Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 23
`Entered: February 24, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
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`
`Tel: 571-272-7822
`
`Paper 23
`Entered: February 24, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`IPR2016-01462
`Patent 8,324,295 B2
`
`INTRODUCTION
`
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) requesting inter partes review of claims 1–27 of U.S. Patent No.
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`8,324,295 B2 (Ex. 1001, “the ’295 patent”). Toyota Motor Corporation
`
`(“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”).
`
`On February 9, 2017, we instituted trial to determine whether claims 1–9,
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`13–20, and 22–27 are unpatentable as obvious. Paper 14 (“Dec.”); see Paper
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`16 (correcting list of claims on which trial was instituted). We did not
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`institute trial on claims 10–12 or 21, because we determined that Petitioner
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`did not demonstrate “a reasonable likelihood that the petitioner would
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`prevail with respect to” those claims, as required by 35 U.S.C. § 314(a).
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`Dec. 18–19, 23–24. Petitioner now requests rehearing of our decision not to
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`institute trial on claims 10–12 and 21. Paper 21 (“Request”).
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`We will grant a request for rehearing of a petition decision if the
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`requesting party demonstrates “an abuse of discretion” in the decision.
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`37 C.F.R. § 42.71(c). However, we will grant a request for rehearing only if
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`that party also “specifically identif[ies] . . . the place where each matter [that
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`we misapprehended or overlooked] was previously addressed.” Id.
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`§ 42.71(d). After considering Petitioner’s request for rehearing, our
`
`decision, and the evidence currently of record, we determine that Petitioner
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`has not demonstrated an abuse of discretion. Accordingly, we deny the
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`request for rehearing.
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`ANALYSIS
`
`Claims 10–12 and 21 of the ’295 patent each recite a limitation
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`requiring the presence of a UV absorber chosen from the following Markush
`
`group: “C7-9 ester of [3-2hbenzotriazol-2-yl)-5-(1,1-dimethylethyl)-4-
`
`2
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`
`hydroxyphenyl)]-propionic acid; 2-(2H-benzotriazol-2-yl)-4,6-
`
`ditertpentylphenol; 2-(1-methyl-1-phenylethyl)-4-(1,1,3,3-tetramethylbutyl)-
`
`6-(benzotriazol-2-yl)phenol; methyl 3-[3-(benzotriazol-2-yl)-5-tert-butyl-4-
`
`hydroxyphenyl]propanoate; or 2-(4-Benzoyl-3-hydroxyphenoxy)ethyl
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`acrylate.” Ex. 1001, 24:3–10, 24:46–53. Petitioner argued in the Petition
`
`that these claims were obvious over the combination of McDaniel ’853 and
`
`Fritzsche in part because (1) Fritzsche teaches the use of a commercial
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`product called Tinuvin 384, (2) Tinuvin 384 has “the same active chemical
`
`composition as” Tinuvin 384-2, and (3) an unspecified one of the members
`
`of the Markush group recited in claims 10–12 and 21 is Tinuvin 384-2. Pet.
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`59–61. We found Petitioner’s arguments insufficient to show a reasonable
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`likelihood that Petitioner would prevail in showing that the prior art teaches
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`or suggests the use of one of the members of the Markush group. Dec. 18–
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`19. Although we agreed that Petitioner had directed us to sufficient record
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`evidence to support its arguments that Fritzsche taught the use of Tinuvin
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`384 and that Tinuvin 384-2 was one of the members of the Markush group,
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`we determined that Petitioner had not “identif[ied] sufficient record evidence
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`to support its argument that Tinuvin 384 and Tinuvin 384-2 have the same
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`active chemical composition.” Id.
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`Petitioner now argues that we “overlooked evidence sufficiently
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`identified in the Petition supporting [Petitioner’s] argument that Tinuvin 384
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`and Tinuvin 384-2 have the same active chemical composition and that . . .
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`this would have been known to a person of ordinary skill in the art.”
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`Request 8–9. Specifically, Petitioner argues that we overlooked a citation in
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`the Petition to evidence that establishes the chemical structure of Tinuvin
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`384 and that we failed to compare this established chemical structure to the
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`3
`
`
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`IPR2016-01462
`Patent 8,324,295 B2
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`chemical structure of Tinuvin 384-2. Id. at 6–8 (citing Pet. 51; Ex. 1010,
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`79:13–14).
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`We are not persuaded that we overlooked this evidence. Instead,
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`Petitioner did not bear its burden to direct us to this evidence. Petitioner
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`presented the relevant discussion of the asserted unpatentability of claims
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`10–12 and 21 on pages 59–61 of the Petition. On these pages, Petitioner
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`offered no support by citing Exhibit 1010, or any other record evidence, for
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`its argument that “[a] POSITA will recognize that TINUVIN® 384 is well
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`known to have the same active chemical composition as TINUVIN® 384-
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`2.” Pet. 60. Petitioner argues now that, despite such failure to offer any
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`support in the vicinity of its statement, the Board should have realized that
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`Petitioner offered support for the statement nine pages earlier, on page 51 of
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`the Petition. This argument fails to recognize Petitioner’s burden to “specify
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`where each element of the claim is found in the prior art patents or printed
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`publications relied upon [to show unpatentability].” 37 C.F.R.
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`§ 42.104(b)(4). It is Petitioner’s job, not the Board’s, to explain why the
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`prior art renders the challenged claims unpatentable. Accordingly, the mere
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`fact that the Petition made an argument and also offered some evidentiary
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`support for that argument is, in the absence of any connection drawn in the
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`Petition between the argument and the support, irrelevant to the question of
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`whether the Board abused its discretion by overlooking the support.
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`In any event, the “support” to which Petitioner now directs us is a
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`string citation to 16 separate portions of Fritzsche, presented as support for
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`the generic statement that Fritzsche “teaches . . . polymer resin, a surfactant,
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`a non-aqueous organic solvent, a sterically hindered amine, and a UV
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`absorber and a crosslinker to produce a curable material composition.” Pet.
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`4
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`
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`IPR2016-01462
`Patent 8,324,295 B2
`
`51 (citing Ex. 1010, 77:27–28, 78:5–6, 77:34, 78:11, 77:30, 79:6, 78:13,
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`79:5, 77:29, 78:8, 29:18–19, 30:19-20, 31:1–3, 77:29, 78:8, 79:13–14).
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`Petitioner fails to explain why the Board should have recognized from the
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`generic statement—which does not mention Tinuvin 384 or Tinuvin 384-2—
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`that one of the 16 portions of the citation string might be relevant to the
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`question of whether the two Tinuvin products have the same active chemical
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`composition. When the Petition fails to explain the significance of certain
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`record evidence, the Board does not abuse its discretion by failing to
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`recognize the significance of that same evidence.
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`CONCLUSION
`
`Upon consideration of Petitioner’s request for rehearing, our decision,
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`and the evidence currently of record, we determine that Petitioner has not
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`demonstrated an abuse of discretion in our decision. Accordingly, we deny
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`the request for rehearing.
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`
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`It is hereby
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`ORDER
`
`ORDERED that the request for rehearing is denied.
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`5
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`
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`IPR2016-01462
`Patent 8,324,295 B2
`
`PETITIONER:
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons@ivcpatentagency.com
`
`
`
`Jonathan D. Hurt
`MCDANIEL & ASSOCIATES, PC
`jhurt@technologylitigators.com
`
`
`
`Mark A.J. Fassold
`Jorge Mares
`WATTS GUERRA LLP
`mfassold@wattsguerra.comjmares@wattsguerra.com
`
`
`
`PATENT OWNER:
`
`Joshua A. Lorentz
`Richard Schabowsky
`John D. Luken
`Oleg Khariton
`DINSMORE & SHOHL LLP
`joshua.lorentz@dinsmore.comrichard.schabowsky@dinsmore.com
`
`
`
`
`
`6
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`
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