`___________________________
`
`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. IPR2016-01361
`
`NY 835866v.1
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`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 Fourth
`Petition Needed To Be Denied As A “Safety
`Valve”...............................................................................6
`Petitioner Submitted Evidence of Lack of
`Actual Knowledge Of Yasuda Until After
`The Denial Of First Petition .............................................7
`The Denial Of The First Petition Should Not
`Be Fatal...........................................................................11
`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)....................................14
`
`3.
`
`4.
`
`5.
`
`B.
`
`Request For Expanded Panel On Rehearing .................................................15
`V.
`VI. Conclusion .....................................................................................................15
`
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`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)..............................................................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, 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 ......................................................10
`
`Statutes
`35 U.S.C. §311.......................................................................................................2, 5
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`35 U.S.C. §311(b) ..................................................................................................8, 9
`
`35 U.S.C. §314(a) ............................................................................................ passim
`
`35 U.S.C. §315(b) ......................................................................................................6
`
`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
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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 Fourth
`
`Petition (IPR2016-01361,
`
`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 Fourth Petition. Petitioner filed a first petition
`
`(IPR2015-01954, filed Sept. 25, 2015) asserting two grounds based on Matsuoka
`
`and the Fourth Petition asserting one ground based on Yasuda, which was not
`
`actually known to Petitioner until after the denial of the first petition. Neither the
`
`Board nor Patent Owner Canon contends that the Fourth 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 Fourth Petition would effectively
`
`bar the filing of a subsequent 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 a second petition.
`
`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 subsequent petitions filed after the denial of the first petition.
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`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 Fourth Petition evidences that the challenged claims are unpatentable
`
`under a newly presented ground based solely on the newly discovered Yasuda.
`
`The Board has overlooked this overarching purpose by not even addressing the
`
`substantive merits of this one 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 Fourth Petition and, consequently,
`
`institute an inter partes review.
`
`II.
`
`BACKGROUND
`
`Neither the first petition nor the Fourth 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
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`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. 2204. As
`
`explained in the Fourth 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 Fourth 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. 2205 at pp. 45-49; Ex. 2206 at pp. 50-51 & 74-75.
`
`In the
`
`Fourth Petition, Petitioner relies upon Yasuda (Ex. 1006), which was not relied
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`upon in the ‘012 patent suit because it was first found by Petitioner on May 9, 2016
`
`-- after expert discovery on the invalidity of the ‘012 patent claims had been
`
`completed. See Ex. 1008, Hsieh Decl. at ¶¶6 & 8; Ex. 2205; Ex. 2206.
`
`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 Petition at p. 2; Ex. 2207 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. 2201 at pp. 1-3; Fourth Petition at p. 2; 19 C.F.R. §210.13(b)(3). The first
`
`petition was filed more than one month later, on September 25, 2015.
`
`In sum, both the first petition and the Fourth 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; Fourth 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
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`in the ‘012 patent infringement suit when the prior art searches commenced on
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`April 11, 2016. See Ex. 1008, 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,
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`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 Fourth Petition. Rather, the Board applied
`
`certain of the so-called Nvidia factors in an overly rigid fashion, and ignored
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`another factor, so as to improperly create an improper and unauthorized de facto
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`bar against all subsequent petitions filed after a decision on the first petition, and so
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`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 Fourth 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
`
`(factor (b)). Because Nvidia factor (2) is the only Nvidia factor supported by the
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`legislative history of §314(a), Nvidia factor (2) should be given more weight than
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`the other Nvidia factors, if not dispositive weight.
`
`Here, there was no finding by the Board that the subject Fourth 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 Yasuda 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 Yasuda on May 9,
`
`2016 -- after the Board’s denial of the first petition on March 9, 2016.
`
`See
`
`Ex. 1008, Hsieh Decl. at ¶¶6 & 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 the unpatentability ground presented
`
`here.
`
`Petitioner should have been aware of Yasuda before the First
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`Petition was filed. See infra. Yasuda is identified in Matsuoka.
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`Sur-Reply 3. And the fact that Yasuda 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.
`
`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 §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
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`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 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 reference
`
`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
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`(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 prior art 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
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`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
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`“Handbook” was publicly accessible prior to the filing of the first petition. Atlas,
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`IPR2015-01421, Decision (Paper 8) at pp. 6-7.
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`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
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`(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 Yasuda until May 9, 2016.
`
`Matsuoka is one of the 128 U.S. patent documents and 28 foreign patent
`
`documents cited on the face of the ‘094 patent. See Ex. 1001. Yasuda, in turn, is
`
`one of the 14 U.S. patent documents and 5 foreign patent documents cited on the
`
`face of the Matsuoka patent. See Ex. 2203. There is no dispute that Yasuda was
`
`not raised during the ‘012 patent infringement suit and, consequently, is not cited
`
`on the face of the ‘094 patent
`
`like Matsuoka, or in Petitioner’s invalidity
`
`contentions and expert report on invalidity from the ‘012 patent infringement suit.
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`See Ex. 1001 at pp. 1-3; Ex. 1002 at pp. 458-61; Ex. 2205; Ex. 2206. The ITC
`
`investigation on the challenged ‘094 patent claims was terminated before the filing
`
`of the first petition. See Ex. 2201. The Board has not cited any legal authority for
`
`imputing a prior earlier knowledge of Yasuda to Petitioner under
`
`these
`
`circumstances. Cf. Decision at pp. 7-8. Indeed, the Board imputes to Petitioner a
`
`broader scope of knowledge than Patent Owner was held to under 37 C.F.R. §1.56.
`
`3.
`
`The Denial Of The First Petition Should Not Be Fatal
`
`The Board pejoratively characterized the subject Fourth Petition “as an
`
`attempt to cure a substantive and material defect in the petition filed in IPR2015-
`
`01954.” See Decision at p. 10. 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.
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`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
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`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 pp. 9-10. 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,
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`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).
`
`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 Fourth Petition
`
`proposes just one ground based on one reference against the same claims of the
`
`‘094 patent. See Decision at p. 6. The additional burden imposed on the Patent
`
`Office by the Fourth 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 Fourth Petition.
`
`See AIA,
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`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. 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). 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 Fourth 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 the
`
`Matsuoka reference from the ‘012 patent infringement suit.
`
`See Ex. 2205 at
`
`pp. 45-49 (¶78); Ex. 2206 at pp. 50-51 (¶¶128-129) & pp. 74-75 (¶¶191-193,
`
`referring to Canon’s technical expert, Dr. Sturges). The Fourth Petition poses the
`
`minimal possible additional burden -- one ground based on one reference.
`
`NY 835866v.1
`
`- 13 -
`
`
`
`B.
`
`The Board’s Application Of The Nvidia Factors Improperly
`Conflicts With 35 U.S.C. §325(d)
`
`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).
`
`NY 835866v.1
`
`- 14 -
`
`
`
`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.
`
`Dated: December 14, 2016
`
`Respectfully submitted,
`/s/ Steven F. Meyer
`Steven F. Meyer (Reg. No. 35,613)
`
`NY 835866v.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 835866v.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 835866v.1