Trials@uspto.gov
`Tel: 571.272.7822
`
`
`Paper 41
`Entered: July 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00336
`Patent 6,959,293 B2
`____________
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`Patent Owner requests rehearing of the Order (Paper 39), denying
`
`Patent Owner’s renewed request for authorization to file a motion to
`
`terminate ex parte reexamination Control No. 90/014,056 (“the ’056
`
`Reexamination”). Paper 40, “Req. Reh’g.” Patent Owner also “suggests
`
`
`Tel: 571.272.7822
`
`
`Paper 41
`Entered: July 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00336
`Patent 6,959,293 B2
`____________
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`Patent Owner requests rehearing of the Order (Paper 39), denying
`
`Patent Owner’s renewed request for authorization to file a motion to
`
`terminate ex parte reexamination Control No. 90/014,056 (“the ’056
`
`Reexamination”). Paper 40, “Req. Reh’g.” Patent Owner also “suggests
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`that an expanded panel be convened (SOP 1, rev. 14, § III.C).” Id. at 3.
`
`For the reasons discussed below, Patent Owner’s Request for Rehearing is
`
`denied, and its suggestion to convene an expanded panel is denied.
`
`A party requesting rehearing bears the burden of showing that the
`
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`
`specifically all matters we misapprehended or overlooked, and the place
`
`where each matter was previously addressed. Id. When rehearing an
`
`interlocutory decision, a panel will review the decision for an abuse of
`
`discretion. 37 C.F.R. § 42.71(b); see also Wi-Fi One, LLC v. Broadcom
`
`Corp., 887 F.3d 1329 (Fed. Cir. 2018) (“The Board’s administration of its
`
`rules for trial proceedings is reviewed for an abuse of discretion.”). The
`
`Board abuses its discretion if the decision: (1) is clearly unreasonable,
`
`arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3)
`
`rests on clearly erroneous fact findings; or (4) involves a record that contains
`
`no evidence on which the Board could rationally base its decision. Redline
`
`Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015)
`
`(quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994)).
`
`Here, in its Request for Rehearing, Patent Owner contends that we
`
`overlooked or misapprehended Patent Owner’s arguments that NVIDIA1
`
`factors set forth in General Plastic Industrial Co., Ltd. v. Canon Kabushiki
`
`Kaisha, Case IPR2016-01357, slip op. 15−16 (PTAB Sept. 6, 2017)
`
`(Paper 19) (precedential) (hereinafter “General Plastic”) should be applied
`
`and that such factors weigh heavily in favor of termination of the ’056
`
`Reexamination. Req. Reh’g. 1−3.
`
`
`1 NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4,
`2016) (Paper 9) (hereafter, “NVIDIA”).
`
`2
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`As we noted in our Order (Paper 39, 3), however, General Plastic
`
`makes clear that the Board “exercised [its] discretion not to institute
`
`pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a)”2 each of the
`
`follow-on petitions for inter partes review. Section 6(a) of the Leahy-Smith
`
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35
`
`U.S.C. § 314. The amended 35 U.S.C. § 314(a) is reproduced below.
`
`35 U.S.C. 314 Institution of inter partes review.
`
`(a) THRESHOLD.—The Director may not authorize an
`inter partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that thereis
`a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), institution of
`
`inter partes review is discretionary. This discretion, however, is limited to
`
`instituting, or declining to institute, an inter partes review, not for
`
`terminating an ex parte reexamination as Patent Owner suggests. In fact,
`
`nothing in 35 U.S.C. § 314(a) or 37 C.F.R § 42.108(a) provides the Director
`
`authorization to terminate an ex parte reexamination. In its Request for
`
`Rehearing, Patent Owner does not explain, nor can we discern, how we
`
`abused our discretion when we declined to exercise our discretion under
`
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to authorize Patent Owner to
`
`file a motion to terminate the ’056 Reexamination. See generally Req.
`
`Reh’q.
`
`
`2 37 C.F.R. § 42.108 Institution of inter partes review.
`(a) When instituting inter partes review, the Board may authorize the review
`to proceed on all or some of the challenged claims and on all or some of the
`grounds of unpatentability asserted for each claim.
`
`3
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`In addition, Patent Owner argues that we overlooked its “policy”
`
`argument that “unexplained follow-on [ex parte reexamination requests]
`
`allow a Petitioner to hold back or intentionally seek out ‘different’ art in
`
`order to gain a tactical advantage and delay the resolution of post-grant
`
`proceedings (not to mention co-pending litigation), thereby frustrating
`
`Congress’s and the Board’s policy of speedy and inexpensive resolution (37
`
`C.F.R. § 41.1(b)).” Req. Reh’q. 2−3.
`
`However, in our Order (Paper 39), we explained that “[f]or the same
`
`reason stated in our prior Order (Paper 31, 3−4), we are not convinced that
`
`Petitioner’s [inter partes review] Petitions and Request for Reexamination
`
`amount to harassment of Patent Owner.” Paper 39, 3−4. Further, we noted
`
`Petitioner did not have the advantage of the Patent Owner’s Response or the
`
`cross-examination of Patent Owner’s expert at the time of filing the Request
`
`for Reexamination, and merely notifying the Examiner in the ’056
`
`Reexamination of our claim construction in this instant proceeding does not
`
`amount to using our Institution Decision as a “roadmap” to bolster
`
`previously unsuccessful arguments, as Patent Owner alleges. Id. at 4−5.
`
`Moreover, we were not convinced by Patent Owner’s argument that the ’056
`
`Reexamination causes unnecessary delay to the related district court case
`
`because, as Patent Owner conceded during the conference call, Patent
`
`Owner requested an extension of time for filing a response to the Examiner’s
`
`Office Action that was mailed on March 26, 2018.
`
`Therefore, we squarely addressed Patent Owner’s “policy” argument
`
`in our prior Order (Paper 39). We are not persuaded that we
`
`misapprehended or overlooked Patent Owner’s argument, as Patent Owner
`
`4
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`alleges in its Request for Rehearing. A request for rehearing is not an
`
`opportunity to express disagreement with a decision.
`
`To further support its “policy” argument, Patent Owner also contends:
`
`(1) “under the STRONGER bills (S.1390 § 105; H.R. 5340 § 105)
`
`introduced in 2017−2018, follow-on [ex parte reexamination requests]
`
`would be barred outright after the one-year bar date”; and (2) although
`
`Petitioner relied on Manual of Patent Examining Procedure (MPEP) § 2210
`
`during the conference call held on May 31, 2018, to argue that 35 U.S.C.
`
`§ 315(e) estoppel does not apply to the ’056 Reexamination, “the Board may
`
`not have appreciated that MPEP does not cite legal authority for this
`
`proposition.” Req. Reh’q. 3.
`
`However, these are new arguments, and a request for rehearing is not
`
`an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d). We
`
`could not have misapprehended or overlooked arguments that were not made
`
`previously. Notably, during the conference call held on May 31, 2018, with
`
`the Board, Patent Owner did not direct our attention to any pending
`
`legislation. Nor does Patent Owner explain in its Request for Rehearing,
`
`how pending legislation is relevant to our determination here prior to that
`
`legislation’s enactment. Moreover, Patent Owner does not contend that it
`
`raised any § 315(e) estoppel argument during any of the conference calls
`
`with the Board.
`
`In any event, MPEP § 2210 states that “[t]he estopped provisions of
`
`AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes
`
`review and post grant review, respectively, and they only prohibit the filing
`
`of a subsequent request for ex parte reexamination, once estoppel attaches;
`
`there is no estoppel as to the Office maintaining an existing ex parte
`
`5
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`reexamination proceeding.” Here, it is undisputed that the ’056
`
`Reexamination was already pending when any § 315(e) estoppel attached,
`
`since Petitioner filed the request for ex parte reexamination on
`
`December 15, 2007, before the entry of the Final Written Decision on
`
`May 9, 2018. Ex. 3001, 3; Paper 38. Although Patent Owner contends that
`
`MPEP § 2210 does not cite any legal authority, Patent Owner does not
`
`address why the statute3 itself is not sufficient support for the procedure set
`
`forth in the MPEP. See Req. Reh’q. 3.
`
`For the foregoing reasons, Patent Owner has not established that we
`
`abused our discretion in denying Patent Owner’s renewed request for
`
`authorization to file a motion to terminate the ’056 Reexamination.
`
`With respect to Patent Owner’s suggestion to convene an explanded
`
`panel, our governing statutes and regulations do not provide for parties to
`
`request, or panels to authorize, an expanded panel. See generally 35 U.S.C.
`
`§ 6; 37 C.F.R. §§ 41.1–42.412. Our standard operating procedures,
`
`however, provide the Chief Judge with discretion to expand a panel to
`
`include more than three judges. PTAB SOP 1, 2–5 (§§ II, III) (Rev. 14); see
`
`id. at 2 (introductory language explaining that the Director has delegated to
`
`the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see
`
`also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994), abrogated on other
`
`grounds by, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (providing that
`
`Congress “expressly granted the [Director] the authority to designate
`
`
`3 Under 35 U.S.C. § 315(e), “[t]he petitioner in an inter partes review of a
`claim in a patent under this chapter that results in a final written decision
`under section 318(a) . . . may not request or maintain a proceeding before the
`Office with respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter parties review.”
`
`6
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`expanded Board panels made up of more than three Board members”). The
`
`Chief Judge may consider panel expansions upon a “suggestion” from a
`
`judge, panel, or party. PTAB SOP 1, 3–4; see also Apple Inc. v. Rensselaer
`
`Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12,
`
`2014) (Paper 20) (expanded panel) (per curiam).
`
`The standard operating procedure exemplifies some of the reasons for
`
`which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For
`
`example, an expanded panel may be appropriate when “[t]he proceeding or
`
`[America Invents Act] Review involves an issue of exceptional importance”
`
`or when “[c]onsideration by an expanded panel is necessary to secure and
`
`maintain uniformity of the Board’s decisions.” Id. (§ III.A.1, 2).
`
`In this case, the Chief Judge has considered Patent Owner’s
`
`suggestion for an expanded panel, but has determined that an expanded
`
`panel is not warranted.
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that Patent Owner’s Request for Rehearing is denied; and
`
`FURTHER ORDERED that Patent Owner’s suggestion to convene an
`
`expanded Panel is denied.
`
`
`
`7
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`For PETITIONER:
`
`Nicholas Whilt
`John Kappos
`Marc Pensabene
`Brian Cook
`Clarence Rowland
`O’MELVENY & MYERS LLP
`nwhilt@omm.com
`jkappos@omm.com
`mpensabene@omm.com
`bcook@omm.com
`crowland@omm.com
`
`For PATENT OWNER:
`
`Chris Coulson
`Michael Zachary
`ANDREWS KURTH KENYON LLP
`chriscoulson@andrewskurthkenyon.com
`michaelzachary@andrewskurthkenyon.com
`
`
`8
`
`
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