Trials@uspto.gov
`571-272-7822
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`Paper No. 12
`Filed: November 14, 2016
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`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 IPR2016-01360
`Patent 8,909,094 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a); 37 C.F.R. § 42.108
`
`
`
`
`
`

`
`IPR2016-01360
`Patent 8,909,094 B2
`
`
`A.
`
`Background
`
`I. INTRODUCTION
`
`On July 8, 2016, a Petition (Paper 2, “Pet.”) was filed to institute inter
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`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
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`(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
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`Reply (“Reply”). Paper 8. Patent Owner filed a Sur-Reply (“Sur-Reply”).
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`Paper 10.
`
`We exercise discretion to not institute inter partes review of claims 1,
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`7–9, and 29 of the ’094 patent.
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`B.
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`Related Matters
`
`The parties indicate that the ’094 patent was involved in an
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`investigation before the International Trade Commission: In the Matter of
`
`Certain Toner Supply Containers And Components Thereof, Inv. No. 337-
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`TA-960 (U.S. Int’l Trade Comm’n) (July 10, 2015). Pet. 2; Paper 4, 2
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`The ’094 patent was the subject patent in IPR2015-01954, in which
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`the Board declined, on March 9, 2016, to institute inter partes review of any
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`claim of the ’094 patent. Concurrent with the filing of the instant Petition on
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`July 8, 2016, Petitioner filed two other petitions for inter partes review of
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`the ’904 patent. Those petitions are now pending in IPR2016-01359 and
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`IPR2016-01361. Petitioner identifies the petition in IPR2015-01359 as
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`“Second Petition,” the instant Petition in this proceeding as “Third Petition,”
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`and the petition in IPR2016-01361 as “Fourth Petition,” all relative to the
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`petition filed in IPR2015-01954, which we will refer to as “First Petition.”
`
`
`
`
`
`2
`
`

`
`IPR2016-01360
`Patent 8,909,094 B2
`
`
`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
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`
`
`
`
`Reference
`
`Date
`
`Exhibit
`
`Kato
`
`U.S. Patent No. 6,118,951
`
`Sept. 12, 2000
`filed Jan. 12, 1998
`
`Ex. 1008
`
`
`Matsuoka
`
`U.S. Patent No. 5,903,806
`
`May 11, 1999
`
`Ex. 1009
`
`Yoshiki
`
`U.S. Patent No. 5,765,079
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`June 9, 1998
`
`Ex. 1006
`
`Ikesue
`
`U.S. Patent No. 5,598,254
`
`Jan. 28, 1997
`
`Ex. 1010
`
`Koide
`
`Japanese Patent Application
`Pub. No. 10–171230
`
`June 26, 1998
`
`Ex. 1007
`
`
`Petitioner also relies on a Declaration of Brian Springett, Ph.D. (Ex.
`
`1011). Petitioner additionally relies on a Declaration of Hui-Wen Hsieh (Ex.
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`1012), submitted with Petitioner’s Reply.
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`E.
`
`The Asserted Grounds of Unpatentability
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`References
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`Basis
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`Claim Challenged
`
`Yoshiki, Koide, Kato, Matsuoka, and
`Ikesue
`
`§ 103(a)
`
`1 and 7–9
`
`Yoshiki, Koide, and Ikesue
`
`§ 103(a)
`
`29
`
`
`
`II. ANALYSIS
`
`1.
`
`Overview
`
`
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`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
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`3
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`

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`IPR2016-01360
`Patent 8,909,094 B2
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`deciding whether to exercise discretion not to institute review, including:
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`(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;
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`(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
`
`(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, slip op. at 6–7 (PTAB Aug. 22, 2016) (Paper 12); NVIDIA Corp. v.
`
`
`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-
`00634, prior to filing the Petition here, is unjust.”).
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`4
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`

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`IPR2016-01360
`Patent 8,909,094 B2
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`Samsung Elecs. Co., Case IPR2016-00134, slip. op. at 6–7 (PTAB May 4,
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`2016) (Paper 9) (“Nvidia”).
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`
`
`2.
`
`The First Petition—Filed in IPR2015-01954
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`
`
`The instant Petition is not the first petition filed by Petitioner
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`challenging claims 1, 7–9, and 29 of the ’094 patent. The first petition was
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`filed on September 25, 2015, in IPR2015-01954, alleging two grounds of
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`unpatentability for claims 1, 7–9, and 29:
`
`
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`(a) that claims 1, 8, and 9 are anticipated by Matsuoka,
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`under 35 U.S.C. § 102(b); and
`
`
`
`(b) that claims 1, 7–9, and 29 are unpatentable as obvious
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`over Matsuoka, under 35 U.S.C. § 103.
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`3.
`
`The Decision Denying Institution in IPR2015-01954
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`
`
`The First Petition (in IPR2015-01954) was denied on March 9, 2016.
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`Ex. 3001.3 More than 9 months passed between Petitioner’s filing of the
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`First Petition, on September 25, 2015, and Petitioner’s filing of the Third
`
`Petition, in this proceeding, on July 8, 2016. During that time, Patent Owner
`
`filed a preliminary response in IPR2015-01954, addressing, inter alia, why
`
`Petitioner’s challenge in the First Petition against claims 1, 7–9, and 29 was
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`deficient. Also during that time, the Board rendered a decision in IPR2015-
`
`01954, declining to institute inter partes review for any challenged claim of
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`the ‘094 patent and explaining why Petitioner’s challenge against claims 1,
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`7–9, and 29 was deficient.
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`
`
`Specifically, the Board rejected Petitioner’s treating rotary power
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`transmitting member 44 of Matsuoka’s copier’s developing agent
`
`
`3 General Plastic Industrial Co., LTD v. Canon Inc., Case IPR2015-01954
`(PTAB March 9, 2016) (Paper 9).
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`5
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`IPR2016-01360
`Patent 8,909,094 B2
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`replenishing apparatus 40 as a component of Matsuoka’s toner cartridge 30.
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`General Plastic Industrial Co., LTD v. Canon Inc., Case IPR2015-01954,
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`slip op. 19, 20, 24 (PTAB March 9, 2016) (Paper 9). On April 8, 2016,
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`Petitioner requested rehearing. That request was denied on May 19, 2016.
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`4.
`
`The Instant Petition (“Third Petition”)
`
`
`
`This Third Petition is a response to the Board’s decision denying
`
`institution of inter partes review in IPR2015-01954. For claims 1 and 7–9,
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`although Petitioner still relies on Matsuoka, Petitioner no longer treats rotary
`
`power transmitting member 44 of Matsuoka’s copier’s developing agent
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`replenishing apparatus 40 as a component of Matsuoka’s toner cartridge 30.
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`For claim 29, Petitioner no longer relies on Matsuoka in any way. In this
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`Third Petition, Petitioner characterizes Yoshiki as the “principal reference”
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`providing various elements required by the challenged claims. Pet. 21, 52.
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`With respect to claims 1 and 7–9, Petitioner additionally relies on Koide,
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`Kato, Matsuoka, and Ikesue. With respect to claim 29, Petitioner relies on
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`Yoshiki, Koide, and Ikesue.
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`5.
`
`Discussion
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`
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`We are concerned about the limited resources of the Board and
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`fundamental fairness for both Petitioner and Patent Owner. Petitioner
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`cannot expect automatic acceptance of multiple petitions for consideration,
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`if they are against the same claims of the same patent and filed so long apart
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`that Petitioner received the opportunity to have studied Patent Owner’s
`
`Preliminary Response and the Board’s decision declining to institute review
`
`in IPR2015-01954, prior to filing this Third Petition. That is especially so if
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`Petitioner, when filing the First Petition in IPR2015-01954, was aware of or
`
`should have been aware of the prior art applied in this Third Petition.
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`6
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`IPR2016-01360
`Patent 8,909,094 B2
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`
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`The potential for inequity resulting from a petitioner’s filing of serial
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`attacks against the same claims of the same patent, while having the
`
`opportunity to adjust litigation positions along the way based on either the
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`patent owner’s contentions responding to prior challenges or the Board’s
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`decision on prior challenges, is real and cannot be ignored. This is not to
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`say, however, that multiple petitions against the same claims of the same
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`patent are never permitted. Rather, each case depends on its own facts. We
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`look to and consider, in each case, what rationale a petitioner offers for filing
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`multiple petitions and for the time elapsed between those filings.
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`
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`Patent Owner asserts that Petitioner was aware of Yoshiki and Ikesue
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`at least as early as May 8, 2012, when Petitioner identified both as prior art
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`in a district court action involving another patent, more than 40 months prior
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`to the filing of the First Petition in IPR2015-01954 on September 25, 2015.
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`Prelim. Resp. 7–8. That assertion is not disputed by Petitioner. Matsuoka,
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`Yoshiki, Ikesue, and Kato were all cited as prior art on the face of the ’094
`
`patent. Petitioner even applied Matsuoka as prior art in the First Petition in
`
`IPR2015-01954. Petitioner explains that Koide was uncovered when,
`
`subsequent to the Board’s denying institution of inter partes review in
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`IPR2015-01954, Petitioner initiated two new prior art searches. Reply 4–5.
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`
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`Although Petitioner represents that it was not aware of Koide at the
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`time of filing of the petition in IPR2015-01954, Petitioner should have been
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`aware of Koide because Koide was readily discoverable by way of a patent
`
`search. Moreover, Petitioner does not represent that, but for the discovery of
`
`Koide, it was not aware of any prior art disclosing that material for which it
`
`relies on Koide. In contrast, the Petition indicates that Koide, even though
`
`cited in the instant Petition, is not unique or essential. Specifically,
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`7
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`IPR2016-01360
`Patent 8,909,094 B2
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`Petitioner explains that Koide constitutes “confirmatory evidence” that “a
`
`person of ordinary skill would understand that a rotational drive force from a
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`copier could be imparted to and received by Yoshiki’s tab 6.” Pet. 28.
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`Petitioner also expressly states that it “is not relying upon Koide to modify
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`Yoshiki’s tab 6.” Id. Thus, Petitioner could have demonstrated what was
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`well known to one with ordinary skill in the art by something else, e.g.,
`
`testimony of its expert.
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`
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`At the time of filing of the petition in IPR2015-01954, Petitioner
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`either had all the information it needed, or had opportunity to access such
`
`information, to assert each of the unpatentability grounds presented in the
`
`instant Petition. The fact that Koide was uncovered only in a patent search
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`that was initiated after the Board declined to institute inter partes review in
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`IPR2015-01954 is of little help to Petitioner, who could have performed the
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`patent search prior to filing the First Petition in IPR2015-01954. The record
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`shows that Petitioner waited to see if a first attack was unsuccessful prior to
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`committing further efforts to conduct additional patent searches. The record
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`also shows that Petitioner chose, at the time of filing of the First Petition in
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`IPR2015-01954 and as a part of its litigation strategy, to go forward with the
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`positions taken in that First Petition, and not the grounds relied on in the
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`instant Third Petition.
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`
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`These facts suggest this is a case of undesirable incremental-
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`petitioning, where a petitioner relies on a Board decision in a prior
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`proceeding involving the same parties, the same patent, and the same claims,
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`to mount a second attack after an unsuccessful first attack, by attempting to
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`cure deficiencies argued by the Patent Owner and assessed by the Board.
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`8
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`IPR2016-01360
`Patent 8,909,094 B2
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`
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`Allowing serial challenges to the same patent, by the same petitioner,
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`risks harassment of patent owners and frustration of Congress’s intent in
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`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
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`this amendment is intended to remove current disincentives to current
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`administrative processes, the changes made by it are not to be used as tools
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`for harassment or a means to prevent market entry through repeated
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`litigation and administrative attacks on the validity of a patent. Doing so
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`would frustrate the purpose of the section as providing quick and cost
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`effective alternatives to litigation.”)). Also, “it is more efficient for the
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`parties and the Board to address a matter once rather than twice.” Samsung
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`Elec. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-00114, slip op.
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`at 6 (PTAB Jan. 28, 2015) (Paper 14). The Board’s resources would be
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`more fairly expended on first petitions rather than on a follow-on petition
`
`like the Petition in this case.
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`
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`This Third Petition is not the consequence of a position surprisingly
`
`advanced by Patent Owner or adopted by the Board. The claims clearly
`
`require the sealing member to be a component of the toner supply container,
`
`e.g., a toner cartridge. Petitioner seeks to remedy though this Petition its
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`own error of treating a component of Matsuoka’s copier as a part of
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`Matsuoka’s toner cartridge. This Third Petition has been filed as an attempt
`
`to cure a substantive and material defect in the First Petition filed in
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`IPR2015-01954. That imposes an unnecessary burden on the Patent Owner
`
`and the Board.
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`
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`9
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`IPR2016-01360
`Patent 8,909,094 B2
`
`
`6.
`
`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).
`
`
`
`It is
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`III. ORDER
`
`ORDERED that the Petition is denied and no trial or inter partes
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`review is instituted for any of claims 1, 7–9, and 29 of the ’094 patent on
`
`any ground.
`
`
`
`For PETITIONER:
`
`Steven F. Meyer
`Tim Tingkang Xia
`LOCKE LORD LLP
`smeyer@lockelord.com
`txia@lockelord.com
`
`
`
`For PATENT OWNER:
`
`Edmund J. Haughey
`Michael P. Sandonato
`Justin J. Oliver
`FITZPATRICK, CELLA, HARPER & SCINTO
`canon094ipr@fchs.com
`
`
`10