Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 16
`Date: September 11, 2019
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT PACKARD ENTERPRISE CO.
`Petitioner
`
`v.
`
`CHRIMAR SYSTEMS, INC.
`Patent Owner
`_______________
`
`Case IPR2019-00033
`Patent 8,902,760 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571–272–7822
`
`
`
`
`Paper 16
`Date: September 11, 2019
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT PACKARD ENTERPRISE CO.
`Petitioner
`
`v.
`
`CHRIMAR SYSTEMS, INC.
`Patent Owner
`_______________
`
`Case IPR2019-00033
`Patent 8,902,760 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`
`I. INTRODUCTION
`Hewlett Packard Enterprise Co. (“Petitioner”) filed a Request for
`Rehearing (Paper 13, “Req. Reh’g”) of the Decision Denying Institution of
`Inter Partes Review (Paper 11, “Decision” or “Dec.”) of claims 73, 106,
`112, 134, 142, 145, and 146 (“the challenged claims”) of U.S. Patent
`No. 8,902,760 B2 (Ex. 1004, “the ’760 patent”). In the Request for
`Rehearing, Petitioner argues that we misapprehended 1) the impact of
`Petitioner’s voluntary dismissal of its civil action challenging the validity of
`a claim of the ’760 patent; and 2) the applicability of the Federal Circuit’s
`decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321
`(Fed. Cir. 2018) (en banc). Req. Reh’g 1. For the reasons set forth below,
`the Request for Rehearing is denied.
`II. ANALYSIS
`When considering a request for rehearing, the Board reviews its
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party
`requesting rehearing bears the burden of showing that the decision should be
`modified, and “[t]he request must specifically identify all matters the party
`believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d)
`In the Decision, we denied the Petition (Paper 2, “Pet.”) under 35
`U.S.C. § 315(a)(1), because Petitioner filed a civil action challenging the
`validity of a claim of the ’760 patent before the date on which the Petition
`was filed. Dec. 2. We determined that § 315(a)(1) bars institution of an
`inter partes review even though Petitioner voluntarily dismissed its earlier
`civil action without prejudice. Id. at 8.
`Petitioner argues that we “misapprehend[ed] the impact of a party’s
`voluntary dismissal of a civil action” because “federal courts deem a civil
`
`2
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`action dismissed without prejudice as ‘something that de jure never
`existed.’” Req. Reh’g 3. Petitioner’s argument is not persuasive. As the
`Federal Circuit explained in Click-to-Call, “[a] voluntary dismissal without
`prejudice only leaves the dismissed action without legal effect for some
`purposes; for many other purposes, the dismissed action continues to have
`legal effect.” Dec. 7 (quoting Click-to-Call, 899 F.3d at 1335). Thus, we
`interpreted § 315(a)(1) based on the ordinary meaning of its language, rather
`than based on a background legal principle that is “anything but equivocal.”
`Dec. 6–7 (quoting Click-to-Call, 899 F.3d at 1335).
`Petitioner argues that we “misapprehended the applicability of Click-
`to-Call, however, because Click-to-Call dealt specifically with § 315(b) and
`its holding should not be extended to apply to § 315(a)(1).” Req. Reh’g 4.
`Specifically, Petitioner contends that § 315(b) focuses on the service of a
`complaint, which cannot be undone by a voluntary dismissal, whereas
`§ 315(a)(1) focuses on the filing a civil action, which is nullified by a
`voluntary dismissal. Id. at 5–6. Petitioner’s argument is not persuasive. We
`did not simply say that Click-to-Call’s holding extends to § 315(a)(1).
`Rather, just as Click-to-Call addressed the ordinary meaning of the phrase
`“served with a complaint” in § 315(b), we addressed the ordinary meaning
`of the phrase “filed a civil action” in § 315(a)(1). Dec. 6–7. We determined
`that the ordinary meaning of the phrase “filed a civil action” indicates that
`the § 315(a)(1) bar is implicated once a party commences a noncriminal
`litigation, irrespective of a subsequent dismissal without prejudice. Id.
`Moreover, the Board’s recently designated precedential decision in
`Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511, Paper 11 at 8
`(PTAB Jan. 31, 2019) (precedential), holds that § 315(a)(1) bars institution
`
`3
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`of an inter partes review even when the petitioner voluntarily dismissed
`without prejudice its earlier civil action challenging the validity of a claim of
`the patent.
`
`III. CONCLUSION
`The Request for Rehearing does not demonstrate that the Decision
`misapprehended or overlooked any matters.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`4
`
`
`
`IPR2019-00033
`Patent 8,902,760 B2
`
`FOR PETITIONER:
`
`Hersh H. Mehta
`Brent A. Hawkins
`Maria E. Doukas
`MORGAN, LEWIS & BOCKIUS LLP
`hersh.mehta@morganlewis.com
`brent.hawkins@morganlewis.com
`maria.doukas@morganlewis.com
`
`
`FOR PATENT OWNER:
`
`Frank A. Angileri
`Thomas A. Lewry
`Marc Lorelli
`Christopher C. Smith
`BROOKS KUSHMAN P.C.
`fangileri@brookskushman.com
`tlewry@brookskushman.com
`mlorelli@brookskushman.com
`csmith@brookskushman.com
`
`5
`
`
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