Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: October 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`_______________
`
`Cases IPR2017-01118 and IPR2017-011191
`Patent 8,490,628 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Inter Partes Review
`35 U.S.C. § 325(d)
`
`
`
`
`
`
`1 This Decision addresses identical issues in each of two related cases. We
`exercise our discretion to issue one Decision to be entered in each case. The
`parties are not authorized to use this style heading in any subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: October 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`_______________
`
`Cases IPR2017-01118 and IPR2017-011191
`Patent 8,490,628 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Inter Partes Review
`35 U.S.C. § 325(d)
`
`
`
`
`
`
`1 This Decision addresses identical issues in each of two related cases. We
`exercise our discretion to issue one Decision to be entered in each case. The
`parties are not authorized to use this style heading in any subsequent papers.
`
`
`
`IPR2017-01118 and IPR2017-01119
`Patent 8,490,628 B2
`
`I. INTRODUCTION
`A. Background
`R.J. Reynolds Vapor Company (“Petitioner”) filed Petitions to
`institute an inter partes review of claims 1–8 (“the challenged claims”) of
`U.S. Patent No. 8,490,628 B2 (Ex. 10012, “the ’628 patent”). IPR2017-
`01118, Paper 2 (“’1118 Pet.”)3; IPR2017-01119, Paper 2 (“’1119 Pet.”)4.
`Fontem Holdings 1 B.V. (“Patent Owner”) filed a Preliminary Response in
`each proceeding. ’1118, Paper 7 (“’1118 Prelim. Resp.”); ’1119, Paper 7
`(“’1119 Prelim. Resp.”). We have authority to determine whether to
`institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We
`deny the Petitions under 35 U.S.C. § 325(d).
`B. Related Matters
`Petitioner and Patent Owner indicate that the ’628 patent is the subject
`of a number of federal district court cases, has been the subject of four prior
`inter partes review proceedings (IPR2014-01300, IPR2016-01283,
`IPR2016-01285, and IPR2016-01527), and related patents have also been
`the subject of various federal district court cases and subject to multiple
`other inter partes review proceedings. ’1118 Pet. 3–6; ’1119 Pet. 7–10;
`’1118, Paper 3, 1–10; ’1119, Paper 3, 1–10.
`
`
`2 The Exhibit number is the same in both IPR2017-01118 and IPR2017-
`01119. References to exhibits and papers include the appropriate ’1118 or
`’1119 prefix to indicate the relevant proceeding. When no prefix is included
`for an exhibit, the exhibit number (and exhibit) is the same in both
`proceedings.
`3 The ’1118 Petition challenges claims 1–3, 5, 7, and 8 of the ’628 patent.
`4 The ’1119 Petition challenges claims 1–8 of the ’628 patent.
`2
`
`
`
`
`
`IPR2017-01118 and IPR2017-01119
`Patent 8,490,628 B2
`
`
`C. Asserted Grounds of Unpatentability and Evidence of Record
`Petitioner contends that the challenged claims are unpatentable based
`on the following grounds (’1118 Pet. 8, 24–66; ’1119 Pet. 12, 15–71).
`Reference(s)
`Basis
`Claims Challenged
`Takeuchi5
`§102
`1–3, 5, 7, and 8
`
`Takeuchi and Whittemore6
`
`Hon ’031 7
`
`§103
`
`§102
`
`1–3, 5, 7, and 8
`
`1–8
`
`
`II. ANALYSIS
`A. Prior Challenges to the ’628 Patent
`As noted above, the ’628 patent has been the subject of four prior
`inter partes review proceedings. Trial was instituted in IPR2014-01300
`(’1118 Ex. 1009, 23), but was later terminated at the request of the parties in
`view of a settlement between the parties. IPR2016-01283 involved a
`challenge to claims 1–8 of the ’628 patent based on Hon ’031, and
`institution was denied in that proceeding. ’1118 Ex. 1007, 2, 12. IPR2016-
`01285 included a challenge to claims 1–3, 5, and 8 of the ’628 patent based,
`in part, on Takeuchi, and institution was denied in that proceeding. ’1118
`Ex. 1008, 2, 14. IPR2016-01527 included a challenge to claims 1, 2, 5, and
`8 of the ’628 patent based on Takeuchi and Whittemore, and institution was
`denied in that proceeding. ’1118 Ex. 1006, 3, 15.
`
`
`5 U.S. Pat. No. 6,155,268, iss. Dec. 5, 2000 (’1118 Ex. 1003, “Takeuchi”).
`6 U.S. Pat. No. 2,057,353, iss. Oct. 13, 1936 (’1118 Ex. 1004,
`“Whittemore”).
`7 U.S. Pat. Pub. No. 2007/0267031 A1, pub. Nov. 22, 2007 (’1119 Ex. 1003,
`“Hon ’031”).
`
`
`
`3
`
`
`
`IPR2017-01118 and IPR2017-01119
`Patent 8,490,628 B2
`
`
`Petitioner was not a party in IPR2014-01300, IPR2016-01283, or
`IPR2016-01285, but was the petitioner in IPR2016-01527. The petition in
`IPR2016-01527 was filed August 3, 2016, and the ’1118 and ’1119 Petitions
`were filed on April 4, 2017, more than eight months later.
`B. The Parties’ Contentions
`Petitioner does not identify any unique circumstance that might justify
`its additional, and much later filed, petitions challenging the ’628 patent.
`Patent Owner contends that we should apply our discretion provided by 35
`U.S.C. § 325(d) to deny the ’1118 and ’1119 Petitions. ’1118 Prelim. Resp.
`3–8; ’1119 Prelim. Resp. 3–8.
`C. Application of 35 U.S.C. § 325(d)
`Section 325(d) provides that “the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`“[I]n determining whether to exercise our discretion under Section 325(d),
`we first examine whether the grounds asserted in the instant Petition present
`‘the same or substantially the same prior art or arguments’ as those
`previously presented to the Office” and “[t]hen, we determine whether it is
`appropriate to exercise our discretion to deny institution.” Neil Ziegmann,
`N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. at 14–15 (PTAB
`Sept. 6, 2017) (Paper 13).
`With respect to the ’1118 and ’1119 Petitions, there is no dispute that
`the asserted art is “the same prior art . . . previously . . . presented to the
`Office.” Rather, it is the arguments that are allegedly different. See ’1118
`Pet. 9; ’1119 Pet. 13. Nevertheless, “the use of the word ‘or’ in ‘prior art or
`arguments’ indicates that the presence of previously presented prior art or
`
`
`
`4
`
`
`
`IPR2017-01118 and IPR2017-01119
`Patent 8,490,628 B2
`
`arguments is sufficient to invoke Section 325(d).” Neil Ziegmann, N.P.Z.,
`Case IPR2015-01860, slip op. at 19 (Paper 13).
`Based on the facts before us, we determine it is appropriate to exercise
`our discretion to deny the ’1118 and ’1119 Petitions under 35 U.S.C.
`§ 325(d). The asserted art is identical to that presented in the earlier inter
`partes reviews, the ’1118 and ’1119 Petitions are the fifth and sixth petitions
`challenging the ’628 patent (three of which were filed by Petitioner), and
`Petitioner filed its first petition challenging the ’628 patent over eight
`months before filing the ’1118 and ’1119 Petitions and offers no explanation
`for the significant time lapse between filings. Further, through its delay in
`filing the ’1118 and ’1119 Petitions, Petitioner had the benefit of our prior
`decisions on institution, as well as Patent Owner’s Preliminary Responses, in
`those prior proceedings. These circumstances favor exercising our
`discretion to deny the ’1118 and ’1119 Petitions.
`
`III. ORDER
`For the reasons given, the ’1118 and ’1119 Petitions are denied and no
`inter partes review is instituted.
`
`PETITIONER:
`Ralph J. Gabric
`Robert Mallin
`Scott Timmerman
`BRINKS GILSON & LIONE
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`stimmerman@brinksgilson.com
`
`
`
`
`
`5
`
`
`
`IPR2017-01118 and IPR2017-01119
`Patent 8,490,628 B2
`
`PATENT OWNER:
`Michael J. Wise
`Joseph P. Hamilton
`Tyler R. Bowen
`PERKINS COIE LLP
`mwise@perkinscoie.com
`jhamilton@perkinscoie.com
`tbowen@perkinscoie.com
`
`
`
`
`6
`
`
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