Trials@uspto.gov
`571-272-7822
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`Paper 13
`Date: June 26, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`Petitioner,
`
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00442
`Patent 8,573,374 B2
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`Paper 13
`Date: June 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`VALEO NORTH AMERICA, INC. and VALEO EMBRAYAGES,
`Petitioner,
`
`v.
`
`SCHAEFFLER TECHNOLOGIES AG & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2017-00442
`Patent 8,573,374 B2
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`
`IPR2017-00442
`Patent 8,573,374 B2
`
`
`
`I. INTRODUCTION
`
`A. Summary
`
`
`
`Valeo North America, Inc. and Valeo Embrayages (“Petitioner”) filed
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`a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1, 3–
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`5, 8, 10, and 14–16 of U.S. Patent No. 8,573,374 B2 (Ex. 1101, “the ’374
`
`patent”). Schaeffler Technologies AG & Co. KG (“Patent Owner”) filed a
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`Preliminary Response. Paper 7, “Prelim. Resp.” Petitioner also filed a
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`Reply to the Preliminary Response (Paper 9, “Pet. Reply”), to which the
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`Patent Owner filed a Sur-Reply (Paper 12, “PO Sur-Reply”).1
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`An inter partes review may not be instituted unless the information
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`presented in the Petition shows “there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
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`conclude that the information presented in the Petition and Patent Owner
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`Preliminary Response does not establish a reasonable likelihood that
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`Petitioner will prevail in showing the unpatentability of claims 1, 3–5, 8, 10,
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`and 14–16. Accordingly, we do not institute an inter partes review as to
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`those claims based on the Petition.
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`B. Related Matters
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`The ’374 patent is the subject of another petition seeking institution of
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`an inter partes review: IPR2017-00441. Pet. 1; Paper 3, 2.2
`
`
`1 The Petitioner’s Reply and the Patent Owner’s Sur-Reply were authorized
`by the panel. Paper 8.
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`2 A Decision on Institution in IPR2017-00441 is entered concurrently with
`the present Decision.
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`2
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`
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`IPR2017-00442
`Patent 8,573,374 B2
`
`
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`C. The ’374 patent
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`
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`The ’374 patent is titled “Hydrodynamic Torque Converter.” Ex.
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`1101, (54). The ’374 patent describes the invention as relating “to a
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`hydrodynamic torque converter having an impeller wheel, a turbine wheel
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`and an oscillation damper which is accommodated in the converter housing,
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`and a converter lockup clutch.” Id. at (57). Such torque converters are
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`particularly used in vehicle drivetrains, between an internal combustion
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`engine and transmission. Id. at 1:23–25.
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`The figure of the ’374 patent is reproduced below:
`
`
`
`3
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`
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`IPR2017-00442
`Patent 8,573,374 B2
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`
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`The figure above “shows a hydrodynamic torque converter disposed
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`
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`about a rotation axis in a half-sectional view.” Id. at 3:52–55. Torque
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`converter 1 includes torsional vibration absorber 17, torsional vibration
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`damper 16, damper stage 14, and damper stage 15. Id. at 4:37–38, 5:3–5.
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`The ’374 patent characterizes damper stages 14, 15 as components of a
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`“multi-function damper” that are connected with one another by “single-
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`piece disk part 25.” Id. at 4:37–42. The ’374 patent also describes the
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`following: “[t]hrough the single-piece connection of the mounting part 37
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`with the input part 35 of the damper stage 15 and the output part 34 of the
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`damper stage [14] 3 by means of the rivets 33 is the centrifugal force
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`pendulum 38 assigned parallel to both damper stages.” Id. at 5:11–16.
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`D. Claims
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`Claim 1 is independent. Claims 3–5, 8, 10, and 14–16 ultimately depend
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`from claim 1. Claim 1 is reproduced below:
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`A hydrodynamic torque converter (1) with a turbine (7)
`1.
`driven by an impeller (6) as well as housing (3) in which a
`torsional vibration damper (16) with multiple of damper stages
`(14, 15), a torsional vibration absorber (17) and a lock-up clutch
`(13) are additionally installed, wherein a first damper stage (14)
`and a second damper stage (15) are disposed between the lock-
`up clutch (13) and an output hub (12), the second damper stage
`(15) is disposed between the turbine (7) and the output hub (12)
`and the torsional vibration absorber (17) is parallel to both
`damper stages (14, 15).
`
`
`
`
`
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`3 Although the ’374 patent lists reference character “15” with respect to this
`damper stage, it is evident from the figure that such is a typographical error
`and that reference character “14” was intended.
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`4
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`
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`IPR2017-00442
`Patent 8,573,374 B2
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`
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`E. The Applied References
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`
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`Petitioner relies on the following references:
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`Reference
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`PCT Publication No. WO 2009/067987
`to Degler et al. (“Degler”)
`
`Wolfgang Reik, The Centrifugal
`Pendulum Absorber Calming Down the
`Drivetrain, CTI Symposium (“Reik”)
`
`
`Date
`
`
`June 2009
`
`
`May 2009
`
`Exhibit
`No.
`
`1103
`
`
`1105
`
`F. Asserted Grounds of Unpatentability
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`Petitioner challenges claims 1–3, 8, 10, and 14–16 under 35 U.S.C.
`
`§ 102(a) based on the following grounds:
`
`Reference
`
`Degler
`
`Reik
`
`
`Challenged Claims
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`1–3, 8, 10, and 14–16
`
`1–3, 8, 10, and 14–16
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`
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`II. ANALYSIS
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`In this Petition, Petitioner offers two grounds of unpatentability that
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`are each premised on the same underlying theory. Namely, that theory is
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`that the “Patent Owner is precluded by 35 U.S.C. § 119(c) from claiming
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`priority to certain subject matter also disclosed in Degler’s priority
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`reference.” Pet. 13; Pet. 28. Because of that alleged preclusion, Petitioner is
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`5
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`IPR2017-00442
`Patent 8,573,374 B2
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`of the view that each of Degler and Reik is available as a prior art reference
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`
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`that anticipates claims 1, 3–5, 8, 10, and 14–16 of the ’374 patent. Id.4
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`Section 119(c) of 35 U.S.C. reads:
`
`(c) In like manner and subject to the same conditions and
`requirements, the right provided in this section may be based
`upon a subsequent regularly filed application in the same foreign
`country instead of the first filed foreign application provided that
`any foreign application filed prior to such subsequent application
`has been withdrawn, abandoned, or otherwise disposed of,
`without having been laid open to public inspection and without
`leaving any rights outstanding, and has not served, nor thereafter
`shall serve, as a basis for claiming a right of priority.
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`The core nature of Petitioner’s contentions rests on the caveat of
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`
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`§ 119(c) that a “subsequent regularly filed [foreign] application” can only be
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`the basis for a claim of priority for a U.S. application if, among other
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`conditions, any foreign application filed prior to such subsequent regularly
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`filed application “has not served, nor thereafter shall serve, as a basis for
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`claiming a right of priority” for any other application.
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`
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`Petitioner’s basis for the position that it takes is somewhat convoluted.
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`In a nutshell, Petitioner seemingly is of the view that the ’374 patent could
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`have claimed priority to the German priority document underlying Degler
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`because all three documents have the same assignee, although the ’374
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`patent does not have any inventors in common with Degler and the Degler
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`priority document.5 Along that line of thinking, Petitioner advances the
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`proposition that because the Degler priority document served as a basis for a
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`4 There is no dispute that Degler and Reik would not be available as prior art
`otherwise.
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`5 That German priority document—DE 10 2007 057 448 (Ex. 1104) (Degler
`priority document”)—is dated November 29, 2007.
`
`6
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`
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`IPR2017-00442
`Patent 8,573,374 B2
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`claim of priority for Degler, that priority document cannot serve as a basis
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`
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`for claiming priority for any other application. Id. at 15. Here, that means to
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`Petitioner that, “Patent Owner is precluded from claiming priority for subject
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`matter that is also disclosed in [the Degler priority document].” Pet. 13–14.
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`According to Petitioner, two German documents to which the ’374 patent
`
`claims priority6 contain subject matter that is also disclosed in the Degler
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`priority document, and, thus, allegedly the ’374 patent is not entitled to
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`claim priority based on that overlapping subject matter.
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`
`
`Patent Owner rejects Petitioner’s base premise that, under 35 U.S.C.
`
`§ 119(c), the Degler priority document must be considered the “first filed
`
`foreign application” when it comes to the ’374 patent. Prelim. Resp. 2.
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`Noting that the Degler priority document and the ’374 patent, although
`
`having the same assignee, share no common inventors, Patent Owner cites to
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`Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc., 497 F.3d 1293
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`(Fed. Cir. 2007) (which quotes Vogel v. Jones, 486 F.2d 1068 (CCPA 1973))
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`as being controlling law, and particularly on point, for the present situation.
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`Id. at 2–3. Based on the holdings of Boston Scientific and Vogel, Patent
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`Owner urges the following:
`
`The Degler priority [document], though owned by the
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`same assignee as [the] ’374 patent, shares no common inventors
`with the ’374 patent, and is therefore irrelevant to the inventors’
`right to claim priority under 35 U.S.C. § 119 for the ’374 patent.
`The fact that the Degler priority [document] shares no common
`inventors with the ’374 patent is dispositive, and alone requires
`denial of the Petition.
`
`Id. at 3.
`
`
`6 The noted German documents are identified as DE 10 2008 031 431 (dated
`July 4, 2008) and DE 10 2008 037 808 (dated August 14, 2008). Pet. 13.
`
`7
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`IPR2017-00442
`Patent 8,573,374 B2
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`The facts underlying Vogel are largely the same as those present here.
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`In Vogel, an inventor Jones had assigned the rights to a U.S. patent
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`application to Imperial Chemical Industries Ltd. (“ICI”). That U.S. patent
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`application claimed priority to a British application. Vogel took the position
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`that Jones could not claim the benefit of priority to the British application
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`because of the existence of another prior patent application filed by different
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`inventors, but also assigned to ICI. The Court of Customs and Patent
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`Appeals rejected Vogel’s argument. The court concluded that the right to
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`priority arising under § 119 was “personal” to Jones and that the existence of
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`a foreign application with the same assignee (ICI), but filed on behalf of
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`different inventors, was “irrelevant” to Jones’s right of priority based on his
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`own applications. Vogel, 486 F.2d at 1072. In Boston Scientific, the Court
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`of Appeals for the Federal Circuit held that Vogel remained “binding”
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`precedent. Boston Scientific Scimed, Inc., 497 F.3d at 1297.
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`Petitioner asks us to conclude that, because there is a common
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`assignee between the ’374 patent and Degler priority document, there is a
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`“nexus” between the respective inventors, even though there is no common
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`inventorship. Petitioner also takes the view that Vogel is “outdated and not
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`controlling.” Pet. Reply 3. Petitioner’s view is not well supported.
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`Petitioner makes no meaningful attempt to explain why we should
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`conclude that Vogel is no longer good law, despite the Federal Circuit’s
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`expression in 2007 that Vogel remains “binding.” Id. Indeed, Petitioner’s
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`apparent rationale for that view is simply a vague reference from a 1995
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`decision from the Board of Patent Appeals and Interferences that the
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`amendment of 35 U.S.C. § 116 in 1984 pertaining to joint inventorship
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`suggests that a requirement that “the inventive entity must be the same in
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`8
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`IPR2017-00442
`Patent 8,573,374 B2
`
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`both the foreign and the corresponding U.S. application in order to obtain
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`
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`benefit can no longer be accepted.” Pet. Reply 3. Yet, Petitioner does not
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`articulate adequately why such statement mandates the result that Petitioner
`
`desires, i.e., that the ’374 patent has forfeited a claim to priority of its
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`underlying German application. Indeed, we note in passing that, here, the
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`respective inventive entities are not simply non-identical, but are instead
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`wholly different, i.e., there is no commonality at all in inventorship.
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`We have thoroughly considered the positions of both parties. On the
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`record before us, we conclude that Patent Owner stakes out the stronger, and
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`correct, view that Vogel is controlling, and, as a result, the Petition should be
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`denied. See PO Sur-Reply 1. Accordingly, we conclude that Vogel remains
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`good law, and that it dictates that the ’374 patent is entitled to its priority
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`claims. That conclusion establishes that neither Degler nor Reik is prior art
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`to the ’374 patent. On this record, we do not institute an inter partes review
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`based on those references.
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`III. CONCLUSION
`
`The record here does not establish that Petitioner has shown a
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`reasonable likelihood of success in its challenge to claims 1, 3–5, 8, 10, and
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`14–16 as unpatentable based on either Degler or Reik.
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`IV. ORDER
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`It is ORDERED that no trial or inter partes review is instituted based
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`on the Petition filed in this proceeding.
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`9
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`
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`IPR2017-00442
`Patent 8,573,374 B2
`
`For PETITIONER:
`
`Robert Mattson
`cpdocketmattson@oblon.com
`
`Philippe Signore
`cpdocketsignore@oblon.com
`
`Lisa Mandrusiak
`cpdocketmandrusiak@oblon.com
`
`
`
`For PATENT OWNER:
`
`Cary Kappel
`ckappel@ddkpatent.com
`
`William Gehris
`wgehris@ddkpatent.com
`
`David Petroff
`dpetroff@ddkpatent.com
`
`
`
`
`
`
`
`10
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`
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