Trials@uspto.gov
`571-272-7822
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`
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`Paper 9
`Entered: March 27, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TEMPUR SEALY INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`SELECT COMFORT CORP.,
`Patent Owner.
`_______________
`
`Case IPR2014-01419
`Patent 5,904,172
`_______________
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`DECISION ON REHEARING
`37 C.F.R. § 42.71(c)
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`IPR2014-01419
`Patent 5,904,172
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`I. INTRODUCTION
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`
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`Petitioner, Tempur Sealy International, Inc., filed a Petition on
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`August 29, 2014, requesting an inter partes review of claims 2, 3, 6, 9, 12,
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`13, 16, and 20–25 of U.S. Patent No. 5,904,1721 (Ex. 1001). Paper 1
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`(“Pet.”). Patent Owner, Select Comfort Corp., filed a Preliminary Response
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`on December 4, 2014. Paper 6 (“Prelim. Resp.”). The Board denied
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`institution of an inter partes review. Paper 7 (“Dec.”). Petitioner filed a
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`Request for Rehearing asking that the Board reconsider its decision not to
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`institute. Paper 8 (“Req. Reh’g”).
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`We have considered the Request for Rehearing, but decline to modify
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`the Decision.
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`II. STANDARD
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`When rehearing a decision on petition, the Board will review the
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`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
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`(Fed. Cir. 2004). The party challenging the decision has the burden of
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`showing a decision should be modified, and the request for rehearing must
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`specifically identify all matters the party believes the Board misapprehended
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`or overlooked. 37 C.F.R. § 42.71(d).
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`1 See also Ex Parte Reexamination Certificate, US 5,904,172 C1, iss.
`Jan. 3, 2014 (Ex. 1003); Certificate of Correction, May 18, 1999 (Ex. 1005).
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`A.
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`Interpretation of Law
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`III. ANALYSIS
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`
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`Petitioner argues that by denying the Petition for failing to cite
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`specific portions of the prior at references, we erroneously interpreted the
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`law and abused our discretion. Req. Reh’g 9.
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`Before addressing this argument we address Petitioner’s
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`characterization that failing to cite to specific portions of the references was
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`the Board’s “only” reason for rejecting the Petition. See Req. Reh’g. 3. To
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`the contrary, the lack of citations was one of several reasons that the Petition
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`was deficient. Dec. 6–8. Therefore, even if we accepted Petitioner’s
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`argument that we erroneously interpreted the law to require that the Petition
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`cite to the references, that would not demonstrate the Decision should be
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`altered because it stands on other reasons. With this in mind we address
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`Petitioner’s argument.
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`The petition itself must: (1) “identify specific portions of the evidence
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`that support the challenge,” and (2) “specify where each element of the
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`claim is found in the prior art patents or printed publications relied upon.”2
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`See Dec. 6 (citing 37 C.F.R. §§ 42.104(b)(5), 104(b)(4)).
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`Here the Petition is deficient in that it does not identify specific
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`portions of the evidence (Kery and Guthrie) that support the challenge, nor
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`does the Petition specify where each element of the claim is found in those
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`references. Dec. 6. Contrary to Petitioner’s assertion (Req. Reh’g 2–9), this
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`deficiency is not cured by the Petition’s citation to the Kuchel Declaration
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`2 Notably, the Request for Rehearing is unpersuasive, in part, because it
`addresses 37 C.F.R. § 42.104(b)(4), but does not address 37 C.F.R.
`§ 42.104(b)(5), which was also cited in the Petition. See Dec. 6.
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`(Ex. 1011) that in turn cites to the references. As stated above, the
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`requirement applies to the Petition itself.
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`Nor are we persuaded by Petitioner’s contention that the Board has an
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`established practice of accepting petitions that cite to an expert declaration,
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`which in turn, cites to prior art to establish factual evidence for the petition.
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`Req. Reh’g at 3–4 (citing as examples, IPR2013-00292/293/294/295). The
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`inter partes reviews identified by Petitioner are a group of cases filed
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`together, and for that reason are better described as a single example than an
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`“established practice.” More importantly, these cases are distinguishable
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`from the Petition at hand. The Petitions of the cited cases make reference to
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`prior art patents, while the Petition at hand contains no citation to a prior art
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`patent or publication. See, e.g., IPR2013-00292, Microsoft Corporation v.
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`Surfcase, Inc., Paper 6, 28 (citing Ex. 1015, 4:24–26; 29:17–23), 30 (citing
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`Ex. 1015, 33:6–9); IPR2013-00294, Microsoft Corporation v. Surfcase, Inc.,
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`Paper 4, 18 (citing Ex. 1013, 3:47–50), 20 (citing Ex. 1013, 3:47–50, 4:23–
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`26).
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`
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`Consequently, Petitioner has not demonstrated that the Decision
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`rested upon an erroneous interpretation of law.
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`
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`B.
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` Substantial Evidence
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`Petitioner argues that the Decision is an abuse of discretion in that it is
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`not based on substantial evidence because the Petition establishes a
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`substantial likelihood3 that the challenged claims are obvious in view of the
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`cited art. Req. Reh’g 9–13.
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`A petition must provide a detailed explanation of the significance of
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`evidence, and explain how the construed claim is unpatentable.4 Dec. 7–8
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`(citing 37 C.F.R. §§ 42.22(a)(2), 104(b)(4)).
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`Petitioner contends that the Petition explains how the construed
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`claims are unpatentable, and establishes the differences between Kery and
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`the subject matter of claim 16 by listing the elements disclosed by Kery and
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`where an element was not disclosed by Kery, by relying upon Kery and
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`Guthrie. Req. Reh’g 9–10 (citing Pet. 12, 14). We disagree.
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`The Petition states that “[t]he automated system of Kery+Guthrie
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`would have a microprocessor and electronic pressure sensors.” Pet. 14
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`(citing Ex. 1011 ¶ 69); Dec. 7. Such disclosure does not sufficiently explain
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`that Kery does not disclose a processor, nor that Guthrie does.
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`Consequently, the Petition does not provide a detailed explanation of the
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`evidence, nor explain sufficiently how the construed claim is unpatentable.
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`This deficiency is further illustrated by considering the portion of the
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`Declaration cited in the Petition.
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`The cited portion of the Declaration states that Kery does not disclose
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`a processor, and cites to: another portion of the Declaration (Sections IX(B)–
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`3 We note that the standard in a decision to institute an inter partes review is
`not “substantial likelihood.” The Board must determine whether the
`information presented in a petition demonstrates a reasonable likelihood that
`petitioner will prevail in establishing that at least one of the challenged
`claims is unpatentable. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c).
`4 The duty to explain the differences between the prior art and the claimed
`subject matter is part of the duty to explain how the challenged claims are
`unpatentable under 37 C.F.R. § 42.104(b)(4).
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`(C)), Guthrie, and Appendix A (no page specified). See Pet. 14 (citing
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`Ex. 1011 ¶ 69). Sections IX(B)–(C) of the Declaration explain that the
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`proposed modification includes adding Guthrie’s regulator 172 (to include
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`the microprocessor) to Kery. Ex. 1011 ¶¶ 57, 58, 62. Appendix A cites to a
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`portion of Guthrie dealing with regulator 172 and the associated processor.
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`Ex. 1011, App’x A, 3.
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`Consequently, to understand the asserted ground of unpatentability, a
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`reader must refer to: a first portion of the Declaration, a second portion of
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`the Declaration, the reference, and an unspecified location in the 44-page
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`Appendix. Beyond the fact that the petition itself must provide a detailed
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`explanation of the significance of evidence and explain sufficiently how the
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`construed claim is unpatentable, consideration of this information would
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`amount to improper incorporation by reference. Dec. 7 (citing 37 C.F.R.
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`§ 42.6(a)(3); Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454,
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`slip op. 7–10 (PTAB Aug. 29, 2014) (expanded panel)); see also DeSilva v.
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`DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation “by
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`reference amounts to a self-help increase in the length of the [] brief[,]” and
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`“is a pointless imposition on the court’s time. A brief must make all
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`arguments accessible to the judges, rather than ask them to play archeologist
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`with the record.”).
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`Petitioner also contends that the Decision is not supported by
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`substantial evidence because the Petition articulated a reason for combing
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`the references. Req. Reh’g 12. Accepting for the sake of argument that the
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`Petition demonstrates that each element of claim 16 was known, such a
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`showing is insufficient to demonstrate the obviousness of the subject matter.
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`See Req. Reh’g 12 (citing Pet. 11–12); see also KSR Int'l Co. v. Teleflex Inc.,
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`550 U.S. 398, 418 (2007) (“[a] patent composed of several elements is not
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`proved obvious merely by demonstrating that each of its elements was,
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`independently, known in the prior art”).
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`Regarding incorporating the rationale provided in the Declaration, the
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`Petition merely cited to the Declaration without an accompanying
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`explanation. See Req. Reh’g 12 (citing Pet. 14 that in turn cites to Ex. 1011
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`¶¶ 69, 112). As explained above, the petition itself must provide a detailed
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`explanation of the significance of evidence and explain sufficiently how the
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`construed claim is unpatentable, and consideration of this information would
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`amount to improper incorporation by reference.
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`Consequently, Petitioner has not persuaded us that the Decision is not
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`based on substantial evidence.
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`C.
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`Earlier Board Determination
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`Petitioner states that the Board had two months to notify Petitioner
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`that the Petition was allegedly defective on formal grounds, and instead
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`notified Petitioner nine days after the statutory deadline.5 To the extent that
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`Petitioner is contending that the Board’s failure to decide the case sooner
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`was an abuse of discretion, we disagree. The Decision was issued within the
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`three-month time period set forth in 35 U.S.C. § 314(b).6
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`5 Although not stated by Petitioner, it appears Petitioner is referring to the
`requirement of 35 U.S.C. § 315(b) that a petition may not be filed more than
`a year after the date served with a complaint alleging infringement of a
`patent.
`6 The Preliminary Response was received on December 4, 2014, and the
`Decision to institute was entered on February 17, 2015.
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`Further, it is speculative for Petitioner to assert that correcting the
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`Petition would have been an easy matter. See Req. Reh’g 14–15. Although
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`the Petition was 39 pages, the claim charts (Ex. 1011, Appendix A) were
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`44 pages, for a total of 83 pages, exceeding the 60-page limit. See 37 C.F.R.
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`§ 42.24(a)(i); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,764 (Aug. 14, 2012) (claim charts submitted as part of a petition count
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`towards applicable page limits). Additionally, the Petition would need to
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`incorporate a detailed explanation of the significance of evidence and a
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`sufficient explanation of how the construed claim is unpatentable for each of
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`the challenged claims.
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`Accordingly, the Board’s failure to decide the case sooner was not an
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`abuse of discretion.
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`Petitioner has not demonstrated that the Decision contains an abuse of
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`IV. CONCLUSION
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`discretion.
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`For the foregoing reasons, it is
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`V. ORDER
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`ORDERED that Petitioner’s Request for Rehearing is denied.
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`IPR2014-01419
`Patent 5,904,172 C1
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`PETITIONER:
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`Heath Briggs
`briggsh@gtlaw.com
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`PATENT OWNER:
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`Barbara Wrigley
`bwrigley@oppenheimer.com
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