Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
`Entered: October 26, 2017
`
`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 IPR2017-00974
`Patent 6,850,414 B2
`____________
`
`
`Before SALLY C. MEDLEY, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 11
`Entered: October 26, 2017
`
`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 IPR2017-00974
`Patent 6,850,414 B2
`____________
`
`
`Before SALLY C. MEDLEY, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`
`I.
`INTRODUCTION
`On February 24, 2017, Petitioner filed a Petition requesting inter
`partes review of claim 4 (“the challenged claim”) of U.S. Patent No.
`6,850,414 (Ex. 1001, “the ’414 patent”). Paper 2 (“Pet.”). Claim 4 recites
`“wherein: said printed circuit board has a height of 1 to 1.2 inches
`perpendicular to said contact strip.”
`On May 16, 2017, Polaris Innovations Ltd. (“Patent Owner”) filed a
`Motion to Amend in a related case involving the ’414 patent, Kingston
`Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622
`(“the 1622 IPR”). Paper 18. In its Motion, Patent Owner proposes the
`following substitute claim:
`Claim 9 (Proposed substitute for original Claim 8, with
`correlation to original claim): The printed circuit board
`according to claim 1, wherein: said printed circuit board has a
`width of 5.25 inches and has a height of 1 to 1.2 inches
`perpendicular to said contact strip.
`Id. at 2. Patent Owner states in its Motion that “the substitute claim is the
`same as challenged claim 8 in every respect, except that it simply adds the
`limitations of claim 4.” Id. at 1.
`On August 14, 2017, we exercised our discretion under 35 U.S.C.
`§§ 314(a) and 325(d) to decline to institute an inter partes review of claim 4
`of the ’414 patent based, in part, on our determination that the arguments
`and evidence were “substantially the same” as presented by Petitioner and
`found to be unpersuasive in the 1622 IPR. Paper 8 (“Dec.”), 7–14.
`On August 30, 2017, pursuant to 37 C.F.R. § 42.71(d), Kingston
`Technology Company, Inc. (“Petitioner”) requested rehearing of our
`Decision Denying Institution. Paper 9 (“Req. Reh’g”).
`
`2
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`
`In its Request for Rehearing, Petitioner argues that our analysis of the
`factors for discretionary non-institution under §§ 314(a) and 325(d)
`overlooked a “unique factor”—i.e., Patent Owner’s choice “to reinsert the
`subject matter of non-instituted claim 4 (a height limitation) back into [the
`1622 IPR] as a ‘new’ limitation in its new claim (claim 9).” Req. Reh’g. 2.
`For the reasons set forth below, Petitioner’s Request for Rehearing is
`denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was addressed previously 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. See 37 C.F.R. § 42.71(c). An abuse of discretion may
`be indicated if a decision is based on an erroneous interpretation of law, if a
`factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors. See Star
`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold
`P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203
`F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the
`arguments presented by Petitioner.
`
`III. ANALYSIS
`Petitioner argues that our analysis of the factors for discretionary non-
`institution under §§ 314(a) and 325(d) overlooked a “unique factor”—i.e.,
`Patent Owner’s choice “to reinsert the subject matter of non-instituted claim
`
`3
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`4 (a height limitation) back into [the 1622 IPR] as a ‘new’ limitation in its
`new claim (claim 9).” Req. Reh’g. 2. Petitioner notes that “[t]his factor was
`not considered by the Board in its Institution Decision and was not raised by
`Petitioner because the Motion to Amend had not yet been filed prior to the
`filing of the present Petition.” Id. at 2–3.
`According to Petitioner, “[d]eclining to review the present Petition on
`the merits will potentially result in inconsistent application of the law to
`identical claim limitations of the same patent” if the panel in the 1622 IPR
`determines that proposed substitute claim 9 is unpatentable and we, by
`denying institution, “leav[] claim 4 (a broader claim than claim 9) valid.”
`Id. at 4. Such an “inconsistent application of the patent law to identical
`claim features of the same patent would serve only to decrease the quality
`and certainty of patent rights,” contrary to the goal of the America Invents
`Act to “increase the quality and certainty of patent rights.” Id. Petitioner
`notes that “[t]he eight factors used by the Board for deciding whether to
`exercise its discretion pertain primarily to efficient conduct of the post grant
`proceedings and fairness towards the Patent Owner,” but concludes that
`“such considerations are overridden by the interests of justice when, as here,
`Patent Owner itself instigates issues that give rise to inconsistent
`applications of the law to a single patent.” Id. at 6.
`We are not persuaded by Petitioner’s argument because we disagree
`with its premise—i.e., that denying inter partes review of claim 4 may result
`in an inconsistent application of the law. As an initial matter, Petitioner’s
`argument depends upon speculation about whether the panel in the 1622 IPR
`will determine that the subject matter of proposed, substitute claim 9 is
`unpatentable. Even if that becomes true, however, it would not result in an
`
`4
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`inconsistent application of the law because our denial of institution of inter
`partes review of claim 4 is not an affirmative determination that the subject
`matter of claim 4 is patentable. The denial of institution in the 1622 IPR
`was based on a deficiency of the petition in that case. Kingston Technology
`Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at
`17, 18 (PTAB February 15, 2017) (Paper 7) (determining, with respect to
`claim 4, that Petitioner did not explain persuasively how and/or why a
`person of ordinary skill in the art would have made the proposed
`modifications to Simpson alone or in view of the teachings of the Intel
`Specification); see id., slip op. at 6 (PTAB April 6, 2017) (Paper 16)
`(denying request for rehearing). The denial of institution in this proceeding
`was because, inter alia, “we determine[d] that the prior art and arguments
`asserted in this Petition are ‘substantially the same’ as those in the first
`petition” (Dec. 13) and, therefore, declined to reach the merits of the
`Petition.
`In neither decision did the Board determine affirmatively that claim 4
`is patentable over the prior art asserted in the respective petitions. As a
`result, even if the panel in the 1622 IPR later determines that proposed
`substitute claim 9 is unpatentable, that determination will not be inconsistent
`with our denial of institution of inter partes review of claim 4.
`
`II. ORDER
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
`is denied.
`
`
`
`
`5
`
`
`
`IPR2017-00974
`Patent 6,850,414 B2
`
`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`
`
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`
`
`For PATENT OWNER:
`
`Kenneth Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`
`
`6
`
`
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