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
`
`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. IPR2016-01360
`
`NY 835865v.1
`
`
`___________________________
`
`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. IPR2016-01360
`
`NY 835865v.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 Third
`Petition Needed To Be Denied As A “Safety
`Valve”...............................................................................6
`Petitioner Submitted Evidence of Lack of
`Actual Knowledge Of Koide 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 .................................................15
`V.
`VI. Conclusion .....................................................................................................15
`
`NY 835865v.1
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`- i -
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`
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`TABLE OF AUTHORITIES
`
`Cases
`Atlas Copco Airpower N.V. v. Kaeser Kompressoren SE,
`IPR2015-01421............................................................................................. passim
`
`Atlas v. Kaeser Kompressoren, IPR2014-00076 .....................................................10
`
`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.......................................................9
`
`HCSC-Laundry v. U.S., 450 U.S. 1 (1981)..............................................................14
`
`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) .............................................................8
`
`Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449.............................. passim
`
`Nvidia v. Samsung, IPR2016-00134................................................................. 6, 8, 9
`
`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 ........................................................9
`
`NY 835865v.1
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`- ii -
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`
`
`Statutes
`35 U.S.C. §311.......................................................................................................2, 5
`
`35 U.S.C. §314(a) ............................................................................................ passim
`
`35 U.S.C. §315(b) ......................................................................................................4
`
`35 U.S.C. §316(a)(11)................................................................................................6
`
`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) ...................................................................................................1
`
`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 835865v.1
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`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 Third
`
`Petition (IPR2016-01360,
`
`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 sole ground
`
`of unpatentability presented in the Third Petition. Petitioner filed a first petition
`
`(IPR2015-01954, filed Sept. 25, 2015) asserting two grounds based on Matsuoka
`
`and the Third Petition asserting one ground based on a combination of five
`
`references including as secondary references Koide (which was not actually known
`
`to Petitioner until after the denial of the first petition) and Matsuoka and a second
`
`ground that excludes Matsuoka from the combination. Neither the Board nor
`
`Patent Owner Canon contends that the Third 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 Third
`
`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 the 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
`
`NY 835865v.1
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`the statutory period, and the discretion implicit in §314(a) should not amount to a
`
`de facto bar against all second petitions filed after the denial of the first petition so
`
`as to render §325(d) superfluous.
`
`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 Third Petition evidences that the challenged claims are unpatentable
`
`under two newly presented grounds based in part on the newly discovered Koide.
`
`The Board has overlooked this overarching purpose by not even addressing the
`
`substantive merits of these two new grounds. 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 Third Petition and, consequently, institute
`
`an inter partes review.
`
`II.
`
`BACKGROUND
`
`Neither the first petition nor the Third Petition can be properly viewed as
`
`NY 835865v.1
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`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
`
`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. 2109. As
`
`explained in the Third 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 Third Petition (Paper 2) at
`
`pp. 10-14. 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
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`NY 835865v.1
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`in the ‘012 patent suit
`
`in seeking to invalidate claims 24, 25 and 30 of the
`
`‘012 patent. See Ex. 2106 at pp. 31-33; Ex. 2107.
`
`In the subject Third Petition,
`
`Petitioner relies upon Koide (Ex. 1007), which was not relied upon in the
`
`‘012 patent suit because it was first found by Petitioner on May 4, 2016 -- after
`
`expert discovery on the invalidity of the ‘012 patent claims had been completed.
`
`See Ex. 1012, Hsieh Decl. at ¶¶5 & 8; Ex. 2106.
`
`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 Third Petition at p. 2; Ex. 2111
`
`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. 2101 at pp. 1-3; Petition at p. 2; 19 C.F.R. §210.13(b)(3). The first petition
`
`was filed more than a month later, on September 25, 2015.
`
`In sum, both the first petition and the Third 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
`
`NY 835865v.1
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`(Paper 2) at p. 2; Third 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 in the
`
`‘012 patent infringement suit when the prior art searches commenced on April 11,
`
`2016. See Ex. 1012, 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 a subsequent
`
`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,
`
`NY 835865v.1
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`IPR2016-00449, Decision (Paper 9) at pp. 6-10 (PTAB July 27, 2016). Here, the
`
`Board applied the so-called Nvidia factors and ignored the express provisions of
`
`§325(d), so as to improperly create an improper and unauthorized de facto bar
`
`against all subsequent petitions filed after a decision on the first petition, that
`
`conflicts with the Board’s decisions in Atlas 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 Third 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,
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`NY 835865v.1
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`Decision (Paper 9) at pp. 6-7 (PTAB May 4, 2016); Decision (Paper 12) at p. 4
`
`(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 subject Third 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).
`
`2.
`
`Petitioner Submitted Evidence of Lack of Actual
`Knowledge Of Koide 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 Koide on May 4,
`
`2016 -- after the Board’s denial of the first petition on March 9, 2016.
`
`See
`
`Ex. 1012, Hsieh Decl. at ¶¶5 & 8; Reply (Paper 8) at pp. 4-5. Nevertheless, the
`
`Board determined Nvidia factor (4) to be adverse to Petitioner General Plastic:
`
`At
`
`the time of
`
`filing of
`
`the 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 in the instant Petition. The
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`fact that Koide 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 patent search prior to filing the First Petition in
`
`IPR2015-01954.
`
`Decision (Paper 12) at p. 8 (emphasis added). The Board abused its discretion by
`
`applying an overly broad construction of Nvidia factor (4).
`
`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. Under 35 U.S.C. §311(b), an 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.
`
`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
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`NY 835865v.1
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`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 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
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`completely discount the unrebutted evidence of record here that Petitioner General
`
`Plastic lacked actual knowledge of Koide until May 4, 2016.
`
`3.
`
`The Denial Of The First Petition Should Not Be Fatal
`
`The Board pejoratively characterized the subject Third Petition “as an
`
`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.
`
`See Atlas,
`
`IPR2015-01421, Decision (Paper 8) at pp. 6-8;
`
`Microsoft, IPR2016-00449, Decision (Paper 9) at pp. 6-10.
`
`Furthermore,
`
`the
`
`Board instituted an IPR on the second petitions in Atlas and Microsoft even though
`
`the Board panels there could have just as easily postulated that the new grounds
`
`presented in the second petition could/should have been presented in the first
`
`petition, as the Board panel did here. Cf. Decision (Paper 12) at p. 8.
`
`In Atlas, the first petition asserted five grounds under §103 based on Jonsson
`
`as the principal reference and various combinations of White, Dunn and Vertriest
`
`as secondary references. The first petition was denied in toto. See Atlas v. Kaeser
`
`Kompressoren,
`
`IPR2014-00076, Decision (Paper 13) at pp. 6 & 19 (PTAB
`
`Nov. 17, 2014). Petitioner Atlas’ second petition, which was subsequently filed on
`
`June 16, 2015, asserted four grounds under §103 based on Dunn as the principal
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`reference
`
`this
`
`time
`
`and various
`
`combinations of White, Vertriest
`
`and
`
`The Handbook, which was the sole new reference, as secondary references. The
`
`Board instituted an IPR on three of four §103 grounds raised in the second petition.
`
`See Atlas, IPR2015-01421, Decision (Paper 8) at pp. 6-8 & 32. The same facts are
`
`presented here -- the sole newly relied upon reference, Koide, is used as a
`
`secondary reference.
`
`Here, Petitioner relied upon Koide to confirm that a person of ordinary skill
`
`would understand that a rotational drive force could be imparted to and received by
`
`Yoshiki’s tab 6. See Third Petition at p. 28. During the ‘012 patent litigation,
`
`Patent Owner Canon criticized Petitioner for using expert testimony to fill in claim
`
`limitations missing from Matsuoka. See Ex. 2106 at p. 33. The Board should not
`
`penalize Petitioner for anticipating an argument that Patent Owner would have
`
`been sure to make if Petitioner had used expert testimony instead of Koide. Cf.
`
`Decision at p. 8.
`
`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
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`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
`
`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 Koide commenced on April 11, 2016 --
`
`prior to the denial of Petitioner’s request for rehearing on May 19, 2016. See
`
`Ex. 1012, Hsieh Decl. at ¶¶4-5.
`
`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 Third Petition
`
`proposes two grounds based on five references against just five claims of the
`
`‘094 patent. See Decision at p. 3. The additional burden imposed on the Patent
`
`Office by the Third Petition is on par with, or 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
`
`NY 835865v.1
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`resources to be expended by the Board on the subject Third Petition. See America
`
`Invents Act, Sec. 10(a)(2); 37 C.F.R. §42.15(a)(1)-(2).
`
`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. 6 & 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 at pp. 3-5. Indeed, the decisions
`
`that the Board cites to when discussing the risk of harassment of patent owners
`
`(See Decision at p. 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). But, Patent Owner Canon 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 Third Petition presents “the same
`
`or substantially the same prior art or arguments” as the first petition.
`
`Moreover, any prejudice to Patent Owner Canon by the first petition was
`
`minimal because Patent Owner Canon was already well acquainted with Matsuoka
`
`from the ‘012 patent infringement suit. See Ex. 2106 at pp. 31-33 (referring to
`
`Canon’s technical expert, Dr. Sturges).
`
`B.
`
`The Board’s Application Of The Nvidia Factors Improperly
`Conflicts With 35 U.S.C. §325(d)
`
`NY 835865v.1
`
`- 13 -
`
`
`
`The Patent Owner is protected against serial IPR petitions by §315(e)(1)
`
`when an IPR is instituted on the first petition and by §325(d) when, as here, the
`
`first petition is denied.
`
`Indeed, the Board has previously applied just §325(d) to
`
`determine whether to institute an IPR on a second petition filed after the denial of
`
`the first petition, making no reference to §314(a) and/or the Nvidia factors. See
`
`Microsoft, IPR2016-00449, Decision (Paper 9) at pp. 6-10; Atlas, IPR2015-01421,
`
`Decision (Paper 8) at pp. 6-8. The relevant circumstances presented in Atlas and
`
`Microsoft are identical to those presented here, but with the opposite result --
`
`institution of an IPR on the second petition filed after the denial of a first petition.
`
`In order to avoid the application of §325(d) and the Atlas and Microsoft decisions,
`
`the Board here relied upon §314(a) and the Nvidia factors alone. See Decision
`
`(Paper 12) at pp. 3-10.
`
`In so doing, the Board abused its discretion by rendering
`
`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). Since §325(d) is controlling, the Third Petition cannot be denied merely
`
`because it was filed after the denial of the first petition since the Third Petition
`
`does not present “the same or substantially the same prior art or arguments”
`
`presented in the first petition. Consequently, the Board should be made to assess
`
`NY 835865v.1
`
`- 14 -
`
`
`
`the substantive merits of the new grounds presented in the Third Petition.
`
`V.
`
`REQUEST FOR EXPANDED PANEL ON REHEARING
`
`In light of the importance of the issues raised in this Request to the present
`
`proceeding, 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.
`Respectfully submitted,
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`
`Dated: December 14, 2016
`
`NY 835865v.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 835865v.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 835865v.1
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