A.C. Dispensing Equipment Inc.v.Prince Castle LLC

Patent Trial and Appeal Board

Sep 10, 2014

12885659 (P.T.A.B. Sep. 10, 2014)

Trials@uspto.gov Paper 16
571-272-7822 Entered: September 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

A.C. DISPENSING EQUIPMENT INC.,
Petitioner,

v.

PRINCE CASTLE LLC,
Patent Owner.
____________

Case IPR2014-00511
Patent 8,534,497 B2
__________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

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Patent 8,534,497 B2

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I. INTRODUCTION
Petitioner filed a Request for Rehearing (Paper 12, “Req. Reh’g”) of
the Decision mailed August 11, 2014 (Paper 10, “Dec.”), which instituted
inter partes review of claims 1-12 of U.S. Patent No. 8,534,497 B2
(Ex. 1001, “the ’497 patent”). In its request, Petitioner seeks
reconsideration of our decision not to institute inter partes review with
respect to grounds 5-9 based on Wang (Ex. 1003) and Ring (Ex. 1004).
Req. Reh’g 1. The Request for Rehearing is denied.

II. STANDARD OF REVIEW
In determining whether to institute an inter partes review of a patent,
the Board may “deny some or all grounds for unpatentability for some or all
of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a
decision on a petition, the Board will review the decision for an abuse of
discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the
burden of showing an abuse of discretion, and “[t]he request must
specifically identify all matters the party believes the Board misapprehended
or overlooked.” 37 C.F.R. § 42.71(d).

III. ANALYSIS
In the Decision, we denied Petitioner’s challenges based on the
combination of Wang and Ring because the Corrected Petition (Paper 4,
“Pet.”) did not identify evidence of record to show the prior art combination
discloses the claim limitation “user-specified volume of liquid” or “user-
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requested volume of liquid.” Dec. 15. Petitioner asserts that this finding
should be reconsidered and reversed because (1) the claim limitation is the
same as a “desired acquisition volume V” recited in Wang and mentioned in
the Petition, (2) the claim limitation was addressed in the Militzer
Declaration (Ex. 1007), (3) the claim limitation is met by a predetermined
amount of liquid in Wang, and (4) the evidence submitted by Petitioner was
not considered in the Decision. Req. Reh’g 1-2. Petitioner also argues that
the Board abused its discretion in denying the Petition with respect to
grounds 5-9 because the overlooked claim limitation is “commonplace.” Id.
at 7-8.
The Corrected Petition
In support of the assertion that “a ‘desired acquisition volume V’ as
set forth in the Petition is a ‘user-specified’ or ‘user-requested volume’” (id.
at 1), Petitioner restates the following from the Petition:
The apparatus is now ready for “dispensing a user-specified
volume of liquid” as recited in claim 1. The apparatus applies
the stored polynomial expression to the height of liquid to
determine the period of time for keeping the valve open to
dispense a liquid volume V. (Ex. 1003, p. 8, l.26-32)
Req. Reh’g 2 (quoting Pet. 40). Petitioner explains that “[v]olume V is
specifically defined at the citation in Wang as ‘the desired acquisition
volume.’” Id. (citing Ex. 1003, p.8, l.29). Petitioner further reasons in the
Request for Rehearing that “whether the volume is specified [as recited in
challenged claims 1 and 11], requested [as recited in challenged claim 11] or
desired [as quoted from Wang], in all cases the user is getting the wanted
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volume of liquid because the claimed dispensing method is being
performed.” Id.
Petitioner also refers to the claim charts for independent claims 1 and
11 to show that Wang is cited for the “user-specified volume” claim
limitations. Req. Reh’g 2-3. The claim chart for independent claim 1 is said
to cite Wang page 8, lines 29-31, for teaching an apparatus “designed to
‘precisely control the opening time of the valve to be T, thereby completing
the quantitative acquisition of the liquid.’” Id. at 2 (citing Pet. 51).
Petitioner explains in the Request for Rehearing that “[s]etting the variable
V satisfies the requirement for specifying or requesting the volume V.” Id.
The claim chart for independent claim 11 is said to show that the claimed
“user-requested volume” corresponds to Wang’s “desired acquisition
volume V” because “[a] user operating the Wang apparatus to dispense a
volume V of liquid necessarily ‘requests’ a volume V.” Id. at 3 (citing
Pet. 58).
We did not abuse our discretion in determining Petitioner did not
present evidence establishing that the combination of Wang and Ring
teaches the required user-specified volume. None of the passages in the
Corrected Petition and claim charts that Petitioner cites in its Request for
Rehearing clearly correlates a teaching in Wang, either “a predetermined
amount of liquid” or “a desired acquisition volume,” to the required “user-
specified volume” of independent claims 1 and 11. Cf. Pet. 2-3, 51, 58.
Indeed, the Request for Rehearing has to connect the dots in three different
documents to explain that its obviousness argument over the combination of
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Wang and Ring encompasses the “user-specified volume” limitation
required by the claims. The Request for Rehearing skips over the fact that
no citation to Wang appears after the statement on page 40 of the Petition
describing the Wang apparatus being ready for “dispensing a user-specified
volume”. The Request for Rehearing directs us to the Wang citation on
page 40 of the Petition after a statement concerning Wang’s polynomial
expression, not the claimed user-requested volume. The Request for
Rehearing quotes “the desired acquisition volume” from line 29 on page 8 of
Wang (Req. Reh’g 2), however, this portion of Wang that is said to
correspond to the required user-specified volume of claims 1 and 11 is not
quoted and attributed to page 8 of Wang in the Corrected Petition or claim
chart. See Pet. 40, 51-59.
Petitioner’s attempt to connect the dots in its Request for Rehearing in
order to flesh out its obviousness argument over the combination of Wang
and Ring, as well as Petitioner’s admission that an allegedly commonplace
limitation was overlooked, indicates the Corrected Petition did not make the
necessary showing that Petitioner has a reasonable likelihood of prevailing
on the obviousness grounds based on Wang in combination of Ring. A
request for rehearing is not an opportunity to present new arguments
or evidence that could have been presented in the petition. 37 C.F.R.
§ 42.104(b)(5). “The Board may exclude or give no weight to the evidence
where a party has failed to state its relevance or to identify specific portions
of the evidence that support the challenge.” Id. Petitioner should not expect
the Board to search the record and piece together the evidence necessary to
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support Petitioner’s arguments. Cf., DeSilva v. DiLeonardi, 181 F.3d 865,
866-67 (7th Cir. 1999)(“A brief must make all arguments accessible to the
judges, rather than ask them to play archeologist with the record.”).
Accordingly, we will not consider arguments that were not made in
the Corrected Petition.
The Militzer Declaration
Petitioner quotes from paragraphs 30 and 32 of the Militzer
Declaration which conclude that Wang describes determining or calculating
an open valve time “to dispense a user-specified volume of liquid.” Req.
Reh’g 3. Petitioner argues in the Request for Rehearing that these
statements in the Militzer Declaration “clearly equated the desired
acquisition volume V [of Wang] with the user-specified volume [of claims 1
and 11].” Id. at 4. Petitioner does not state in the Request for Rehearing
where in the Petition these sections of the Militzer Declaration were relied
upon to support Petitioner’s obviousness argument over the combination of
Wang and Ring. A review of pages 38 through 59 of the Corrected Petition
indicates that paragraphs 30 and 32 of the Militzer Declaration are not cited
in support of grounds 5-9. See Pet. 38-59.
The practice of citing the Declaration to support conclusory
statements that are not otherwise supported in the Petition amounts to
incorporation by reference. It is improper to incorporate by reference
arguments from one document into another document. 37 C.F.R.
§ 42.6(a)(3). One purpose of the prohibition against incorporation by
reference is to eliminate abuses that arise from incorporation. Rules of
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Practice for Trials Before the Patent Trial and Appeal Board and Judicial
Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
Reg. 48,612, 48,617 (Aug. 14, 2012); see also DeSilva, 181 F.3d at 866-67
(Incorporation “by reference amounts to a self-help increase in the length of
the [] brief[,]” and “is a pointless imposition on the court’s time.”).
Accordingly, we will not consider arguments that are not made in the
Corrected Petition nor will we consider arguments incorporated by reference
to the belatedly cited paragraphs of the Militzer Declaration.
The Wang Reference
Petitioner argues that “the Board refers to Wang as dispensing a
predetermined amount of liquid” and concludes “that is perfectly consistent
with the invention claimed in the ’497 patent.” Req. Reh’g 4. However,
Petitioner concedes it did not rely on the dispensing of predetermined
amounts of liquid in its Corrected Petition. Id. Petitioner also argues that
“[t]he mechanics of programming or specifying the volume V is not an
element of the method claims of the ’497 patent.” Id. The support for this
argument comes from a claim construction analysis in an unrelated
proceeding. Id. at 4-5. Petitioner did not argue a claim construction for
“user-specified volume” in the Corrected Petition.
Again, we will not consider arguments that are not made in the
Corrected Petition.
The Decision
Petitioner argues that “the Decision fails to confront the fact that
Wang allows a user to obtain a desired acquisition volume corresponding to
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the user-specified or user-requested volume.” Id. at 5. Petitioner points to
the unsupported statement, quoted supra from page 40 of the Corrected
Petition, that “[t]he apparatus is now ready for ‘dispensing a user-specified
volume of liquid’ as recited in claim 1” (id.), and to the claim charts in the
Corrected Petition as its showing that a desired acquisition volume
corresponds to the claimed user-specified or user-requested volume (id. at
6).
For the reasons discussed above, we will not consider arguments that are
not made in the Corrected Petition nor will we play archeologist with the
Wang reference and the Militzer Declaration to determine what the
Petitioner meant to argue in support of grounds 5 through 9. Petitioner now
argues that the “desired acquisition volume” described on page 8 of Wang,
but not quoted or explained on page 40 of the Corrected Petition, is the
claimed “user-specified volume” that paragraphs 30 and 32 of the Militzer
Declaration concludes is taught by Wang, but is not cited in support of
grounds 5 through 9. Because Petitioner did not make these arguments in
the Corrected Petition, Petitioner has not shown that we abused our
discretion by not instituting an inter partes review of the ’497 patent on
grounds 5 through 9.

IV. ORDER
Accordingly, it is hereby ORDERED that Petitioner’s Request for
Rehearing is denied.
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PETITIONER:

Robert M. Asher
Steven G. Saunders
SUNSTEIN KANN MURPHY & TIMBERS LLP
rasher@sunsteinlaw.com
ssaunders@sunsteinlaw.com

PATENT OWNER:

Aaron T. Olejniczak
Christopher R. Liro
ANDRUS INTELLECTUAL PROPERTY LAW, LLP
aarono@andruslaw.com
chris.liro@andruslaw.com