Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 15
`Entered: October 13, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`____________
`
`
`
`IPR2020-00919
`Patent 9,901,123 B2
`____________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL, and
`BRIAN D. RANGE, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request on Rehearing of
`Decision Denying Institution
`37 C.F.R. § 42.71(d)
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 15
`Entered: October 13, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`____________
`
`
`
`IPR2020-00919
`Patent 9,901,123 B2
`____________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL, and
`BRIAN D. RANGE, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request on Rehearing of
`Decision Denying Institution
`37 C.F.R. § 42.71(d)
`
`
`
`
`IPR2020-00919
`Patent 9,901,123 B2
`
`
`INTRODUCTION
`I.
`On November 16, 2020, the Board issued a Decision denying
`institution of an inter partes review of claims 27–30 of U.S. Patent
`No. 9,901,123 B2 (“the ’123 patent,” Ex. 1001). Paper 9 (“Decision” or
`“Dec.”). In the Decision, we evaluated the factors set out in Apple, Inc. v.
`Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”) and exercised our discretion under 35 U.S.C. § 314(a) to deny
`institution in view of a parallel proceeding involving the ’123 patent at the
`U.S. International Trade Commission (“ITC”). Dec. 6–13. On July 21,
`2022, Philip Morris Products, S.A. (“Petitioner”) filed a Request for
`Rehearing of that Decision (Paper 12, “Request” or “Req.”), and
`concurrently requested review by the Precedential Opinion Panel (Ex. 3001,
`“POP Request”). On July 26, 2022, the Precedential Opinion Panel
`dismissed the POP Request as untimely. Ex. 3002.
`For the reasons that follow, Petitioner’s Request is denied.
`II. DISCUSSION
`The applicable standard for a request for rehearing is set forth in
`37 C.F.R. § 42.71(d), which provides:
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The
`burden of showing that a decision should be modified lies with
`the party challenging the decision. The request 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, a reply, or a sur-reply. A
`request for rehearing does not toll times for taking action. Any
`request must be filed:
`…
`
`2
`
`
`
`IPR2020-00919
`Patent 9,901,123 B2
`
`
`(2) Within 30 days of the entry of a final decision or a decision
`not to institute a trial.
`A request for rehearing in this proceeding was due within 30 days of
`the November 16, 2020 date of entry of the Decision. Petitioner’s Request
`was not filed within the rehearing period established by Rule 42.71(d) and is
`untimely.
`Petitioner argues that “[a]lthough the standard thirty-day time limit for
`rehearing requests on decisions denying institution has passed, the Board
`may waive such requirements without any showing.” Req. 4 (citing
`37 C.F.R. § 42.5(b)). Petitioner also argues that the Board can excuse a late
`action upon a showing of good cause, or upon a Board determination that
`consideration on the merits would be in the interests of justice, and that
`“both good cause and the interests of justice warrant rehearing.” Id. at 4–5
`(citing 37 C.F.R. § 42.5(c)(3)).
`In particular, Petitioner points to a guidance Memorandum1 issued on
`June 21, 2022 by the Director of the United States Patent and Trademark
`Office that Petitioner argues “confirmed that the Fintiv factors do not apply,
`and have never applied, to parallel investigations at the [ITC].” Req. 1
`(citing Memorandum, 5–6). Petitioner argues that, because the
`Memorandum provides that “the ‘plain language of the Fintiv factors’ does
`not apply to the ITC,” and the Board “relied on the existence of a parallel
`ITC action to justify its denial,” the Board would have instituted review but
`for its misapplication of Fintiv. Req. 5–7.
`
`
`1 Available at: https://www.uspto.gov/sites/default/files/documents/interim_
`proc_discretionary_denials_aia_parallel_district_court_litigation_memo_
`20220621_.pdf
`
`3
`
`
`
`IPR2020-00919
`Patent 9,901,123 B2
`
`
`The Memorandum, however, specifically states that it “applies to all
`proceedings pending before the Office.” Memorandum, 9 (emphasis added);
`see also OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064,
`Paper 102 at 49 n.19 (PTAB Oct. 4, 2022) (precedential) (Director’s
`decision “should not be treated as an endorsement of retroactive application
`of [the] Memorandum to institution decisions made before it issued.”). This
`proceeding has not been pending before the Office since at least
`December 16, 2020, the last day Petitioner could have filed a timely request
`for rehearing of our Decision. Therefore, the Memorandum does not apply
`to this proceeding. Because Petitioner’s arguments in its Request are
`premised on the Memorandum, Petitioner does not establish that there is
`good cause, or that it would be in the interests of justice, to re-open this
`long-closed proceeding. Accordingly, we decline to waive the filing
`requirements of Rule 42.71(d)(2), or to excuse the late filing of the Request.
`See 37 C.F.R. §§ 42.5(b), (c)(3).
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`4
`
`
`
`IPR2020-00919
`Patent 9,901,123 B2
`
`PETITIONER:
`Jonathan M. Strang
`Matthew J. Moore
`Inge A. Osman
`Christopher W. Henry
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`matthew.moore@lw.com
`inge.osman@lw.com
`christopher.henry@lw.com
`
`
`PATENT OWNER:
`
`David M. Maiorana
`Anthony M. Insogna
`Kenneth S. Luchesi
`Geoffrey K. Gavin
`Joshua R. Nightingale
`George N. Phillips
`JONES DAY
`dmaiorana@jonesday.com
`aminsogna@jonesday.com
`kluchesi@jonesday.com
`ggavin@jonesday.com
`jrnightingale@jonesday.com
`gphillips@jonesday.com
`
`
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
