UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`
`Case IPR2017-00126
`Patent 7,161,319 B2
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`1
`
`Exhibit 1021
`Apple v. Qualcomm
`IPR2018-01315
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`
`v.
`
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`
`Case IPR2017-00126
`Patent 7,161,319 B2
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`1
`
`Exhibit 1021
`Apple v. Qualcomm
`IPR2018-01315
`
`
`
`IPR2017-00126
`Patent 7,161,319 B2
`
`
` I. INTRODUCTION
`On October 15, 2018, we entered a Final Written Decision
`determining that One World Technologies, Inc. (“Petitioner”) had shown, by
`a preponderance of evidence, that claims 1–4, 7, 9–12, and 15 of U.S. Patent
`No. 7,161,319 B2 (Ex. 1001, “the ’319 patent”) are unpatentable, but had
`failed to show that claims 8 and 16 are unpatentable. Paper 541 (“Final
`Dec.”). On November 14, 2018, The Chamberlain Group (“Patent Owner”)
`filed a Request for Rehearing, asking us to reconsider our finding that claims
`1–4, 7, 9–12, and 15 are unpatentable. Paper 60 (“Reh’g Req.”).2 For the
`reasons discussed below, Patent Owner’s Request for Rehearing is denied.
`II. ANALYSIS
`A party requesting rehearing “must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or
`a reply.” 37 C.F.R. § 42.71(d) (emphasis added). The burden of showing a
`decision should be modified on a request for rehearing lies with the party
`challenging the decision. Id.
`Patent Owner argues we misapprehended or overlooked the following
`points in determining Petitioner had shown the unpatentability of claims 1–
`
`
`1 A public version of this sealed Final Written Decision was filed on October
`24, 2018, as Paper 56.
`2 Prior to a decision on Patent Owner’s Request for Rehearing, both parties
`filed a notice of appeal from the Final Written Decision. Papers 62, 64. The
`parties subsequently moved to dismiss their appeals. On February 19, 2019,
`the U.S. Court of Appeals for the Federal Circuit granted the parties’ motion
`to dismiss the appeals, and remanded the case to the Board for decisions on
`the parties’ rehearing requests. The Federal Circuit’s Order issued as a
`mandate to the Board on the same day.
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`4, 7, 9–12, and 15 of the ’319 patent: (1) the grounds of unpatentability
`raised in the Petition; and (2) the ability to rely on Applicant Admitted Prior
`Art (“AAPA”) in inter partes reviews. Reh’g Req. 1–2. We disagree for the
`reasons discussed below.
`A. Procedural History
`Given Patent Owner’s argument that we have misapprehended the
`grounds raised in the Petition, we provide the following procedural history
`of this case. In its Petition for review of the ’319 patent, Petitioner requested
`we “find claims 1–4, 7, 8, 9–12, 15, and 16 unpatentable under § 103 as
`obvious over Doppelt in view of the Admitted Art and Jacobs and/or
`Gilbert.” Paper 1 (“Pet.”), 3 (additional emphasis added).
`In its Preliminary Response to the Petition, Patent Owner
`characterized the Petition as challenging the patentability of claims 1–4, 7, 8,
`9–12, 15, and 16 (“the challenged claims”) as “obvious over Doppelt in view
`of Jacobs, ‘Admitted Art,’ and Gilbert.” Paper 6, 14 (citing Pet. 38)
`(emphasis added). Despite this characterization, Patent Owner argued the
`Petition should be denied because in challenging claim 1, Petitioner
`“contends that all but two of the recited features are disclosed by two or
`more of the references,” and “cites to Jacobs and/or Gilbert without
`identifying deficiencies in Doppelt for which these references are applied.”
`Id. at 17, 19 (emphasis added). As a result, Patent Owner argued
`Petitioner’s failure to identify clearly how each claim limitation is allegedly
`taught by the cited art “prejudices Patent Owner and . . . leaves Patent
`Owner without a clear understanding of the ground being advanced.” Id. at
`23.
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`In our Institution Decision, we addressed Patent Owner’s concerns
`regarding the ambiguity in Petitioner’s challenging the claims as obvious
`over Doppelt, AAPA, Jacobs “and/or” Gilbert. Specifically, we found
`Petitioner’s analysis was not “so unclear that it has prejudiced Patent Owner
`by forcing Patent Owner to speculate as to the particular combination of
`references Petitioner has relied upon.” Paper 8 (“Dec. Inst.”), 19 (citing
`Pet. 38–44, 58). We did so because “Petitioner’s reliance on Gilbert is
`contingent on our explicitly construing the term wall console to not require
`an IR detector,” and because “Petitioner provides separate rationales for
`combining Doppelt, AAPA, and Jacobs, and for combining Doppelt, AAPA,
`Jacobs, and Gilbert.” Id. Although we instituted review based on the
`ground of obviousness over (1) Doppelt, AAPA, and Jacobs, we denied
`review on the additional grounds of obviousness over (2) Doppelt, AAPA,
`Jacobs, and Gilbert, and (3) Doppelt, AAPA, and Gilbert implied by
`Petitioner’s use of “and/or” in the grounds raised in the Petition. Dec. Inst.
`20–21.
`Subsequent to our Institution Decision, Patent Owner filed a Response
`to the Petition. See Paper 11 (“PO Resp”). In its Response, Patent Owner
`did not maintain its argument that the Petition raised an ambiguous ground,
`and did not argue that the only ground raised in the Petition was obviousness
`over Doppelt, AAPA, Jacobs, and Gilbert. Id. at 1–54. Additionally, the
`Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, 138 S.Ct.
`1348, 1354 (2018), holding that when inter partes review is instituted, “the
`Board must address every claim the petitioner has challenged.” In response
`to the SAS decision, the Director issued Guidance on the impact of SAS on
`
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`AIA trial proceedings.3 The Guidance indicated that when the Board
`institutes inter partes review, it will institute review of all challenged claims
`on “all challenges raised in the petition.” The Guidance further indicated
`that for pending trials not instituted on all grounds or challenges raised in the
`petition, “the panel may issue an order supplementing the institution decision
`to institute on all challenges.” Id. When this occurs, “the petitioner and
`patent owner shall meet and confer to discuss the need for additional
`briefing,” and “may agree to affirmatively waive additional briefing or
`schedule changes.” Id.
` In view of SAS and the Director’s Guidance, we emailed the parties
`requesting their availability for a conference call to discuss “whether either
`party would like to present additional briefing on the patentability of the
`challenged claims based on the combinations of (1) Doppelt, AAPA, and
`Gilbert, and (2) Doppelt, AAPA, Jacobs and Gilbert.” Ex. 3006. During the
`subsequent call, we asked the parties to meet and confer to (a) identify any
`non-instituted grounds raised in the Petition and the claims that pertain to
`such grounds, (b) determine whether additional briefing was needed to
`address any such non-instituted grounds and claims, and (c) determine
`whether the parties agree on how to proceed with respect to non-instituted
`grounds, including by agreeing to withdraw such grounds. See Paper 39, 3.
`In response, the parties sent a joint email to the Board indicating “they had
`reached agreement that the only non-instituted ground in this proceeding
`was Petitioner’s challenge to the patentability of claims 1–4, 7–12, 15, and
`16 under 35 U.S.C. § 103(a) as obvious over Doppelt, AAPA, Jacobs, and
`
`
`3 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
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`Gilbert.” Id. at 4 (citing Ex. 3003) (emphases added). Consequently, we
`modified our Institution Decision to include review of claims 1–4, 7–12, 15,
`and 16 as obvious over Doppelt, AAPA, Jacobs, and Gilbert. Id. at 5. We
`also issued a Supplemental Scheduling Order granting the parties the
`opportunity to file supplemental briefing on this additional ground. Paper
`42, 2–3.
`Patent Owner filed a Supplemental Response to the Petition, arguing
`for the first time post-institution of trial that the grounds raised in the
`Petition were ambiguous, and arguing in a footnote that “[t]hese failings are
`fatal to the Petition, which as discussed in the Preliminary Response,
`proposed ‘only a single ground—namely obviousness over Doppelt in view
`of Jacobs, ‘Admitted Art,’ And Gilbert.’” Paper 45 (“PO Supp. Resp.”), 21
`n.3.
`
`B. Grounds Raised in the Petition
`Patent Owner argues that we misapprehended the grounds raised in
`the Petition by finding Petitioner had challenged the patentability of claims
`1–4, 7–12, 15, and 16 as obvious over Doppelt, AAPA, and Jacobs. Reh’g
`Req. 9–15. Patent Owner sets forth numerous arguments to explain how we
`allegedly misapprehended the grounds raised in the Petition. Id. Before
`addressing the merits of these arguments, we note the following findings
`made in our Final Written Decision:
`1. Patent Owner did not argue in its Response to the Petition that the
`Petition did not raise obviousness over Doppelt, AAPA, and
`Jacobs. Final Dec. 17. Therefore, Patent Owner waived that
`argument. Id. at 18; see also Paper 9, 2–3 (“The patent owner is
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`cautioned that any arguments for patentability not raised in the
`response will be deemed waived.”).
`2. The parties agreed via email that the only non-instituted ground in
`our Institution Decision was obviousness over Doppelt, AAPA,
`Jacobs, and Gilbert. Final Dec. 17−18; Ex. 3003. That email was
`sent by Mr. Bregman (counsel for Petitioner) and had a joint
`signature line that included Mr. Bregman and Mr. Monaldo
`(counsel for Patent Owner). Final Dec. 17 n.7. Mr. Monaldo was
`copied on the email, and, in a subsequent call with the parties, did
`not object to the inclusion of his name on the joint signature line or
`argue that the email misrepresented the parties’ agreement or was
`in any way misleading. Id.
`3. Patent Owner’s argument in its Supplemental Response to the
`Petition that the only ground raised in the Petition was obviousness
`over Doppelt, AAPA, Jacobs, and Gilbert was improper because it
`incorporated by reference an argument made in Patent Owner’s
`Preliminary Response, and our rules prohibit the incorporation of
`arguments by reference. Id. at 18–19 (citing 37 C.F.R.
`§ 42.6(a)(3)).
`4. The Petition supports the separate grounds of obviousness over
`(1) Doppelt, AAPA, and Jacobs, and (2) Doppelt, AAPA, Jacobs,
`and Gilbert because the Petition provides separate rationales for
`combining the references in each of these grounds, and because the
`Petition relies on Gilbert in a purely conditional manner that
`depends on our construction of the term “wall console.” Id. at 19–
`20.
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`5. Ignoring the ground of obviousness over Doppelt, AAPA, and
`Jacobs raised in the Petition would require us to ignore the
`substantive analysis provided for this ground in the Petition. Id. It
`would also require us to rewrite Petitioner’s challenge of
`obviousness over Doppelt, AAPA, Jacobs “and/or” Gilbert to a
`challenge of obviousness over Doppelt, AAPA, Jacobs “and”
`Gilbert. Id. Doing so would be contrary to the Supreme Court’s
`SAS instruction that “Congress chose to structure a process in
`which it’s the petitioner . . . who gets to define the contours of the
`proceeding.” Id.
`In its Request for Rehearing, Patent Owner does not allege that any of
`these findings were erroneous. See Reh’g Req. 9–15. Nor does Patent
`Owner explain how we misapprehended any matter in the Final Written
`Decision by identifying, for each of the arguments raised in the Request for
`Rehearing, “the place where each matter was previously addressed in a
`motion, an opposition, or a reply” as required by our rules. 37 C.F.R.
`§ 42.71(d). A request for rehearing is not an opportunity to present new
`arguments or evidence. For this reason alone, Patent Owner has failed to
`establish that we misapprehended the grounds raised in the Petition.
`Moreover, Patent Owner’s arguments are unavailing for the reasons that
`follow.
`Patent Owner’s first argument for how we allegedly misapprehended
`the grounds raised in the Petition is that a literal reading of the ground
`raised—obviousness over Doppelt in view of the Admitted Art and Jacobs
`and/or Gilbert—would require institution on three grounds: obviousness
`over (1) Doppelt, Jacobs, and AAPA; (2) Doppelt, Jacobs, AAPA, and
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`Gilbert; and (3) Doppelt, AAPA, and Gilbert. Reh’g Req. 11–12. Patent
`Owner does not identify where this argument was previously presented in a
`motion, opposition, or reply as required by our rules. Instead, Patent Owner
`cites to our Order modifying the Institution Decision (Paper 39). Id. Thus,
`Patent Owner’s argument is unpersuasive for this reason alone. We cannot
`have misunderstood an argument Patent Owner did not previously make.
`We also note that our Institution Decision expressly identified and
`considered all three grounds Patent Owner enumerates in its Request for
`Rehearing as grounds raised in the proceeding. See Dec. Inst. 20–21.
`Nonetheless, we instituted trial on only the first ground, denying institution
`on the second and third grounds. Id. We confirmed this understanding of
`the grounds raised in the Petition in our post-SAS email to the parties by
`expressly identifying the second and third grounds as grounds that had been
`raised but denied in our Institution Decision. See Ex. 3006 (inviting the
`parties to a conference call to discuss “whether either party would like to
`present additional briefing on the patentability of the challenged claims
`based on the combinations of (1) Doppelt, AAPA, and Gilbert, and
`(2) Doppelt, AAPA, Jacobs, and Gilbert”). Thus, throughout this
`proceeding, we have consistently recognized the three grounds Patent Owner
`identifies as logically resulting from Petitioner’s challenge to the
`patentability of the claims as obvious over Doppelt, AAPA, Jacobs “and/or”
`Gilbert.
`Although we subsequently modified our Institution Decision to only
`include Petitioner’s challenge of obviousness over Doppelt, AAPA, Jacobs,
`and Gilbert, we did so “based on the parties’ agreement that the only non-
`instituted ground was the challenge to the patentability of claims 1–4, 7–12,
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`15, and 16 under 35 U.S.C. § 103(a) as obvious over Doppelt, AAPA,
`Jacobs, and Gilbert.” Paper 39, 5 (emphasis added); see also Ex. 3003. That
`is, we modified our Institution Decision to include the additional ground of
`obviousness over Doppelt, AAPA, Jacobs, and Gilbert as the only previously
`non-instituted ground raised in the Petition based on the joint agreement of
`Patent Owner and Petitioner that this was the only previously non-instituted
`ground. See Ex. 3003.
`Patent Owner next argues that Petitioner “put to rest any notion that
`the ‘and/or’ included in the Petition’s [ground] was intended to express
`multiple grounds” when Mr. Bregman (counsel for Petitioner) emailed the
`Board confirming that “the singular non-instituted ground in this proceeding
`was ‘1. Whether claims 1–4, 7–12, 15, and 16 are rendered obvious by
`Doppelt, Applicant Admitted Prior Art, Jacobs, and Gilbert.’” Reh’g Req.
`12 (quoting Ex. 3003). Patent Owner further argues that because the email
`did not identify the ground of obviousness over Doppelt, AAPA, and
`Gilbert, “Petitioner has confirmed that the [ground raised], including the
`‘and/or’ that logically would have resulted in a combination including
`Doppelt, AAPA, and Gilbert, was a mistake.” Id. at 13.
`Once again, Patent Owner does not identify where this argument was
`previously presented in a motion, opposition, or reply as required by our
`rules. Id. at 12–13. Instead, Patent Owner cites to the parties’ joint email to
`the Board identifying Doppelt, AAPA, Jacobs, and Gilbert as the only
`previously non-instituted ground, and our Order modifying the Institution
`Decision (Paper 39). Id. Thus, the argument is unpersuasive for this reason
`alone. We cannot have misunderstood an argument Patent Owner did not
`previously make.
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`Moreover, Patent Owner’s argument is contradicted by finding 2
`above. See Final Dec. 17; Ex. 3003, 1. Specifically, to bring our Institution
`Decision in compliance with SAS and the Director’s Guidance, we requested
`both Patent Owner and Petitioner to discuss whether either party would like
`to present additional briefing on the previously non-instituted grounds of
`(1) Doppelt, AAPA, and Gilbert, and (2) Doppelt, AAPA, Jacobs, and
`Gilbert. Ex. 3006. During the conference call, conducted on April 30, 2018,
`we requested both Patent Owner and Petitioner to “(1) identify any non-
`instituted grounds raised in the Petition and the claims that pertain to such
`grounds, (2) determine whether additional briefing was needed to address
`any such non-instituted grounds and claims, and (3) determine whether the
`parties agree on how to proceed with respect to such non-instituted grounds,
`including by agreeing to withdraw such grounds.” Paper 39, 3.
`In response to our request, Patent Owner and Petitioner jointly
`submitted an email (“Written Agreement”) sent by Mr. Bregman (counsel
`for Petitioner) on which all of the attorneys representing Patent Owner were
`copied. See Ex. 3003, 1 (copying Messrs. Karl Renner, Jeremy Monaldo,
`Jack Wilson, and Josh Griswold). The body of that email expressly states
`that “[t]he Parties agree the non-instituted ground in this proceeding is as
`follows: 1. Whether claims 1–4, 7–12, 15, and 16 are rendered obvious by
`Doppelt, Applicant Admitted Prior Art, Jacobs, and Gilbert.” Id. (emphasis
`added). Moreover, the email includes the joint signature line “Regards,
`Dion Bregman (Petitioner) and Jeremy Monaldo (Patent Owner).” Id. Thus,
`this Written Agreement clearly indicates to the Board that both Patent
`Owner and Petitioner agreed that there was only one previously non-
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`instituted ground in this proceeding—obviousness over Doppelt, AAPA,
`Jacobs, and Gilbert.
`In short, either Patent Owner’s present argument, or Patent Owner’s
`Written Agreement, misrepresents Patent Owner’s position on the grounds
`raised in the proceeding, including the previously non-instituted grounds.
`See 37 C.F.R. § 42.12. Furthermore, if the Written Agreement was not
`Patent Owner’s actual position on the previously non-instituted grounds,
`Patent Owner failed to comply with both our request to identify previously
`non-instituted grounds and our Order modifying our Institution Decision to
`include previously non-instituted grounds. Ex. 3006; Paper 39, 3
`(“Emphasizing the need to resolve these issues prior to the May 4, 2018
`statutory deadline for issuing a Final Written Decision, we asked the parties
`to jointly report back to us by the close of business on May 1, 2018.”).
`Patent Owner had multiple opportunities to respond to our request to identify
`the previously non-instituted grounds or to correct its Written Agreement
`identifying the previously non-instituted grounds, such as by notifying us
`during the conference call on April 30, 2018 or the follow-up conference call
`on May 2, 2018, or by timely filing a request for rehearing of the Order
`modifying the Institution Decision.4 Patent Owner did not do so, and a
`request for rehearing of the Final Written Decision is not an opportunity for
`Patent Owner to present late argument or to retract the joint representation
`made by Patent Owner and Petitioner in the Written Agreement that the only
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`4 Patent Owner had an opportunity to file a request for rehearing our Order
`modifying the Institution Decision under 37 C.F.R. § 42.71(d) within 14
`days of the entry of the Order. Patent Owner did not file a timely request for
`rehearing the Order.
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`previously non-instituted ground was obviousness over Doppelt, AAPA,
`Jacobs, and Gilbert.
`Finally, Patent Owner argues “the Petition’s discussion of the
`Doppelt/Jacobs/Admitted Art/Gilbert ground makes it abundantly clear that
`Petitioner’s original contentions, as set forth in the Petition itself, included
`only that singular non-instituted ground, and no other.” Reh’g Req. 13
`(emphasis omitted). Patent Owner argues that this is so because the
`Petition’s discussion of claim limitations “to which Gilbert was mapped
`concludes with an assertion that the ‘Doppelt/Jacobs/Gilbert’ system
`discloses the feature.” Id. Patent Owner further argues that “the Petition
`nowhere provides a mapping in which Doppelt is modified based on
`admitted art and Jacobs, without Gilbert.” Id. at 14. Once again, Patent
`Owner does not identify where these arguments were previously presented
`in a motion, opposition, or reply as required by our rules. Instead, Patent
`Owner cites to the Petition itself. Id. at 13–14. Thus, Patent Owner’s
`argument is unpersuasive for this reason alone. We cannot have
`misunderstood an argument Patent Owner did not previously make.
`Moreover, Patent Owner’s arguments are contradicted by findings 3–
`4. See Final Dec. 18–20. Specifically, the only argument Patent Owner ever
`made post-institution that the only ground raised in the Petition was
`obviousness over Doppelt, AAPA, Jacobs, and Gilbert was made in Patent
`Owner’s Supplemental Response, which incorporated the argument by
`reference from Patent Owner’s Preliminary Response. See PO Supp. Resp.
`21. Our rules prohibit incorporating arguments by reference. See Final Dec.
`18–19 (citing 37 C.F.R. § 42.6(a)(3)). Patent Owner does not dispute this or
`allege that this was error. Nor does Patent Owner dispute or allege error in
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`our finding 4 that the Petition supports consideration of the ground of
`obviousness based on Doppelt, AAPA, and Jacobs because it gives a
`separate rationale for combining these references, and relies on Gilbert in a
`purely conditional manner that depends on our construction of the term
`“wall console.” Id. at 19–20. For example, the Petition states a skilled
`artisan “would have recognized that the combined system (of Doppelt,
`Jacobs, and Admitted Art) using the[] well-known components [described in
`the Petition] would benefit users with increased programmability and control
`over their garage door system.” Pet. 42–43 (quoted in Final Dec. 19–20).
`For the reasons discussed above, Patent Owner has failed to
`demonstrate that we misapprehended the grounds raised in the Petition.
`C. Availability of AAPA in Inter Partes Reviews
`Patent Owner argues our Final Written Decision “incorrectly
`concluded that the AAPA relied on by Petitioner is eligible for” inter partes
`review. Reh’g Req. 3. Patent Owner argues this “incorrect conclusion
`stems from misapprehension of Federal Circuit jurisprudence on use of
`AAPA in reexamination proceedings, misapprehension of regulations
`adopted by the Director, and misapprehension of the statutory framework of
`35 U.S.C. § 311(b).” Id.
`Before addressing the merits of Patent Owner’s arguments, we note
`the following findings of fact and conclusions of law made in our Final
`Written Decision:
`6. The Federal Circuit, and its predecessor, the Court of Customs and
`Patent Appeals, have long held that admissions in a patent may be
`considered prior art for any purpose, including as evidence of
`obviousness under 35 U.S.C. § 103. Final Dec. 37 (quoting In re
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`Nomiya, 509 F.2d 566, 570–71 (CCPA 1975); citing Constant v.
`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
`1988)).
`7. Patent Owner admitted, in the “Background of the Invention”
`section of the ’319 patent, that it was known to use infrared
`detectors in garage door operators to detect the presence of people.
`Id. at 35.
`8. This admission, made in Patent Owner’s own patent, is the
`evidence cited by Petitioner to prove the prior existence and use of
`infrared detectors in garage door operators. Id. at 37, 45–46.
`9. This admission is quite literally prior art consisting of patents
`because the admission itself is prior art, and the evidence proving
`the admission consists of Patent Owner’s own patent. Id.
`Patent Owner does not dispute any of these findings of fact or conclusions of
`law, or argue that they are erroneous or that we misapprehended them. See
`Reh’g Req. 2–9. For this reason alone, Patent Owner has failed to show that
`we erred in concluding that AAPA is eligible for use in inter partes reviews.
`
`Nonetheless, Patent Owner argues that we allegedly misapprehended
`the use of AAPA in inter partes reviews because we misapprehended a pair
`of Federal Circuit cases concerning pre-AIA5 reexamination proceedings in
`concluding that the phrase “prior art consisting of patents or printed
`publications” in 35 U.S.C. § 311(b) can include AAPA. Id. at 4–5. Patent
`Owner argues the first case, referred to as NTP1,6 does not mention AAPA,
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`5 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
`6 In re NTP, Inc., 654 F.3d 1268 (Fed Cir. 2011).
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`and the second case, referred to as NTP2,7 does not mention limiting the
`evidence that can be used in pre-AIA reexamination proceedings to prior art
`consisting of patents or printed publications. Id. at 4. Patent Owner argues
`because neither NTP case “endorsed a ground involving AAPA, against an
`argument that AAPA was ineligible for use in a reexamination proceeding,”
`the Federal Circuit “did not (and could not) find that AAPA was eligible
`under the pre-AIA reexamination statute, must less create precedent for
`future cases.” Id. at 4–5 (citing Nat’l Cable Television Ass’n, Inc. v. Am.
`Cinema Editors, Inc., 937 F.2d 1572, 1581 (Fed. Cir. 1991)).
`As discussed above, our conclusion that AAPA is eligible for use in
`inter partes review proceedings did not rely on the NTP cases. Instead, it
`relied on findings 6–9 above, namely, that AAPA is an admission in a
`patent, and that an admission is prior art that can be used as evidence of
`obviousness. Final Dec. 35, 37 (quoting Nomiya, 509 F.2d at 570–71).
`Thus, AAPA is prior art (per Nomiya) consisting of a patent (the ’319
`patent), and is eligible for use in inter partes reviews. Id. at 36–37. Patent
`Owner does not dispute these findings.
`In our Final Written Decision, we rely on the pre-AIA reexamination
`statute (35 U.S.C. §§ 301, 302 (1980)), and the NTP cases as persuasive
`authority that supports our conclusion that AAPA can be used to challenge
`claims in inter partes reviews. Indeed, the NTP cases can only be
`considered persuasive authority because they involved ex parte
`reexaminations rather than inter partes reviews. Patent Owner does not
`dispute our finding that the pre-AIA reexamination statute, like the inter
`
`
`7 In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011).
`16
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`IPR2017-00126
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`
`partes review statute, limits the evidence that can be used to challenge
`claims of an issued patent to “prior art consisting of patents or printed
`publications.” See Final Dec. 37–38 (citing 35 U.S.C. § 301 (1980); NTP1
`at 1275). Patent Owner also does not dispute that in NTP2, the Federal
`Circuit affirmed the rejection of claims in a pre-AIA reexamination based in
`part on AAPA; specifically finding the AAPA provided “substantial
`evidence [that] supports the Board’s finding” that the re-examined claims
`were unpatentable. Id. at 38 (citing NTP2 at 1304). Thus, as we explained
`in our Final Written Decision, the Federal Circuit in NTP2 did in fact find
`that AAPA can be used in pre-AIA ex parte reexaminations, despite the
`evidentiary limitation that claims in such proceedings can only be
`challenged based on prior art consisting of patents or printed publications.
`Id. Although NTP2 is not precedential authority on that point for the reasons
`identified in Patent Owner’s Request for Rehearing, it is nonetheless
`persuasive authority that supports our conclusion that AAPA is prior art
`consisting of patents under 35 U.S.C. § 311(b). Id. at 37–38.
`Patent Owner next argues that we misapprehended the rules and
`regulations for conducting inter partes reviews adopted by the Director.
`Reh’g Req. 5–7. Specifically, Patent Owner argues that our finding that
`Rule 42.104 must be read as a whole, and that Rule 42.104(b)(4) cannot be
`read in isolation to contradict the related statutory and regulatory provisions
`for inter partes review, was erroneous because “nothing about Rule
`42.104(b)(4) contradicts Rule 42.104(b)(2) or the statute.” Reh’g Req. 6.
`Rather, Patent Owner argues, “Rule 42.104(b)(4) informs the statutory text
`and clarifies that, when the statute mentions ‘prior art consisting of patents,’
`
`
`
`17
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`IPR2017-00126
`Patent 7,161,319 B2
`
`it is referring to ‘prior art patents.’” Id. We are not persuaded by Patent
`Owner’s arguments.
`Rule 42.104 sets forth the requirements for a petition for inter partes
`review, and states the petition must “set forth . . . [t]he specific statutory
`grounds under 35 U.S.C. 102 or 103 on which [a] challenge to [a] claim is
`based and the patents or printed publications relied upon for each ground.”
`37 C.F.R. § 42.104(b)(2) (emphasis added). This language is consistent with
`the statutory language limiting the scope of inter partes reviews to those
`based “only on a ground that could be raised under section 102 or 103 and
`only on the basis of prior art consisting of patents or printed publications.”
`35 U.S.C. § 311(b) (emphasis added). We see no basis to read the statute,
`which is clear on its face, to limit the evidence that is available in inter
`partes reviews to “prior art consisting of [prior art] patents or printed
`publications,” as Patent Owner contends, by inserting the term prior art into
`the statutory language. See Lamie v. U.S. Trustee, 540 U.S. 526, 538 (2004)
`(refusing to read the word “attorney” into a bankruptcy statute because
`“[t]here is a basic difference between filling a gap left by Congress’ silence
`and rewriting rules that Congress has affirmatively and specifically
`enacted”).
`Rule 42.104 also requires the petition to set forth how a “construed
`claim is unpatentable under the statutory grounds identified in paragraph
`(b)(2) of this section. The petition must specify where each element of the
`claim is found in the prior art patents or printed publications relied upon.”
`37 C.F.R. § 42.104(b)(4) (emphases added). As we noted in our Final
`Written Decision, Rule 42.104 must be read as a whole. See Final Dec. 39–
`40. Thus, section (b)(4) must be read consistently with section (b)(2) to
`
`
`
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`IPR2017-00126
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`which it expressly refers. Id.; see also Phipps v. Dep’t of Health and Human
`Services, 767 F.2d 895, 897 (Fed. Cir. 1985) (reading different sections of
`employment regulations to effect “the true meaning and intent of the
`regulations read as a whole”) (emphasis added). Section (b)(4) must also be
`read consistently with the statutory language of 35 U.S.C. § 311(b). See
`Manhattan Gen. Equip. Co. v. Comm’r of Internal Revenue, 297 U.S. 129,
`134 (1936) (finding a regulation that “create[s] a rule out of harmony with
`[a] statute, is a mere nullity”). Read as a whole, and consistently with 35
`U.S.C. § 311(b), Rule 42.104 allows a petitioner to challenge claims based
`on prior art consisting of patents or printed publications, i.e., based on prior
`art that consists of patents or printed publications. See Final Dec. 39–40.
`Patent Owner cites to a number of prior Board decisions in support of
`its pos
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