Paper: 37
`Trials@uspto.gov
`571-272-7822 Entered: April 12, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE,
`and KEN B. BARRETT, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 12, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE,
`and KEN B. BARRETT, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`INTRODUCTION
`I.
`On March 7, 2018, Polaris Innovations Ltd. (“Patent Owner”) filed a
`
`Request for Rehearing (Paper 36, “Request” or “Req. Reh’g”) of our Final
`Written Decision (Paper 35, “Final Dec.”), particularly our denial of Patent
`Owner’s Motion to Amend (Paper 18, “Mot. to Amend”) U.S. Patent
`No. 6,850,414 B2 (“the ’414 patent,” Ex. 1001). Concurrent with its
`Request for Rehearing, Patent Owner filed Exhibit 2015. For the reasons
`provided below, Patent Owner’s Request for Rehearing is denied. We also
`expunge Exhibit 2015.
`
`II. SUGGESTION FOR PANEL EXPANSION
`In its Request, Patent Owner “suggests that the panel ‘suggest to the
`
`Chief Judge the need for the designation of an expanded panel’” before
`consideration of the Request. Req. Reh’g 3 (citing PTAB Standard
`Operating Procedure (SOP) 1).
`
`Standard Operating Procedure 1 identifies some of the reasons for
`which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For
`example, an expanded panel may be appropriate when “[t]he proceeding or
`AIA Review involves an issue of exceptional importance” or when
`“[c]onsideration by an expanded panel is necessary to secure and maintain
`uniformity of the Board’s decisions.” Id. (§ III.A.1, 2).
`
`In this case, the Chief Judge has considered Patent Owner’s
`suggestion for an expanded panel, but has determined that an expanded
`panel is not warranted.
`
`2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`III. ANALYSIS
`A party requesting rehearing bears the burden of showing that the
`
`decision should be modified. 37 C.F.R. § 42.71(d). “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, or a reply.” Id. When rehearing a decision on a
`petition, we review the decision for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`
`Patent Owner’s Motion to Amend proposed to substitute a
`newly-presented claim 9 for dependent claim 8 and sought to cancel all the
`instituted challenged claims. Patent Owner requests reconsideration
`regarding both aspects of the Motion to Amend. Req. Reh’g 1.
`
`A. Arguments Regarding Proposed Substitute Claim 9
`As an initial matter, we note that Patent Owner’s current arguments
`
`regarding the proposed substitute claim focus almost exclusively on policy
`and procedural matters rather than our substantive determination that
`proposed substitute claim 9 is unpatentable. See, e.g., Req. Reh’g 7–8.
`Patent Owner, in effect, argues that it was erroneous for us to consider any
`arguments or evidence not in the Petition in evaluating the patentability of
`the proposed substitute claim. See, e.g., id. at 10 (quoting Final Dec. 21)
`(Patent Owner asserting that “[t]he FWD’s [Final Written Decision’s]
`suggestion that it must always determine whether the substitute claim is
`patentable ‘based on the entirety of the record, including any opposition
`made by the petitioner’” is incorrect in this case.) (citations omitted). In so
`arguing, Patent Owner does not direct our attention to any matter we
`misapprehended or overlooked.
`
`3
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Patent Owner argues: “As for the FWD’s denial of [the Motion to
`
`Amend as to] proposed substitute Claim 9, it misapprehended the Board’s
`sole prior decision on point, Amerigen Pharmaceuticals v. Shire,
`IPR2015-02009, Paper 38 (PTAB Mar. 31, 2017), and the law that it
`applied.” Req. Reh’g 1; see also id. at 9 (arguing that we overlooked or
`misapprehended that decision “and the law it applied”). As to that “law,”
`Patent Owner contends that the Final Decision “cannot be squared with
`Amerigen’s central holding that IPR has no requirement to re-prove the
`patentability of subject matter of non-instituted claims.” Id. at 10; see also
`id. at 2 (characterizing the holding of Amerigen as pertaining to there being
`no requirement for a patent owner to prove original, non-amended claims are
`patentable). Patent Owner, however, does not point to any portion of the
`Final Decision that could be construed as placing a requirement on Patent
`Owner to prove patentability. Cf. Final Dec. 7, 15, 21 (indicating the
`applied legal framework where the burden is not on the patent owner to
`prove patentability). We addressed, in the Final Decision, Patent Owner’s
`arguments regarding Amerigen, Final Dec. 19–20, and determined that
`“Amerigen does not, as Patent Owner implies, establish a procedural rule
`that precludes a petitioner from opposing a motion to amend,” id. at 20.
`Contrary to Patent Owner’s arguments, we did not misapprehend or
`overlook its arguments; rather, we disagreed with Patent Owner’s position.
`We note that merely disagreeing with our analysis or conclusions does not
`serve as a proper basis for a rehearing. It is not an abuse of discretion to
`provide analysis or conclusions with which a party disagrees.
`
`Patent Owner argues, with emphasis added: “The FWD further
`overlooks or misapprehends contrary Board practice and law in post-grant
`
`4
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`inter partes reexamination, which, as Patent Owner and the Federal Circuit’s
`judges have explained, should guide the Board in interpreting the
`requirements for amending patents in IPR.” Req. Reh’g (citing
`Paper 33, 27). Similarly, Patent Owner argues that the “conclusion” reached
`in the Final Decision “is just the opposite of what happens in inter partes
`reexamination.” Id. at 12 (emphasis added) (citing Paper 33, 27-28; Paper
`34, 98:19-99:10). The cited sources of this argument, Papers 33 and 34, are,
`respectively, Patent Owner’s demonstrative exhibits for the hearing and the
`hearing transcript. The Request does not identify where in the record this
`matter—concerning inter partes reexamination practice as opposed to that of
`inter partes review—was raised in a brief or other substantive paper. Thus,
`this appears to be improper argument raised for the first time at the hearing1
`or appearing for the first time in a demonstrative exhibit slide that was not
`even discussed at the hearing.2 We could not have, in the Final Decision,
`overlooked or misapprehended briefing made for the first time in the present
`Request and after the issuance of the Final Decision.
`
`Patent Owner argues that “[t]he FWD’s holding not only
`misapprehends past reexamination practice, Board decisions, and Federal
`Circuit guidance: it misapprehends IPR’s statutory structure” and that “the
`
`
`1 The cited portion of the hearing transcript indicates that the few sentences
`contained little argument and were more of an invitation for the panel to
`explore the matter on its own. See Hearing Tr. (Paper 34), 98:19–21 (“So
`I’m almost out of time, but just quickly, they say, well, you should actually
`look to inter partes reexamination proceedings as the backdrop.”).
`2 We note that Patent Owner was given the opportunity to provide the last
`word during briefing, and did file a paper titled “Patent Owner’s Brief
`Addressing Impact of Aqua Products v. Matal” (Paper 30).
`5
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`FWD overlooks the unfairness of its rule to patent owners.” Req. Reh’g 13,
`15 (citing Paper 23 (Patent Owner’s Reply to Petitioner’s Opposition to
`Motion to Amend) and Paper 33 (Patent Owner’s demonstrative exhibits)).
`These arguments appear to be a reiteration of Patent Owner’s assertions
`premised on the incorrect belief that we ruled conclusively on patentability
`of a dependent claim at the institution phase, or, as characterized in the
`Request, the purported “exclusion of non-instituted Claim 4 from trial.” Id.
`at 15; see id. at 2 (referring to “the patentability of the subject matter of
`non-instituted claims, notwithstanding that it had been excluded from trial at
`institution.”). Similarly, Patent Owner is using this Request as an
`opportunity to reargue its position that Petitioner should have presented all
`its arguments against the Motion to Amend in the Petition, prior to
`institution of a trial and well before the Motion was filed. See id. at 10, 13,
`14, 15 (repeatedly referring to “unpetitioned attacks” (or similar) on the
`substitute claim proposed in the later-filed Motion to Amend). To the extent
`that these arguments were raised in substantive briefs, we considered those
`arguments in reaching the Final Decision. See Final Dec. 16–21. Patent
`Owner has not directed our attention to any briefed argument in this regard
`that we overlooked or misapprehended. Any of these arguments not made in
`substantive briefing could not have been overlooked or misapprehended.
`See Req. Reh’g 14 (citing the hearing transcript (Paper 34) and Exhibit 2015
`filed concurrently with the present Request for Rehearing); id. at 15 (citing
`Paper 33 (Patent Owner’s demonstrative exhibits)).
`
`6
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`B. Arguments Regarding the Proposed Cancelation of
`All the Challenged Instituted Claims
`Patent Owner argues that we “erred in denying the Motion to
`
`Amend’s noncontingent request to cancel Claims 1 and 5-8.” Req. Reh’g 3.
`Patent Owner faults us for first determining—before moving on to
`consideration of Patent Owner’s Motion to Amend—whether Petitioner had
`met its burden to prove the unpatentability of the challenged and instituted
`claims. See id.3 In effect, Patent Owner faults us for not treating the two
`components of the single proposed amendment4 as severable and for not
`analyzing the motion in a piecemeal fashion.
`
`Patent Owner has not identified where the matter was raised such that
`we misapprehended or overlooked it. Specifically, Patent Owner does not
`identify where it previously stated, argued, represented, or requested that the
`cancelation portion of the Motion to Amend be treated as “noncontingent” or
`as severable from the portion of the motion seeking to substitute a new
`claim. Contra Mot. to Amend 2 (listing together “the proposed claim
`cancellations and amendments . . . .”); id. at 5 (concluding with simply
`“Patent Owner respectfully requests that its Motion To Amend be granted.”);
`Paper 33, Slide 7 (Patent Owner’s demonstrative exhibits for the hearing
`include a slide titled “Issues For Oral Argument” that states “Motion To
`
`
`3 In the Final Decision, we determined that the claims Patent Owner seeks to
`have canceled are unpatentable. Final Dec. 27. 35 U.S.C. § 318 provides:
`“If the Patent Trial and Appeal Board issues a final written decision . . . and
`the time for appeal has expired or any appeal has terminated, the Director
`shall issue and publish a certificate canceling any claim of the patent finally
`determined to be unpatentable . . . .”
`4 Cf. 37 C.F.R. § 42.121 (c) (providing for an additional motion to amend in
`certain circumstances).
`
`7
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Amend: . . . cancel instituted Claims 1, 5-8, add substitute Claim 9.”).
`Further, Patent Owner, in addition to seeking cancelation of independent
`claim 1, presented arguments that independent claim 1 was patentably
`distinct over the prior art of record. Reply to Petitioner’s Opposition to
`Motion to Amend (Paper 23) 10–12. Thus, in light of the ambiguous record,
`we opted to analyze Petitioner’s case regarding patentability of the
`challenged claims, including consideration of Patent Owner’s arguments
`directed to the patentability of independent claim 1, before reaching Patent
`Owner’s Motion to Amend. Final Dec. 11. We thereafter denied the Motion
`to Amend because the proposed substitute claim was not patentable. Id.
`at 27. Where Patent Owner did not request separate treatment of the
`cancelation and substitution portions of the Motion, we could not have
`misapprehended or overlooked such a request.
`
`Patent Owner argues that we “overlooked 35 U.S.C. § 316(d).” Req.
`Reh’g at 1. The basis for Patent Owner’s assertion is not readily clear. That
`provision provides that a patent owner may file a motion to amend to cancel
`and/or substitute claims. Such a motion was filed and considered, and thus
`we did not overlook Section 316(d).
`
`Patent Owner argues that our treatment of the Motion to Amend
`“contradict[s] all prior Board decisions on point.” Req. Reh’g 3.
`Specifically, Patent Owner argues “[i]n every such previous case, no matter
`what the stage of trial and regardless whether the patent owner filed a
`response to the petition, the Board has granted the patent owner’s request
`
`8
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`and canceled the claims without entering adverse judgment.”5 Id. at 5
`(citing, inter alia, IPR2016-01600, Paper 35; IPR2016-01186, Paper 61).
`Patent Owner’s own characterization of those cases as having “considered
`noncontingent requests in motions to amend to cancel fewer than all claims
`for trial” (id. at 4) highlights the distinction between those cases and the
`situation before us. See, e.g., IPR2016-01600, Paper 16 (clearly stating:
`“This motion to amend is not contingent on a determination that the original
`claims are unpatentable.”); IPR2016-01186, Papers 29, 61 (granting “a
`non-contingent Motion to Amend . . . requesting [only] cancellation of
`claims 1, 3, 5, and 7.”). As mentioned, Patent Owner never clearly and
`unambiguously identified the cancelation portion of its Motion as
`“noncontingent.”
`
`Similarly, Patent Owner misplaces reliance on Liberty Mut. Ins. v.
`Progressive Cas. Ins., CBM2013-00002, Paper 27 at 2 (PTAB May 14,
`2013) for the proposition that “the Board has consistently held that requests
`to cancel some of the triable claims ‘will be entered, as it will reduce issues
`and streamline the trial,’ and render the patentability of the canceled claims
`
`
`5 In apparent contradiction to its implied assertion that the two aspects of its
`Motion to Amend stand independently of each other, Patent Owner’s
`arguments in the Request suggest it strategically tied together the proposed
`substitute claim to the cancelation of all the instituted claims in an attempt to
`avoid its actions being construed as a request for adverse judgment. See,
`e.g., Req. Reh’g 6–7 (implying that an entry of “adverse judgment” is only
`appropriate where the motion seeks cancelation of all challenged claims
`without proposing a substitute claim); see also 37 C.F.R. § §42.73(b)(2)
`(“Actions construed to be a request for adverse judgment include . . .
`[c]ancellation or disclaimer of a claim such that the party has no remaining
`claim in the trial.”).
`
`9
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`moot by taking the canceled claims entirely out of the case.” Req. Reh’g 4.
`The cited Paper 27 of Liberty Mutual is a summary of a conference call
`where Patent Owner explicitly indicated to the panel the desire to
`immediately cancel three claims out of the fifty-nine challenged and where
`no substitute claim was being proposed. Liberty Mut. Ins. v. Progressive
`Cas. Ins., CBM2013-00002, Papers 27, 28 (the motion itself). In the case
`before us, Patent Owner did not simply move to immediately cancel claims,
`but tied to that a request to add a substitute claim, and then continued to
`maintain, after filing the Motion to Amend, that independent claim 1—a
`claim requested to be canceled—was patentably distinct over the prior art.
`We did not abuse our discretion in considering such arguments.
`
`IV. EXHIBIT 2015
`Patent Owner filed Exhibit 2015 concurrently with its Request for
`
`Rehearing. That exhibit appears to be an article published on the internet
`and is dated March 5, 2018, a month after the issuance of the Final Decision.
`Patent Owner cites the exhibit as “press coverage” regarding briefing being
`allowed by other panels in other cases involving motions to amend. Req.
`Reh’g 14. The filing of Exhibit 2015, which was not in the record at the
`time of the Final Decision, is unnecessary to deciding the merits of Patent
`Owner’s Request for Rehearing, and Patent Owner has not shown good
`cause for admitting the exhibit now. For these reasons, we expunge
`Exhibit 2015 pursuant to our authority under 37 C.F.R. § 42.7(a). See also
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012) (“Evidence not already of record at the time of the decision will not be
`admitted [with a Rehearing Request] absent a showing of good cause.”).
`
`10
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`FURTHER ORDERED that Exhibit 2015 is expunged.
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`For PETITIONER:
`David Hoffman
`hoffman@fr.com
`
`Martha Hopkins
`mhopkins@sjclawpc.com
`
`
`
`For PATENT OWNER:
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`
`
`12
`
`
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