`571-272-7822
`
`
`
`
` Paper 11
` Entered: January 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INGURAN, LLC d/b/a SEXING TECHNOLOGIES,
`Petitioner,
`
`v.
`
`PREMIUM GENETICS (UK) LTD.,
`Patent Owner.
`____________
`
`Case PGR2015-00017
`Patent 8,933,395 B2
`
`
`
`Before KEN B. BARRETT, KRISTEN L. DROESCH,
`TRENTON A. WARD, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`PGR2015-00017
`Patent 8,933,395 B2
`
`I. INTRODUCTION
`Inguran, LLC d/b/a/ SEXING Technologies (“Petitioner”) filed a
`Petition for post-grant review of claims 1–14 (“the challenged claims”) of
`U.S. Patent No. 8,933,395 B2 (“the ’395 Patent”). Paper 1 (“Petition” or
`“Pet.”). Premium Genetics Ltd. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). On December 22, 2015, we instituted
`post-grant review of the challenged claims of the ’395 Patent. Paper 8
`(“Decision,” or “Dec.”). Patent Owner filed a Request for Rehearing (Paper
`10, “Req. Reh’g”) of our Decision on institution.
`
`II. STANDARD OF REVIEW
`In its request for rehearing, the dissatisfied party must identify,
`specifically, all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was addressed previously.
`37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a
`petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
`
`III. DISCUSSION
`Patent Owner requests rehearing of the portion of our Decision
`instituting review of claim 1 on the grounds of anticipation by Mueth (Ex.
`1008), and by Frontin-Rollet (Ex. 1007). Req. Reh’g 1; see Dec. 23–24, 27–
`29, 35. Patent Owner contends claim 1 is entitled to an effective filing date
`at least as early as September 3, 2004 because “the Board considered and
`rejected Petitioner’s argument that the ’969 Application did not disclose
`claim 1,” and “the parties agree that the ’969 Application and ’597
`Application specifications are identical.” Req. Reh’g 1–2 (citing Dec. 11,
`13–14). Patent Owner argues the decision to institute trial on these grounds
`was legally erroneous because Mueth and Frontin-Rollet do not qualify as
`
`2
`
`
`
`PGR2015-00017
`Patent 8,933,395 B2
`prior art to claim 1. Id. Patent Owner asserts the publication dates and
`effective filing dates of Mueth and Frontin–Rollet are after September 3,
`2004. Id. at 2–3 (citing Ex. 1008, 1; Ex. 1007, 1; Ex. 2002).
`
`We are not persuaded by Patent Owner’s arguments because Patent
`Owner does not identify where these arguments, specifically, were raised
`previously. See Req. Reh’g 1–3; 37 C.F.R. § 42.71(d). We cannot overlook
`or misapprehend arguments that were not raised previously.
`
`Moreover, we clarify that in addressing Petitioner’s standing, our
`Decision stated we were “not persuaded that claim 1 is not entitled to an
`effective filing date before March 16, 2013.” Dec. 14. In reaching this
`conclusion, our Decision addressed the specific limitations of claim 1 argued
`in the Petition and Preliminary Response regarding standing for post-grant
`review on the basis of claim 1. See Pet. 12–18, Prelim. Resp. 7–13; Dec. 8–
`14. For this reason, our Decision cannot be read fairly as affirming the
`entitlement of claim 1 to an effective filing date before March 16, 2013 (e.g.,
`Sept. 4, 2004). See generally Dynamic Drinkware, LLC v. National
`Graphic, Inc., 800 F.3d 1375, 1380–81 (Fed. Cir. 2015); Power Oasis, Inc.
`v. T-Mobile USA, Inc., 522 F.3d 1299, 1304–05 (Fed. Cir. 2008) (both cases
`discussing whether there is a presumption that patent claims are entitled to
`the effective filing date of an earlier application). In sum, we did not reach
`the issue now raised by Patent Owner.
`
`III. DECISION ON REHEARING
`Petitioner’s request for rehearing is denied.
`
`
`
`3
`
`
`
`
`
`
`
`PGR2015-00017
`Patent 8,933,395 B2
`PETITIONER:
`Kirt S. O’Neill
`Daniel L. Moffett
`George Andrew Rosbrook
`
`AKIN GUMP STRAUSS HAUER & FELD LLP
`koneill@akingump.com
`dmoffett@akingump.com
`arosbrook@akingump.com
`
`PATENT OWNER:
`Jeffrey P. Kushan
`Mathew S Jorgenson
`Peter Choi
`
`SIDLEY AUSTIN LLP
`
`jkushan@sidley.com
`mjorgenson@sidley.com
`peter.choi@sidley.com
`
`
`
`4
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