National Products Inc.

Patent Trials and Appeals BoardMay 6, 2021

IPR2020-01542 (P.T.A.B. May. 6, 2021)

Trials@uspto.gov Paper 9 571-272-7822 Date: May 6, 2021 1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SCANSTRUT, INC. AND SCANSTRUT, LTD., Petitioner, v. NATIONAL PRODUCTS, INC., Patent Owner. IPR2020-01542 Patent 6,585,212 Before BARRY L. GROSSMAN, FRANCES L. IPPOLITO, and JASON W. MELVIN, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION Denying Petitioner’s Request on Rehearing 37 C.F.R. § 42.71(d) I. INTRODUCTION A. Summary of Procedural History Petitioners, Scanstrut, Inc. and Scanstrut, Ltd. (collectively, “Petitioner”), filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1, 4, 5, 6, 10, 11, 12, 14, 15, 16, 20, 21, 23, 27, and 30 (the IPR2020-01542 Patent 6,585,212 B2 2 “challenged claims”) of U.S. Patent No. 6,585,212 B2 (Ex. 1001, “the ’212 patent”). Patent Owner, National Products, Inc., timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”). The Petition asserted both anticipation and obviousness of the challenged claims based on two references, Exhibit 1005 and Exhibit 1006. E.g., Pet. 5. Exhibit 1005 is a Chinese language publication. Id. Exhibit 1006 is a U.S. patent. Id. Petitioner refers to each of Exhibits 1005 and 1006 as “Chen.” Id,; Dec. 7–8. In the Petition, Petitioner argued that: Chen was published as both a Chinese Patent and a U.S. Patent. (Exs. 1005, 1006.) A POSITA knows that the U.S. Patent contains the same disclosure as the Chinese Patent because it is an English translation of the U.S. Patent. (Ex. 1003, Ganaja ¶¶ 43–45.) As such, citations are made to Chen’s U.S. Patent alone, and should be understood to also refer to Chen’s Chinese Patent. Pet. 15 (citing Ex. 1003 ¶¶ 43–45). We found there was no probative evidence in the record that was before us establishing that Chen was published as both a Chinese Patent (Ex. 1005) and a U.S. Patent (Ex. 1006). Paper 7, 8 (“Decision” or “Dec.”). We also found there was no probative evidence in the record that was before us establishing that Exhibit 1006 “contains the same disclosure as” Ex. 1005 “because it is an English translation of the U.S. Patent.” Id. at 8–9. It is undisputed that Petitioner failed to file a translation of Chinese- language Exhibit 1005 as required by our rules. Dec. 9. Petitioner was on notice of this failure and did not make any effort to correct it. Id. Accordingly, we held that “because Ex. 1005 does not comply with our rules, and because there is no probative evidence that Exhibit 1006 is an IPR2020-01542 Patent 6,585,212 B2 3 accurate translation of Exhibit 1005, Exhibit 1005 will not be considered as an exhibit or evidence in this proceeding.” Dec. 10. Petitioner “does not contest this finding,” or our resulting conclusion regarding Exhibit 1005. Req. Reh’g. 5. There is no dispute that the Petition asserted two distinct grounds of unpatentability. The first asserted ground was based on anticipation (35 U.S.C. § 102); the second asserted ground was based on obviousness (35 U.S.C. § 103). Each of the two grounds relied on “Chen (Exs. 1005 and 1006).” Dec. 7 (citing Pet. 5) (emphasis added in the Decision). Because Exhibit 1005 was not translated, we held that the Petition failed “to identify with particularity the evidence that supports the grounds for each challenge to each claim.” See, e.g., Dec. 2 (emphasis added); id. at 12 (“The Petition fails to identify with particularity the challenges asserted.”). A Dissent was included in our Decision. The Dissent stated the view that the “Petition supports institution.” Dec. 13. The Dissent’s view is that “[p]roblems with Petitioner’s reliance on [] Chen’s purported Chinese version (Exhibit 1005) do not undermine its challenge based on the U.S. patent (Exhibit 1006).” Id. The Dissent’s view is that “evaluating anticipation by Chen (Exhibit 1006) would require no speculation and would present little difficulty to Patent Owner or the Board.” Id. The Dissent concluded that Whether the Petition has raised an additional challenge based on Exhibit 1005 is an entirely separate question that should not impact our evaluation of Exhibit 1006. In short, I do not believe that purporting to include an additional, defective challenge so clouds the Petition as to prevent consideration on the merits. IPR2020-01542 Patent 6,585,212 B2 4 Dec. 15. The views of the Dissent were fully considered, but not adopted, by the Majority Decision. On April 15, 2021, Petitioner filed a Request for Rehearing of our Decision Denying Institution. See Paper 8 (“Req. Reh’g.”). It is not a surprise that Petitioner wants us to adopt the Dissent’s analysis and conclusion as the Majority decision. See, e.g., Req. Reh’g. 7 (“As properly noted by the dissent, ‘[w]hether the Petition has raised an additional challenge based on Exhibit 1005 is an entirely separate question that should not impact our evaluation of Exhibit 1006.’”). The fact that Petitioner disagrees with the Majority Decision, or that a Dissent was filed, is not a basis for rehearing. As we explain below, we determine we did not abuse our discretion, or overlook or misapprehend any matters. Accordingly, we deny the request to reconsider the Petition. II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party IPR2020-01542 Patent 6,585,212 B2 5 believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). As held by the Supreme Court, “[i]If an inter partes review is instituted and not dismissed under this chapter, the [Board] shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner. . . .” SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018) (citing 35 U.S.C. § 318(a)). As stated in our Decision, a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” Dec. 2–3 (quoting PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018)) (emphasis added). Petitioner now asks that we disregard this controlling authority and “grant rehearing and institute review at least based on anticipation and obviousness challenges based on Exhibit 1006.” Req. Reh’g. 5. A rehearing is not an opportunity to rewrite the Petition to correct errors and omissions in the original Petition. Our Decision was based on the grounds and evidence asserted in the Petition filed, not the Petition Petitioner now wishes it had filed. See Chef America, Inc. v. Lamb-Weston, Inc., 358 F. 3d 1371, 1374 (Fed. Cir. 2004) (“Thus, in accord with our settled practice we construe the claim as written, not as the patentees wish they had written it.”). III. ANALYSIS Petitioner asserts several arguments supporting its Request for Rehearing. These include: (1) the Board disregarded foundational patent IPR2020-01542 Patent 6,585,212 B2 6 law in denying institution (Req. Reh’g. 5–10; (2) the Board disregarded the entirety of the Petition (id. at 10–12); (3) Patent Owner and the Dissent “understood” the asserted Grounds (id. at 12–14); and (4) SAS, requiring the Board “to institute on all claims and all grounds is not an issue” (id. at 14– 15). We address these arguments below. Petitioner argues that “fundamental patent law principles dictate that Exhibits 1005 and 1006 are separate challenges to the ’212 patent,” and that the Board “should institute review under 35 USC 102(e) based on Exhibit 1006.” Req. Reh’g. 5–6. According to Petitioner, [s]ince anticipation is focused on a single prior art reference, the Board’s interpretation of the word “and” [in Ground 1] to require consideration of both Exhibits 1005 and 1006 together is contrary to the law. Only one reference and its teachings within the four corners may be considered for anticipation. Therefore, it is grammatically acceptable grammar to state that a patent is anticipated by “reference A and reference B” or “by reference A or reference B,” since anticipation is limited to a single reference. Id. at 6–7. Petitioner’s assumption that the Board required “consideration of both Exhibits 1005 and 1006 together” in Ground 1 is incorrect and logically inconsistent. According to the Petition, Exhibit 1006 was asserted to be the English translation of Exhibit 1005. If so, their disclosures would be identical. The only argued difference between Exhibits 1005 and 1006 was their effective date as a reference1 and the applicable section of the statute. 1 In the Request for Rehearing, Petitioner states that it will “drop” its assertion that “Exhibit 1006 should be entitled to the Exhibit 1005’s 102(b) priority date.” Req. Reh’g. 8, n.4. As stated above, a rehearing is not an opportunity to rewrite the Petition to correct errors and omissions in the original Petition. IPR2020-01542 Patent 6,585,212 B2 7 See Pet. 5 (charts identifying dates of the references and statutory grounds of asserted grounds of unpatentability). Because Petitioner failed to file the required translation of Exhibit 1005, we declined to consider Exhibit 1005. Nonetheless, had we instituted an inter partes review, controlling authority required that we institute on Exhibit 1005 and Exhibit 1006, as asserted in Ground 1. See, e.g., PGS Geophysical, 891 F.3d at 1360 (a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Thus, the Board and Patent Owner would be faced with consideration of an asserted ground based on an untranslated, foreign language document. The fact that the Grounds based on Exhibit 1006 were comprehensible, does not compensate for or correct the fact that the grounds based on Exhibit 1005 were not comprehensible. In deciding whether to institute a proceeding, we consider the totality of the asserted grounds, not only the grounds that are comprehensible. Petitioner also argues that two separate and distinct “theories of obviousness” were asserted in the Petition, one based on Exhibit 1005, the other based on Exhibit 1006. Req. Reh’g. 9–10. Petitioner argues we “chose to overlook” argument in the Petition that the obviousness ground was based on the references (Exhibit 1005 and Exhibit 1006, individually, but also “in view of the knowledge of a POSITA.” Id. at 9. We disagree. In footnote 5 of our Decision, we stated: Petitioner adds that this asserted Ground is based on Ex. 1005 and Chen ‘in view of the knowledge of a POSITA (as evidenced at least by Exhibits 1007-1012 and the Declaration of Scott O. Ganaja (Ex. 1003))’ (Pet. 5), using the common patent acronym to refer to a person of ordinary skill in the art. This apparent qualification adds no substance to the asserted Ground because IPR2020-01542 Patent 6,585,212 B2 8 it merely quotes the statutory language that governs the determination of patentability under 35 U.S.C. § 103(a). Exhibits 1007–1012 are cited as background prior art. See Ex. 1003 ¶¶ 77–84 (discussing each reference and concluding in ¶ 84 that ‘Each of the foregoing references evidence that a POSITA knew about the resilient compressible pads, as they were well-known in the art). Dec. 7–8. Our statement recognized that the statute requires that we consider whether the differences between a claimed invention and the cited references “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” See 35 U.S.C. § 103(a). Our statement merely pointed out that Petitioner’s cursory summary of the statute in the asserted Ground 2 was superfluous. Petitioner’s belated concession that “the requirement of SAS Institute to institute on all claims and grounds is not an issue, because grounds based on Exhibit 1005 can be summarily dealt with by the parties and the Board” (Req. Reh’g. 14–15) ) does not cure the fundamental issue that half of the asserted bases of unpatentability in the Petition, that is, those based on Exhibit 1005, are unsupported by any viable, probative evidence. The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). The Director “possesses broad discretion in deciding whether to institute review.” Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1547 (2019) (citing Oil States Energy Services v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1371 (2018)); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “If the IPR2020-01542 Patent 6,585,212 B2 9 Director decides not to institute, for whatever reason, there is no review. In making this decision, the Director has complete discretion to decide not to institute review.” Saint Regis Mohawk Tribe, 896 F.3d at 1327 (emphases added). Petitioner’s concessions concerning its willingness to rewrite the Petition is contrary to the requirements in SAS, which holds that “it's the petitioner, not the Director, who gets to define the contours of the proceeding.” SAS, 138 S. Ct. at 1355. Here, Petitioner chose to define the contours of this proceeding by presenting grounds based on an untranslated reference that did not meet the requirements of our rules. In accordance with the binding authority in SAS and from the Federal Circuit (cited above), the Board “will institute [an inter partes review] on all challenges raised in the petition or not institute at all (i.e., it will be a binary decision).” Ex. 3001, 1 (response to question A1), 8 (response to question D3). 2 Based on our analysis above, we determine that there was no abuse of discretion, nor did we overlook or misapprehend any evidence or controlling authority, in denying institution of an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Request for Rehearing is denied. 2 Exhibit 3001 is the “SAS Q&As” published by the Patent and Trademark Office, available at https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf. IPR2020-01542 Patent 6,585,212 B2 10 FOR PETITIONER: Wesley Whitmyer Robert Keeler Benjamin Luehrs WHITMYER IP GROUP LLC litigation@whipgroup.com rkeeler@whipgroup.com bluehrs@whipgroup.com FOR PATENT OWNER: David Tellekson Jonathan McMichael Jessica Kaempf Jonathan Tamimi FENWICK & WEST LLP dtellekson@fenwick.com jmcmichael@fenwick.com jkaempf@fenwick.com jtamimi@fenwick.com