Primera Technology, Inc.v.Accuplace

Patent Trial and Appeal Board

Aug 29, 2014

12147407 (P.T.A.B. Aug. 29, 2014)

Trials@uspto.gov Paper 52
571-272-7822 Entered: August 29, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PRIMERA TECHNOLOGY, INC.,
Petitioner,

v.

AUTOMATIC MANUFACTURING SYSTEMS, INC.,
D/B/A ACCUPLACE,
Patent Owner.
____________

Case IPR2013-00196
Patent 8,013,884 B2

Before JOSIAH C. COCKS, JUSTIN T. ARBES, and MIRIAM L. QUINN,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION
Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71(d)
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I. INTRODUCTION
Patent Owner requests reconsideration of the panel’s final written
decision (“Dec.”), dated July 17, 2014 (Paper 50), which determined that
all challenged claims (claims 1-20) of U.S. Patent No. 8,013,884 B2 (“the
’884 patent”) are unpatentable. Paper 51, “Rehearing Req.” We have
considered Patent Owner’s request, and we decline to modify the final
written decision.
II. STANDARD OF REVIEW
A party challenging a final written decision by way of a request for
rehearing must identify specifically all matters the party believes the Board
misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging
party bears the burden of showing that the decision should be modified. Id.
III. DISCUSSION
Patent Owner challenges the final written decision with respect to our
determination that Petitioner showed by a preponderance of the evidence
that claims 1 and 11 are unpatentable. In particular, Patent Owner takes
issue with our findings and conclusions regarding two claim limitations: the
“inputting” step including the “input device,” recited in claim 1; and the
“processing means” recited in claim 11. Rehearing Req. 3-12.
Patent Owner also challenges our determination of obviousness
because Petitioner’s conclusory arguments allegedly are insufficient to show
a rational underpinning supporting the legal conclusion of obviousness.
Rehearing Req. 12-13. We address each of these arguments in turn.
A. THE INPUTTING STEP
At the heart of Patent Owner’s contention is the argument that an
input device in Levine has not been shown to do both: (1) take information;
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and (2) transform the information. Rehearing Req. 5. The “inputting” step
requires “inputting information into an input device, the input device
transforming the information into an image.” Our determination that Levine
teaches this limitation is challenged because, in Levine, two distinct devices
perform one of these functions: the bar code reader takes in the information
and the computer transforms the information. Id. at 4-5. Patent Owner
alleges that during trial it presented evidence that claim 1 requires that the
same device perform these two functions. Id. (citing PO Response at 14, 24,
and 27, and the Declaration of Charles DeBoer, Ph.D., at ¶ 35, and also
relying on oral hearing excerpts, which are not evidence). Upon review of
those passages, we are not persuaded that this distinction, however
meritorious, was presented during trial.
For example, focusing on the evidence presented by Levine regarding
the “inputting” step, Patent Owner’s argument in two sentences is as
follows:
Levine describes that the “bar code on the test tube is
transformed into a numerical value by the computer.”
(Levine, 6:56-59). However, Levine is deficient for
failing to teach or suggest “inputting information into an
input device, the input device transforming the
information into an image for storage in a printing
memory as a stored image,” in combination with the
“repeating” step as recited in claim 1.
Paper 27 (“PO Resp.”) at 27 (emphasis added). Our review of this passage
points to Patent Owner’s attempt to overcome Levine’s teaching of
“inputting” with the contention that both the “inputting” and “repeating”
must have been disclosed by the same reference, a contention we rejected.
Dec. 43-44. Levine’s above-passage aside, no other evidence or argument
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was marshalled in the Patent Owner' Response to explain how Levine fails
to teach “inputting.” Indeed, Dr. DeBoer’s Declaration (Ex. 2001), that
Patent Owner urges us to consider, does not support Patent Owner’s
argument that Levine fails to teach “inputting” or the contention now
advanced on rehearing. Indeed, we found paragraph 35 of Dr. DeBoer’s
Declaration unpersuasive for the purpose it was cited in the Patent Owner
Response: an explanation of the transforming techniques known to a person
of ordinary skill in the art. Dec. 24-25. We do not find there, or anywhere
in the Patent Owner Response, an argument that the “input device,” if found
to be the bar code reader in Levine, does not also perform “transforming.”
Nevertheless, when we construed the “input device” to mean a
“structure for handling input of information” (Dec. 15), we rejected Patent
Owner’s contention that the “input device” was limited to the embodiment of
a processor because doing so would narrow improperly the claims to one
exemplary embodiment. Dec. 14-15. When stating that the specification
uses the words “processor” and “input device” distinctly and separately, we
supported our analysis that the “input device” was not limited to a
“processor.” We did not exclude, however, the embodiment of a processor
from the scope of the claimed “input device.” Indeed, we stated that the
term “refers to a structure for handling input of information: accepting and
transforming the information as recited.” Dec. 15. Therefore, our Decision
reflects a broad, but reasonable, interpretation of an “input device,” which
may include a processor as part of that structure.
Regarding whether Petitioner provided sufficient evidence that Levine
teaches the inputting step, and, hence, the transforming function, we found
that it did and stated so in the Decision at pages 42-43. In particular, we
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noted that Levine’s bar code reader example was one way of inputting.
Dec. 43. We relied, in that example, on Levine’s teaching that information
is transformed by the computer. Id. We also noted in our Decision the
argument Patent Owner presented regarding the transforming function—that
transforming was not performed because Levine failed to describe any
examples of scanning one bar code to obtain multiple images. Id. We
considered that argument and found it unpersuasive. We see no reason to
deviate from our Decision as Patent Owner has not pointed out anything we
overlooked or misapprehended.
To the extent our Decision is succinct in the analysis of how Levine’s
input device handles input of information by accepting the bar code
information and transforming the barcode information into an image for
printing, we reiterate that analysis here. Levine’s bar code reader and
computer together perform the functions of the claimed “input device” to
accept and transform information. We find this position clear from
pages 33-34 of the Petition, where it describes various examples of inputting
information into Levine’s printer, including using a “bar code reader” and a
“computer.” It is undisputed that the “computer” performs the transforming
function. Ex. 1004, col. 6, ll. 56-59. Therefore, we disagree with Patent
Owner’s argument on rehearing that “[n]o where does Petition[er] argue or
present evidence that the computer is an input device.” Rehearing Req. 7-8.
We also are not persuaded that the analysis in our Decision shows that
we shifted the burden, improperly, to Patent Owner. See id. (arguing that
setting aside the merits of the arguments presented by Patent Owner, the
Board failed to address Patent Owner’s primary argument that Petitioner
failed to prove that Levine teaches an input device). As stated above, we
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reviewed all the briefing and the evidence presented by Petitioner and Patent
Owner (including the testimony of its expert Dr. DeBoer) and found that
Levine teaches the inputting limitation in its entirety (with the input device
handling the input of information by accepting and transforming). Finally,
Patent Owner argues that we misapprehended or overlooked that attorney
argument is not evidence. Rehearing Req. 2, 8-9. In particular, Patent
Owner underscores that Petitioner is the party with the burden of proof, and,
as such, it failed to present expert testimony supporting the input device
arguments presented in the Petition. We are not persuaded that we
misapprehended or overlooked this issue in finding that Levine teaches the
inputting step and that claim 1 would have been obvious (based on the
combination of Hodai and Levine), or any other matter in our Decision.
Instead, we are guided by our reviewing court’s admonishment regarding
rigid rules preventing a fact finder from exercising common sense and the
flexibility accorded to our exercise of logic and judgment. See Perfect Web
Techs., Inc., v. Infousa, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“Nor are
expert opinions always a prerequisite, for ‘[i]n many patent cases expert
testimony will not be necessary because the technology will be easily
understandable without the need for expert explanatory testimony.” (internal
citations omitted)). Furthermore, we reject the notion that the failure to
present expert testimony on a position presented in a petition necessarily
compels us to ignore or excuse that position. See Rehearing Req. 9 (arguing
that we should ignore or excuse Petitioner’s interpretation of the input
device because of the lack of expert testimony or other supporting evidence).
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Accordingly, Patent Owner has not shown that we overlooked or
misapprehended the evidence presented regarding the “inputting” step
recited in claim 1.
B. “PROCESSING MEANS”
Patent Owner argues that because Petitioner did not explain how the
claimed “processing means” in claim 11 drives the tape feeder, by finding
that Hodai teaches the limitation, we misapprehended or overlooked
Petitioner’s burden. Rehearing Req. 9. In that regard, Patent Owner urges
that such burden does not “disappear or shift to Patent Owner when
petitioner fails to meet its evidentiary burden.” Id. We are not persuaded by
Patent Owner’s characterization of our determination of the “processing
means” as improper burden shifting. Our statutory mandate provides for us
to determine, following institution of an inter partes review, the patentability
of any patent claim challenged in the review. 35 U.S.C. § 318(a). In cases
where the evidence is easily understandable, such as in this case, we may
make findings regarding what the references would have taught to a person
of ordinary skill in the art without the need for either party characterizing the
reference or proffering expert testimony in that regard. Furthermore, Patent
Owner, other than relying on Petitioner bearing the burden of proof, does not
cite any statutory authority for what it proposes: that the Board cannot make
independent findings of fact regarding the teachings in a prior art reference
of record. As a part of our analysis, we found that Hodai teaches a motor
that drives the tape feeder, consistent with our statutory mandate that we
determine the patentability of a patent claim challenged by Petitioner.
Decision 45-46. Moreover, our finding is consistent with the evidence
presented by Petitioner that Hodai teaches “[t]he thermal transfer ink
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ribbon 31 is provided from a motor driven roller 31b.” Paper 1 (“Pet.”) at 35
(citing Hodai, ¶¶ 18-20, fig. 2). We do not see in the request for rehearing
that Patent Owner challenges substantively any error in our finding.
Accordingly, we are not persuaded that we misapprehended or overlooked
the appropriate burden of Petitioner in this proceeding.
C. RATIONALE UNDERPINNING THE CONCLUSION OF OBVIOUSNESS
Regarding the obviousness rationale, Patent Owner argues that we
misapprehended or overlooked that Petitioner relied on attorney argument,
rather than, for instance, declaration testimony. Rehearing Req. 12. For the
reasons provided above, we are not persuaded that we misapprehended or
overlooked anything in determining that the rationale provided by Petitioner
was reasonable, regardless of whether it was supported by expert testimony.
See Perfect Web, 587 F.3d at 1329 (“We therefore hold that while an
analysis of obviousness always depends on evidence that supports the
required Graham factual findings, it also may include recourse to logic,
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion.”)
Furthermore, we are not persuaded by Patent Owner’s argument that
because Petitioner did not state affirmatively the level of ordinary skill in the
art, there was no evidence from which we could conclude that the claims
would have been obvious by a preponderance of the evidence. Id. at 13. We
relied on the evidence presented in the record, which includes the testimony
of Patent Owner’s declarant and the references themselves. As stated in our
Decision, the level of ordinary skill in the art usually is evidenced by the
references themselves. See Dec. 31; Okajima v. Bourdeau, 261 F.3d 1350,
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1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
Accordingly, we are not persuaded by Patent Owner’s arguments that
we misapprehended or overlooked that Petitioner’s arguments and evidence
presented are insufficient to support an obviousness conclusion.

IV. ORDER
In consideration of the foregoing, Patent Owner’s Request for
Rehearing is hereby denied.

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PETITIONER:

Walter C. Linder
Faegre Baker Daniels LLP
2200 Wells Fargo Center
90 S. Seventh Street
Minneapolis, MN 55402-3901
Telephone: (612) 766-7000
Fax: (612) 766-1600
patentdocketing@faegrebd.com

PATENT OWNER:

Sean L. Ingram (Lead Counsel)
NOVAK DRUCE CONNOLYY BOVE + QUIGG LLP
1000 Louisiana, 53
rd
Floor
Houston, TX 77002
Telephone: (561) 847-7800
Fax: (713) 456-2836
sean.ingram@novakdruce.com

Henry A. Petri, Jr. (Back-up counsel)
henry.petri@novakdruce.com