of the prior art
`
`that could invalidate the ‘012 patent claims under §102 or §103 is different from,
`
`and narrower than, that which could invalidate the challenged ‘094 patent claims.
`
`In its first IPR petition challenging the ‘094 patent, Petitioner relied solely
`
`on Matsuoka (See Ex. 3001 at p. 12), which Petitioner had previously relied upon
`
`in the ‘012 patent suit
`
`in seeking to invalidate claims 24, 25 and 30 of the
`
`‘012 patent. See Ex. 2006 at pp. 45-49; Ex. 2007 at pp. 50-51 & 74-75.
`
`In the
`
`Second Petition, Petitioner relies upon Suzuki, which was not relied upon in the
`
`NY 835315v.1
`
`- 3 -
`
`
`
`‘012 patent suit because it was first found by Petitioner on May 3, 2016 -- after
`
`expert discovery on the invalidity of the ‘012 patent claims had been completed.
`
`See Ex. 1009, Hsieh Decl. at ¶¶7-8; Ex. 2006; Ex. 2007.
`
`On July 10, 2015,
`
`the U.S.
`
`International Trade Commission (“ITC”)
`
`instituted Investigation No. 337-TA-960 which asserted claims 1, 7-9, 11, 16-18,
`
`29 and 38 of the ‘094 patent against Petitioner.
`
`See Second Petition at p. 2;
`
`Ex. 2008 at pp. 1-3.
`
`The institution of an ITC Investigation (and its attendant
`
`service of the complaint) does not invoke the one-year bar of 35 U.S.C. §315(b).
`
`See The Brinkman Corp. v. A&J Mfg., LLC, IPR2015-00056, Decision (Paper 10)
`
`at pp. 7-8 (PTAB Mar. 23, 2015). Nevertheless, less than a month later, on
`
`August 4, 2015, this Investigation was terminated, before Petitioner General Plastic
`
`filed a Response which would have required an identification of its invalidity
`
`contentions. See Ex. 2001 at pp. 1-3; Petition at p. 2; 19 C.F.R. §210.13(b)(3).
`
`More than a month later, the first petition was filed on September 25, 2015.
`
`In sum, both the first petition and the Second Petition were filed after the
`
`August 4, 2015 termination, but
`
`less than one year after the July 10, 2015
`
`institution of the ITC Investigation. See Ex. 3001 at p. 2; IPR2015-01954 Petition
`
`(Paper 2) at p. 2; Second Petition (Paper 2) at p. 2. When preparing the first
`
`petition, Petitioner selected Matsuoka from the extensive collection of prior art
`
`identified in the ‘012 patent infringement suit, and later cast a wider net than that
`
`NY 835315v.1
`
`- 4 -
`
`
`
`in the ‘012 patent infringement suit when the prior art searches commenced on
`
`April 11, 2016. See Ex. 1009, Hsieh Decl. at ¶¶3-4.
`
`III. LEGAL STANDARDS
`
`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 court misunderstands or misapplies the relevant law or makes
`
`clearly erroneous findings of fact.” Renda Marine, Inc. v. U.S., 509 F.3d 1372,
`
`1379 (Fed. Cir. 2007).
`
`IV. BASIS FOR RELIEF REQUESTED
`
`Neither 35 U.S.C. §311 nor §314 expressly limits a petitioner to just one
`
`petition per challenged patent.
`
`Indeed, §325(d)
`
`implicitly recognizes the
`
`possibility of subsequent petitions, but seeks to reduce the burden posed thereby on
`
`the Patent Owner and the Board by allowing the Board to reject the second petition
`
`“because the same or substantially the same prior art or arguments previously were
`
`presented to the Office” in the first petition. See Atlas Copco Airpower N.V. v.
`
`Kaeser Kompressoren SE, IPR2015-01421, Decision (Paper 8) at pp. 6-8 (PTAB
`
`Dec. 28, 2015); Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449, Decision
`
`(Paper 9) at pp. 6-10 (PTAB July 27, 2016). Here, neither Patent Owner nor the
`
`Board relied upon §325(d) to deny the Second Petition. Rather, the Board applied
`
`certain of the so-called Nvidia factors in an overly rigid fashion, and ignored
`
`NY 835315v.1
`
`- 5 -
`
`
`
`another factor, so as to improperly create an improper and unauthorized de facto
`
`bar against all second petitions filed after a decision on the first petition, and so as
`
`to conflict with the Board’s decisions in Atlas Copco and Microsoft instituting
`
`inter partes reviews on second filed petitions.
`
`A.
`
`The Board Misapplied 35 U.S.C. §314(a) And The Nvidia Factors
`
`The Board acted contrary to the legislative purpose of §314(a) and
`
`misapplied the Nvidia factors so as to create an improper and unauthorized de facto
`
`bar against all second petitions filed after a decision on the first petition.
`
`1.
`
`There Was No Finding That The Second Petition Needed To
`Be Denied As A “Safety Valve”
`
`The legislative history of §314, as reported by Joe Matal, a Judiciary
`
`Committee Counsel to Senator Kyl, indicates that the discretion accorded the
`
`Board under §314(a) to deny an otherwise meritorous petition was viewed as being
`
`a “safety valve” to alleviate any backlog of instituted IPRs that could otherwise
`
`prevent the Board from meeting the one-year deadline for completing instituted
`
`IPRs under 35 U.S.C. §316(a)(11). See Matal, “A Guide to the Legislative History
`
`of the America Invents Act: Part II of II”, 21 Fed. Cir. B.J. 539, 610 (2012) (citing
`
`157 Cong. Rec. §1377 (daily ed. Mar. 8, 2011)). This legislative intent behind
`
`§314(a) is reflected in Nvidia factor (2). See Nvidia v. Samsung, IPR2016-00134,
`
`Decision (Paper 9) at pp. 6-7 (PTAB May 4, 2016); Decision (Paper 12) at p. 4
`
`NY 835315v.1
`
`- 6 -
`
`
`
`(factor (b)). Because Nvidia factor (2) is the only Nvidia factor supported by the
`
`legislative history of §314(a), Nvidia factor (2) should be given more weight than
`
`the other Nvidia factors, if not dispositive weight.
`
`Here, there was no finding by the Board that the Second Petition had to be
`
`denied regardless of its substantive merits, in order to alleviate an existing backlog
`
`of instituted IPRs threatening the Board’s ability to meet the one-year deadline of
`
`§316(a)(11).
`
`Indeed, the number of filed IPR petitions has fallen to 1565 in FY
`
`2016
`
`from 1737
`
`in
`
`FY 2015.
`
`See
`
`https://www.uspto.gov/sites/
`
`default/files/documents/aia_statistics_October2016.pdf at p. 3. Petitioner submits
`
`that because the legislative purpose of alleviating an existing backlog of instituted
`
`IPRs that could otherwise prevent the Board from meeting the one-year deadline
`
`under §316(a)(11) is not implicated here, §325(d) is the controlling statutory
`
`provision, not §314(a). See, e.g., Atlas, IPR2015-01421, Decision (Paper 8) at
`
`pp. 6-8; Microsoft, IPR2016-00449, Decision (Paper 9) at pp. 6-10.
`
`2.
`
`Petitioner Submitted Evidence of Lack of Actual
`Knowledge Of Suzuki Until After The Denial Of First
`Petition
`Nvidia factor (4) states: “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”. Petitioner submitted evidence that it first located Suzuki on May 3,
`
`2016 -- after the Board’s denial of the first petition on March 9, 2016.
`
`See
`
`NY 835315v.1
`
`- 7 -
`
`
`
`Ex. 1009, Hsieh Decl. at ¶¶7-8; Reply (Paper 8) at p. 4. Nevertheless, the Board
`
`determined Nvidia factor (4) to be adverse to Petitioner General Plastic:
`
`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.
`
`Decision (Paper 12) at p. 8. The Board found this factor to be dispositive. See id.
`
`at p. 10 (“Those [Nvidia] 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.”).
`
`By giving dispositive weight to its overly broad interpretation of Nvidia
`
`factor (4), the Board has stripped all discretion from §314(a) and has effectively
`
`established a de facto bar against second petitions. Under 35 U.S.C. §311(b), an
`
`NY 835315v.1
`
`- 8 -
`
`
`
`IPR petition can be based only on “prior art consisting of patents or printed
`
`publications.” In turn, as a matter of law, in order to qualify as such prior art, a
`
`reference must be locatable by a reasonably diligent search. See In re Lister,
`
`583 F.3d 1307, 1311-12 (Fed. Cir. 2009). Thus, any prior art reference that is
`
`properly citable in a second petition under §311(b) necessarily could have been
`
`found by a search performed prior to filing the first petition. Thus, by giving
`
`dispositive weight to its overly broad interpretation of Nvidia factor (4), as it did
`
`here, the Board effectively prevents institution on any second petition filed after a
`
`decision on the first petition.
`
`Petitioner submits that the last clause in Nvidia factor (4) -- “or should have
`
`known of it” -- cannot be satisfied merely by the public accessibility of the prior art
`
`cited in the second petition because, under such a broad construction, Nvidia factor
`
`(4) would be self-defining to be adverse to Petitioners in every instance, and not a
`
`factor for analysis by the Board.
`
`In Nvidia,
`
`the patent owner rebutted the
`
`petitioner’s unsupported claim of lack of prior actual knowledge of a prior art
`
`patent. The patent owner presented evidence conclusively establishing that the
`
`petitioner had actual knowledge, or constructive knowledge through its law firm,
`
`of that prior art patent prior to the filing of the first petition, based upon the
`
`petitioner’s production of that reference in a copending ITC investigation. See
`
`Nvidia, IPR2016-00134, Decision (Paper 9) at pp. 9-11. Clearly, neither the Board
`
`NY 835315v.1
`
`- 9 -
`
`
`
`nor the patent owner would have spent so much effort trying to resolve the
`
`petitioner’s actual knowledge of
`
`the reference if
`
`the undisputable public
`
`accessibility of that reference as an issued U.S. patent would have been sufficient
`
`to satisfy Nvidia factor (4).
`
`Also, contrary to the Board’s ruling here, in Microsoft, the Board instituted
`
`an IPR on a second petition even though the newly cited references were publicly
`
`accessible, and hence locatable by a prior art search conducted prior to the filing of
`
`the first petition. See Microsoft, IPR2016-00449 (Paper 9) at pp. 6-7. Likewise, in
`
`Atlas, the Board instituted an IPR on a second petition even though the newly cited
`
`“Handbook” was publicly accessible prior to the filing of the first petition. Atlas,
`
`IPR2015-01421, Decision (Paper 8) at pp. 6-7.
`
`In the Conopco and Toyota decisions cited by the Board, the Petitioners
`
`presented no evidence or argument on Nvidia factor (4).
`
`See Conopco v.
`
`Procter & Gamble, IPR2014-00506, Decision (Paper 17) at p. 6 (PTAB July 7,
`
`2014); Toyota Motor v. Cellport Sys., IPR2015-01423, Decision (Paper 7) at p. 8
`
`(PTAB Oct. 28, 2015). Thus, these cases provide no support for the Board to
`
`completely discount the unrebutted evidence of record here that Petitioner General
`
`Plastic lacked actual knowledge of Suzuki until May 3, 2016.
`
`3.
`
`The Denial Of The First Petition Should Not Be Fatal
`
`The Board pejoratively characterized the subject Second Petition “as an
`
`NY 835315v.1
`
`- 10 -
`
`
`
`attempt to cure a substantive and material defect in the petition filed in IPR2015-
`
`01954.” See Decision at p. 9. But this statement would equally apply to any
`
`second petition filed after the Board’s denial of the first petition. Nevertheless, the
`
`Board has
`
`instituted IPRs on second petitions under
`
`these very same
`
`circumstances. In both Atlas and Microsoft, the second petition was filed after the
`
`Patent Owner’s Preliminary Response and the Board’s denial of the first petition.
`
`See Atlas,
`
`IPR2015-01421, Decision
`
`(Paper 8)
`
`at
`
`pp. 6-8; Microsoft,
`
`IPR2016-00449, Decision (Paper 9) at pp. 6-10.
`
`The Board’s denial of the first petition and the request for rehearing was
`
`surprising to Petitioner because the Board’s distinction over Matsuoka was
`
`predicated on the “toner supply container” preamble of the challenged claims being
`
`limiting. See Ex. 3001 at pp. 19-20 & 24. Because the body of the challenged
`
`claims do not recite a “toner supply container” limitation, the claims can only
`
`require the sealing member to be a component of the toner supply container if the
`
`preamble is limiting. Cf. Decision at p. 9. However, the preamble of each
`
`challenged claim is not limiting because the claim body itself recites all the
`
`structural elements, and the preamble was not relied upon during prosecution to
`
`distinguish over prior art. See Catalina Marketing Int’l, Inc. v. Coolsavings.com,
`
`Inc., 289 F.3d 801, 808-09 (Fed. Cir. 2002).
`
`If the preamble is not limiting, the
`
`challenged claims would read on any apparatus that encompasses all the limitations
`
`NY 835315v.1
`
`- 11 -
`
`
`
`recited in the claim body, even a copier that includes a toner cartridge. See
`
`IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000).
`
`The prior art search that uncovered Suzuki commenced on April 11, 2016 -- prior
`
`to the denial of Petitioner’s request for rehearing on May 19, 2016. See Ex. 1009,
`
`Hsieh Decl. at ¶¶4 & 7.
`
`Also, the fact that the Second Petition challenges a subset of the ‘094 patent
`
`claims challenged in the first petition, is to be expected because those are the
`
`claims Patent Owner Canon asserted in the ITC Investigation. See Ex. 2008 at p. 2
`
`(asserting claims 1, 7-9, 11, 16-18, 29 and 38 of the ‘094 patent).
`
`4.
`
`There Is Minimal Additional Burden On The Patent Office
`
`The first petition proposed two grounds based on one reference against 10
`
`claims out of the ‘094 patent’s 53 claims. See Ex. 3001. The Second Petition
`
`proposes just one ground based on two references against only five claims of the
`
`‘094 patent. See Decision at p. 6. The additional burden imposed on the Patent
`
`Office by the Second Petition is less than that posed by the second petition in Atlas
`
`which proposed four grounds based on four references against 20 patent claims.
`
`See Atlas, IPR2015-01421, Decision (Paper 8) at p. 6. Moreover, Petitioner
`
`General Plastic has already paid the fees set by the Patent Office for the resources
`
`to be expended by the Board on the subject Second Petition. See America Invents
`
`Act, Sec. 10(a)(2); 37 C.F.R. §42.15(a)(1)-(2).
`
`NY 835315v.1
`
`- 12 -
`
`
`
`5.
`
`Prejudice To Patent Owner Is Not A Nvidia Factor
`
`Here, the Board has taken into account a perceived unfair prejudice to Patent
`
`Owner Canon. See Decision (Paper 12) at pp. 7 & 8-9. However, while Nvidia
`
`factor (1) addresses the resources of the Board, there is no Nvidia factor addressing
`
`the resources of the patent owner. Cf. Decision (Paper 12) at pp. 4-5. Indeed, the
`
`decisions that the Board cites to when discussing the risk of harassment of patent
`
`owners (See Decision at pp. 8-9) were both decided under §325(d), not §314(a).
`
`See Butamax v. Gevo, IPR2014-00581, Decision (Paper 8) at pp. 12-13 (PTAB
`
`Oct. 14, 2014); Samsung v. Rembrandt Wireless,
`
`IPR2015-00118, Decision
`
`(Paper 14) at p. 6 (PTAB Jan. 28, 2015). Here, Patent Owner cannot avail itself of
`
`the protections against serially filed petitions provided by §325(d) because Patent
`
`Owner Canon has not, and cannot, show that the Second Petition presents “the
`
`same or substantially the same prior art or arguments” as the first petition.
`
`Moreover, any prejudice to Patent Owner by the first petition was minimal
`
`because Patent Owner was already well acquainted with the Matsuoka reference
`
`from the ‘012 patent infringement suit. See Ex. 2006 at pp. 45-49 (¶78); Ex. 2007
`
`at pp. 50-51 (¶¶128-129) & pp. 74-75 (¶¶191-193, referring to Canon’s technical
`
`expert, Dr. Sturges). The additional burden posed by the Second Petition is
`
`minimal given the one new ground and two references.
`
`B.
`
`The Board’s Application Of The Nvidia Factors Improperly
`Conflicts With 35 U.S.C. §325(d)
`
`NY 835315v.1
`
`- 13 -
`
`
`
`The Board has previously applied §325(d) to determine whether to institute
`
`an IPR on a second petition filed after the denial of the first petition. See Atlas,
`
`IPR2015-01421, Decision (Paper 8) at pp. 6-8; Microsoft,
`
`IPR2016-00449,
`
`Decision (Paper 9) at pp. 6-10. The relevant circumstances presented here are
`
`identical to those in Atlas and Microsoft.
`
`In order to avoid the application of
`
`§325(d) and the Atlas and Microsoft decisions, the Board here gave dispositive
`
`weight to Nvidia factor (4) alone:
`
`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.
`
`Decision (Paper 12) at p. 10 (emphasis added). In so doing, the Board abused its
`
`discretion by giving dispositive weight to its unjustifiably broad construction of
`
`Nvidia factor (4) that
`
`improperly renders the express provisions of §325(d)
`
`superfluous or meaningless. See Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d
`
`858, 864 (Fed. Cir. 1984). Furthermore, as a specific statute dealing with multiple
`
`proceedings, §325(d) controls over the more general §314(a). See HCSC-Laundry
`
`v. U.S., 450 U.S. 1, 6 (1981).
`
`V.
`
`REQUEST FOR EXPANDED PANEL ON REHEARING
`
`NY 835315v.1
`
`- 14 -
`
`
`
`In light of the importance of the issues raised in this Request to the present
`
`proceeding, other IPR proceedings, and the IPR process generally, Petitioner
`
`respectfully requests that the Chief Judge or a Vice Chief Judge designate an
`
`expanded panel of the Board to rehear and assess the issues raised herein. The
`
`Board’s Standard Operating Procedure states that “[c]onsideration by an expanded
`
`panel is necessary to secure and maintain uniformity of the Board’s decisions, such
`
`as where different panels of the Board render conflicting decisions on issues of
`
`statutory interpretation or rule interpretation, or a substantial difference of opinion
`
`among judges exists on issues of statutory interpretation or rule interpretation.”
`
`PTAB Std. Oprt’g Proc. 1 §III(A)(2) (Rev. 14, May 8, 2015). The inconsistencies
`
`between the panel here in Decision (Paper 12) and the panels in Atlas and
`
`Microsoft in the interpretation and applicability of §314(a) and/or §325(d) under
`
`the same relevant factual circumstances are a sufficient reason for expanding the
`
`panel. See Target v. Destination Maternity, IPR2014-00508, Decision (Paper 28)
`
`at p. 6 (PTAB Feb. 12, 2015).
`
`VI. CONCLUSION
`For the foregoing reasons, this Request for Rehearing should be granted and
`
`an inter partes review should be instituted.
`
`Dated: December 14, 2016
`
`Respectfully submitted,
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`
`NY 835315v.1
`
`- 15 -
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §§42.6(e)(4) and 42.105(a), the undersigned hereby
`certifies
`that on December 14, 2016 a complete copy of
`the foregoing
`PETITIONER’S REQUEST FOR REHEARING PURSUANT TO 37 C.F.R.
`§42.71(d), AND FOR AN EXPANDED PANEL was served in its entirety via
`electronic mail, as follows:
`
`Canon094IPR@fchs.com
`
`and
`
`Justin J. Oliver, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`joliver@fchs.com
`
`and
`
`Edmund J. Haughey, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`ehaughey@fchs.com
`
`and
`
`Michael Sandonato, Esq.
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`(212) 218-2000
`msandonato@fchs.com
`
`NY 835315v.1
`
`
`
`Dated: December 14, 2016
`
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`LOCKE LORD LLP
`Brookfield Place
`200 Vesey Street, 20th Floor
`New York, New York 10281-2101
`Attorneys for Petitioner
`General Plastic Industrial Co., Ltd.
`
`NY 835315v.1