Paper: 45
`Trials@uspto.gov
`571-272-7822 Entered: September 10, 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: September 10, 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 July 11, 2018, Polaris Innovations Ltd. (“Patent Owner”) filed a
`
`Request for Rehearing (Paper 44, “Request” or “Req. Reh’g”) of our Order
`of June 11, 2018 (Paper 42). Concurrent with its Request for Rehearing,
`Patent Owner filed Exhibits 2016–2020. Those exhibits are papers filed in
`the United States Court of Appeals for the Federal Circuit and an email
`exchange regarding Patent Owner’s request to brief the impact on this case
`of PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. June 7, 2018).
`
`For the reasons provided below, Patent Owner’s Request for
`Rehearing is denied.
`
`II. PROCEDURAL POSTURE
`Petitioner filed a Petition requesting inter partes review of claims 1–8
`
`of U.S. Patent No. 6,850,414 B2 (“the ’414 patent,” Ex. 1001). Paper 2.
`Patent Owner filed a Preliminary Response to the Petition. Paper 6. The
`Board instituted inter partes review of claims 1 and 5–8 on the ground of
`obviousness under 35 U.S.C. § 103(a) over Simpson. Paper 7, 23. The
`Board did not institute a review as to dependent claims 2–4 and did not
`institute on all grounds. Id. at 6, 23. Petitioner filed a Request for
`Rehearing of The Board’s Institution Decision on Claim 4 (Paper 11), which
`was denied (Paper 16).
`
`Subsequent to the institution decision, Patent Owner filed a Motion to
`Amend (“MTA,” Paper 18) seeking to cancel the instituted challenged
`claims and proposing to substitute a newly-presented claim 9 for dependent
`claim 8. Patent Owner characterized the proposed substitute claim 9 as “the
`same as challenged claim 8 in every respect, except that it simply adds the
`limitations of claim 4 . . . .” MTA 1. Patent Owner did not file a
`
`2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`“Response” to the Petition. Subsequently, Petitioner filed an Opposition to
`Patent Owner’s Motion to Amend (Paper 20), and Patent Owner filed a
`Reply to Petitioner’s Opposition to Motion to Amend (Paper 23). Petitioner
`filed a Surreply to Patent Owner’s Motion to Amend (Paper 28). Thereafter
`Patent Owner filed a Brief Addressing Impact of Aqua Products v. Matal1
`(Paper 30). An oral hearing was held on November 14, 2017. See Paper 34
`(Hearing Transcript).
`
`On February 5, 2018, the Board issued a Final Written Decision.
`Paper 35. In that Decision, we determined that Petitioner had demonstrated
`by a preponderance of the evidence that claims 1 and 5–8 of the ’414 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Simpson.
`Additionally, we determined, based on a preponderance of the evidence in
`the entire trial record, that proposed substitute claim 9 is unpatentable, under
`35 U.S.C. § 103(a), as obvious over Simpson and the Intel Specification.
`Patent Owner filed, on March 7, 2018, a request for rehearing of the Final
`Written Decision (Paper 36), which was denied on April 12, 2018
`(Paper 37).
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1352–54 (2018).
`
`On May 8, 2018, Petitioner sent to the Board and Patent Owner an
`email stating, in pertinent part: “Pursuant to the guidance provided by the
`Chief Judge in his recent webinar on SAS, Petitioner requests a conference
`call to ask permission to file an out of time request for reconsideration
`
`
`1 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
`
`3
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`seeking institution and a FWD on non-instituted claim 4 in [this] IPR.”
`Ex. 3002. Later that same day, Patent Owner replied: “Patent Owner is
`prepared to explain why Petitioner’s proposed request should not be
`authorized pursuant to the guidance provided on SAS.” Id. On May 11,
`2018, Judges Barrett and Homere participated in a conference call with the
`parties to discuss the parties’ positions regarding Petitioner’s request. A
`transcript of that call has been filed as Exhibit 1026.
`
`On May 21, 2018, we granted Petitioner’s request to excuse the
`lateness of the filing of a request for rehearing, authorized Petitioner to file a
`request for rehearing, authorized Patent Owner to file an opposition thereto,
`and authorized the parties to file a Joint Motion to Limit the Petition by
`removing specific claims and grounds upon which we did not institute
`review in the original Decision on Institution. Paper 39, 8.
`
`On May 29, 2018, Petitioner filed a request for reconsideration,
`arguing that, in light of the SAS decision, we must issue a final written
`decision, before any appeal of this case, addressing the originally
`non-instituted claims, and particularly claim 4. Paper 40, 1–2. Petitioner
`further argued that we could proceed immediately to a final written decision
`regarding claim 4 because Patent Owner voluntarily placed the subject
`matter of claim 4 at issue via the Motion to Amend and because the parties
`had full opportunity to brief and argue the patentability of that subject
`matter. Id. at 2.
`
`Patent Owner filed a response to Petitioner’s request for
`reconsideration. Paper 41. Patent Owner argued, inter alia, that the Board
`had been divested of jurisdiction and therefore could not grant Petitioner’s
`request and that Petitioner had waived any argument regarding SAS by not
`
`4
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`raising the issue earlier. See id. at 2–3. Patent Owner also argued that, if we
`were to institute a review of claim 4, we must constrain that review to the
`arguments made in the Petition and not consider Petitioner’s arguments
`made in opposition to Patent Owner’s Motion to Amend (which, we note,
`included the subject matter of claim 4). Id. at 5–7.
`
`In our Order of June 11, 2018 (Paper 42)—which is the subject of
`Patent Owner’s present request for reconsideration—we, inter alia, granted
`Petitioner’s request for reconsideration, modified the institution decision to
`include all of the claims challenged in the Petition, determined that both
`parties had fully addressed the subject matter of claim 4, and determined
`that, for reasons set forth in the Final Written Decision, Petitioner had
`demonstrated that claim 4 is unpatentable, but had not demonstrated that
`claims 2 and 3 are unpatentable. See Paper 42, 10–14.
`
`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 requests reconsideration of our decision to include, in
`light of the SAS decision, a review of dependent claim 4. Req. Reh’g 1.
`Patent Owner argues that we should have deemed Petitioner to have waived
`a request for SAS-based relief. Id. at 1–12. Patent Owner further requests,
`should we not exclude claim 4 from review, “that the Board reconsider its
`
`5
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`order that claim 4 is unpatentable, withdraw that order, and authorize Patent
`Owner to file a response to the Petition with respect to the instituted ground
`of review of claim 4.” Id. at 1; see id. at 12–15. Lastly, Patent Owner
`argues that there is good cause to add to the record Exhibits 2016–2019 (and
`presumably Exhibit 2020). Id. at 15.
`
`A. Arguments Regarding Petitioner’s Purported Waiver of a SAS Challenge
`
`Patent Owner argues that Petitioner should have sought SAS-based
`relief prior to the issuance of the SAS decision, and that Petitioner has
`waived a challenge to partial institution. See Req. Reh’g 1–2. Patent Owner
`asserts that we did not consider the Director’s position on waiver as set forth
`in briefing in PGS Geophysical AS v. Iancu, Nos. 2016-2470, -2472, -2474
`(Fed. Cir. 2018) and in Polaris Industries Inc. v. Arctic Cat, Inc.,
`Nos. 2017-1870, -1871, 724 (Fed. Cir. 2018) (Mem.). Id. at 3, 6–7.2
`According to Patent Owner, applying the Director’s position to the facts of
`this case demand that we deem Petitioner to have waived SAS-based relief
`and any challenge to partial institution. Id. at 7–8. Patent Owner also argues
`that the decision in PGS supports its position. Id. at 7–8.
`
`Patent Owner’s reliance on PGS Geophysical is misplaced. That case
`involved “transition issues” pertaining to the treatment of cases that are on
`appeal at the Federal Circuit after the issuance of the SAS decision but that
`arose from the Board under pre-SAS practice. PGS Geophysical, 891 F.3d at
`1360. In PGS, our reviewing court determined that it had jurisdiction over
`the appeal resulting from a partial institution. See id. at 1360–61. The court
`
`2 Decisions issued as PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed.
`Cir. 2018) and Polaris Indus. Inc. v. Arctic Cat, Inc., 724 Fed. Appx. 948
`(Fed. Cir. May 30, 2018) (Mem.).
`
`6
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`noted that no party sought at any time SAS-based relief. Id. at 1359
`(“Neither PGS nor the Director asks for any SAS-based action—whether to
`block our deciding the appeal on the instituted claims and grounds or to
`revive the ‘non-instituted’ claims or grounds. Nor has a request for
`SAS-based relief been filed by WesternGeco, which settled with PGS and
`withdrew from the appeals long ago.”); see also id. at 1362 (with emphasis
`added) (“Even if the Board could be said to have acted “ultra vires” in
`refusing to institute reviews of some claims and grounds—and then
`proceeding to merits decisions concerning the claims and grounds included
`in the instituted reviews—the Board’s error is waivable, not one we are
`required to notice and act on in the absence of an appropriate request for
`relief on that basis.”).
`
`In contrast, the subject case has not been appealed to the Federal
`Circuit, Petitioner sought SAS-based relief from the Board prior to any party
`filing a notice of appeal and prior to the expiration of the time for doing so,
`and the case remains before the Board for consideration, in the first instance,
`of the parties’ arguments regarding SAS-based relief.
`
`Patent Owner’s reliance on the Office’s briefing in appeals before the
`Federal Circuit similarly is misplaced. As noted, no party argued for
`SAS-based relief in PGS, thus, the Office’s statement that “[n]either Patent
`Owner, PGS Geophysical AS, nor Petitioner, WesternGeco LLC, preserved
`an objection to the Patent Trial and Appeal Board’s (‘Board’) partial
`institution” (Ex. 2016, 2), is not inconsistent with our decision in the present
`case where Petitioner raised an objection to partial institution with the Board
`prior to appeal. Likewise, the Office’s position in PGS that “a party
`generally may not challenge an agency decision on a basis that was not
`
`7
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`presented to the agency” (Ex. 2018, 8) is not inconsistent with our
`determination in this case where Petitioner presented to the agency, prior to
`an appeal, a challenge to our partial institution decision and a request for
`SAS-based relief. In Polaris, the Office made a similar statement. Ex. 2020,
`8 (“Under general administrative law principles, a party may not challenge
`an agency decision on a basis that was not presented to the agency in the
`first instance.”). In that regard, the Office identified a request for rehearing
`after final written decision as a juncture where Polaris might have had the
`opportunity to raise the partial institution issue. Id. In this case, Petitioner
`raised the partial institution issue via such a request for reconsideration after
`the Final Written Decision.
`
`Additionally, the Federal Circuit’s decision on the Polaris SAS-based
`relief issue supports the correctness of our determination of no waiver here.
`
`We further conclude that Polaris did not waive its right to
`seek remand by not arguing against partial institution before the
`Board. Precedent holds that a party does not waive an
`argument that arises from a significant change in law during the
`pendency of an appeal. . . . Prior to the Supreme Court’s
`decision in SAS, any attempt to argue against partial institution
`would have been futile under the Board’s regulations and our
`precedent. . . . Polaris’s failure to challenge the Board’s partial
`institution before the Supreme Court’s issuance of SAS is
`therefore excused.
`Polaris Indus. Inc. v. Arctic Cat, Inc., 724 F. App’x 948, 949–50 (Fed. Cir.
`2018) (Mem.) (non-precedential) (citations omitted)
`
`Patent Owner has not identified any matter that we misapprehended or
`overlooked concerning a purported waiver of SAS-based relief.
`
`8
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`B. The Request to Respond Regarding Claim 4
`Patent Owner requests that—in light of our modification of the
`
`institution decision after SAS in order to render a final written decision on all
`the challenged claims—it be authorized to file now a response to the Petition
`regarding claim 4. Req. Reh’g 12 (citing 35 U.S.C. § 316(a)(8)). We
`addressed Patent Owner’s arguments in this regard at pages 10–12 of the
`June 11, 2018, Order (Paper 42), and Patent Owner does not identify any
`matter in that regard that we misapprehended or overlooked.
`
`Although not captioned as a “Response,” Patent Owner did file, at a
`relatively early stage of the trial and after our Decision on Institution
`(Paper 7), a Motion to Amend in response to the Petition, and Patent Owner,
`in that motion, addressed claim 4. MTA (Paper 18); see, e.g., id. at 1
`(referring to the challenge to claim 4 in the Petition and asserting that “the
`substitute claim is the same as challenged claim 8 in every respect, except
`that it simply adds the limitations of claim 4, which the Board has already
`repeatedly determined has not been shown by Petitioner in this case to have
`a reasonable likelihood of being unpatentable.”); id. at 4 (“Every limitation
`of the substitute claim already appears in claim 4 or claim 8, and as just
`discussed, the limitation that already appears in claim 4 has already been
`found to not have been shown by Petitioner in this case to be disclosed or
`suggested by the prior art.”). By reinjecting into this case the limitation of
`dependent claim 4, Patent Owner agreed to a review of that claim, thereby
`effectively instituting a review of that claim. It primarily is Petitioner’s
`arguments and evidence in opposition to Patent Owner’s Motion to Amend
`that established the unpatentability of the subject matter of claim 4. See
`Order of June 11, 2018 (Paper 42) 13–14; Final Written Decision (Paper 35)
`
`9
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`21–27. In other words, the pertinent portion of the record primarily is that
`developed after Patent Owner effectively agreed to a review of the subject
`matter of claim 4 via the Motion to Amend. As discussed in the Order of
`June 11, 2018 (Paper 42) at pages 11–12, Patent Owner was on notice and
`had ample opportunity to address Petitioner’s arguments and evidence
`directed to the subject matter of claim 4. Further, in light of Patent Owner’s
`assertion that the Petition and the record as developed at the time of our
`Institution Decision does not demonstrate the unpatentability of claim 4 (see,
`e.g., Paper 23, 9), we fail to see—and Patent Owner has not indicated—why
`a response to the Petition is now necessary or what more remains to be said.
`
`IV. EXHIBITS 2016–2020
`Patent Owner filed Exhibit 2016–2020 concurrently with its Request
`
`for Rehearing. According to Patent Owner, “[t]hese exhibits are public
`orders (Ex. 2017), public briefs (Exs. 2016 & 2018), or emails between the
`Board and the parties (Ex. 2019).” Req. Reh’g 15; see also Ex. 2020
`(another paper filed in the United States Court of Appeals For The Federal
`Circuit). The filing of these Exhibits, which were not in the record at the
`time of the Order that is the subject of the present Request for Rehearing,
`was not authorized and Patent Owner has not shown good cause for
`admitting the exhibits now. See 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.”). Nonetheless, we will allow the exhibits to
`remain in the record in order to have a complete record for any appeal in this
`case.
`
`10
`
`
`
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`
`
`
`
`PETITIONER:
`David Hoffman
`hoffman@fr.com
`
`Martha Hopkins
`mhopkins@sjclawpc.com
`
`
`
`PATENT OWNER:
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`
`
`11
`
`
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