Shaw Industries Group, Inc.v.Automated Creel Systems, Inc.

Patent Trial and Appeal Board

Jul 24, 2014

12253398 (P.T.A.B. Jul. 24, 2014)

Trials@uspto.gov Paper 13
571-272-7822 Entered: August 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SHAW INDUSTRIES GROUP, INC.
Petitioner

v.

AUTOMATED CREEL SYSTEMS, INC.
Patent Owner
____________

Case IPR2013-00132 (JTA)
Patent 7,806,360 B2

Before JOSIAH C. COCKS, JUSTIN T. ARBES, and
BRIAN J. McNAMARA, Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION
Petitioner‟s Request for Rehearing
37 C.F.R. § 42.71
Case IPR2013-00132
Patent 7,806,360 B2

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Introduction
Petitioner filed a request for rehearing (Paper 12, “Rehearing
Request”) of the Board‟s decision (Paper 9, “Decision”) instituting an inter
partes review of claims 1-3 and 5-21 of Patent 7,806,360 B2 (the “‟360
patent”). In the Decision, the Board ordered a trial on six grounds of
unpatentability asserted in the Petition, including Petitioner‟s asserted
ground that claims 1-3, 5, 8-10, 12, 14, 19, and 20 are anticipated by
German Patent Application Publication No. DE 3429153 A1
(“Münnekehoff”) (Ex. 1005) under 35 U.S.C. § 102(b). Dec. 37. Petitioner
contends that the Board erred in not also instituting a trial on claim 4 as
anticipated by Münnekehoff. For the reasons stated below, Petitioner‟s
request is denied.

Analysis
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 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).
Claim 4 recites that “said annular turning surface and said upper
turning surface [of the common guide] are separated by a distance
corresponding to the diameter of said packages.” Based on the how the term
“corresponding” is used in the claim and the Specification, the Board
Case IPR2013-00132
Patent 7,806,360 B2

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interpreted “distance corresponding to the diameter of said packages” to
mean a distance that is derived from the diameter of a fully loaded package.
Dec. 13-15. The Board determined that Petitioner did not provide sufficient
and credible evidence that the relevant distance in Münnekehoff (i.e., the
distance separating balloon thread guides 14 and the 90-degree turn in thread
guiding tubes 21) is derived from the diameter of a fully loaded package, as
opposed to, for example, the level of the respective package. Id. at 23-25.
Consequently, Petitioner failed to establish a reasonable likelihood of
prevailing on its assertion that claim 4 is anticipated by Münnekehoff. Id.
Petitioner makes three arguments. First, Petitioner argues that the
Board erred in interpreting “distance corresponding to the diameter of said
packages” and should have adopted Petitioner‟s proposed interpretation of
“a distance that is related to, or is a function of, the diameter of a package.”
Rehearing Req. 1-3. Specifically, Petitioner contends that the distance
recited in claim 4 is a “„dependent‟ variable” in that its value depends on the
diameter of a fully loaded package “based on a specific mathematical or
physical relationship.” Id. at 3. According to Petitioner, that relationship in
turn is “described by a function,” and, therefore, the claimed distance can be
considered a “function of” the fully loaded package‟s diameter. Id.
We are not persuaded that the Board abused its discretion in
interpreting the language of claim 4. Petitioner cites no support in the
Specification of the ‟360 patent (or otherwise) for its alleged “mathematical
or physical relationship” that is “described by a function” on which the
claimed distance depends. See id. at 3. Rather, as explained in the Decision,
the Specification uses the term “corresponding” to mean that the distance is
in some way dependent on, or “derived from,” the diameter of a fully loaded
Case IPR2013-00132
Patent 7,806,360 B2

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package. See Dec. 14-15; Ex. 1002, col. 9, ll. 27-38, Fig. 19B. Petitioner
does not explain sufficiently how an unspecified mathematical function
representing the relationship between two values equates with the situation
where one of the values is “derived from” the other.
Petitioner also argues that the Board‟s claim interpretation analysis is
inconsistent. Rehearing Req. 9-10. According to Petitioner, the Board took
a broad view in determining initially that the term “corresponding” is not
used in the Specification to require an equal or approximately equal
relationship between distance and package diameter, but later took a narrow
view when assessing the prior art by concluding that the claim language
“fails to read on [distance] differences of less than a factor of two.” Id.
(citing Dec. 15, 24). The Board, however, never interpreted claim 4 as
precluding any particular difference (a factor of two or otherwise). Rather,
the Board concluded only that the broadest reasonable interpretation of the
claim language, when read in light of the Specification, is a distance that is
derived from the diameter of a fully loaded package, and that Petitioner had
not provided sufficient and credible evidence in its Petition that the relevant
distance in Münnekehoff was so derived. Petitioner has not demonstrated an
abuse of discretion in the Board‟s claim interpretation.
Second, Petitioner argues that even under the Board‟s interpretation,
Münnekehoff anticipates claim 4 and the Board abused its discretion by
“failing to consider all of the relevant facts.” Id. at 4-12. Petitioner
contends that the length of a thread guiding tube 21 in Münnekehoff is
derived from the diameter of a fully loaded package based on a “two-step
derivation.” Id. at 5-8, 11-12. In the first step, because there is “minimal
clearance space” between standby bobbins 11, it can be “inferred that the
Case IPR2013-00132
Patent 7,806,360 B2

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vertical position of the bobbins on the removable cartridge depends upon a
fully loaded package diameter for which Munnekehoff‟s system is
designed.” Id. In the second step, Münnekehoff imposes a “design
constraint” on the location of balloon thread guides 14 to be at the axis of
each bobbin, which “necessitates the dependency” of the distance separating
balloon thread guides 14 and the 90-degree turn on the diameter of a fully
loaded package. Id.
The Board could not have misapprehended or overlooked something
not explained adequately in the initial Petition. Petitioner addressed claim 4
on page 12 of its Petition and in paragraph 22 of Dr. Youjiang Wang‟s
declaration (Ex. 1001), neither of which argued the “two-step” positioning
process Petitioner now submits. Instead, Dr. Wang‟s analysis was based on
the boundaries of the removable sections in Münnekehoff; specifically, Dr.
Wang opined that a “large bobbin” would need to be lowered or raised
“vertically in order for the bobbin to stay within the upper/lower boundaries
of the removable sections.” Ex. 1001 ¶ 22. A request for rehearing is not an
opportunity to supplement the initial Petition and make arguments that were
not made in an initial petition. See 37 C.F.R. § 42.104(b)(4) (a petition must
identify “[h]ow the construed claim is unpatentable under the statutory
grounds identified” and “where each element of the claim is found in the
prior art patents or printed publications relied upon”). In any event, even
considering Petitioner‟s “two-step” argument, the argument is not persuasive
that the length of a thread guiding tube in Münnekehoff is derived from the
diameter of a fully loaded package, as opposed to, for example, the level
(i.e., positioning) of the respective package.
Case IPR2013-00132
Patent 7,806,360 B2

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Third, Petitioner argues that even if claim 4 is not anticipated, the
claim is unpatentable over Münnekehoff and Patent 5,323,982 (“Ligon
‟982”) under 35 U.S.C. § 103(a) because Ligon ‟982 discloses eyelets
separated by the claimed distance. Rehearing Req. 12-14. Petitioner,
however, did not assert this ground of unpatentability in its Petition, instead
arguing only that Münnekehoff discloses the distance limitation of claim 4.
See Dec. 7-8; Pet. 12. It could not have been an abuse of discretion not to
include a ground of unpatentability that Petitioner never asserted.
Nevertheless, Petitioner contends that “[j]udicial efficiency and
judicial resource allocation” would be served by adding the new ground to
the instant inter partes review. Rehearing Req. 13-14. Petitioner cites no
authority permitting addition of a new ground of unpatentability via a
request for rehearing. Moreover, adding a new ground at this stage of the
proceeding would be unfair to Patent Owner, as it had no opportunity to
respond to Petitioner‟s argument in its preliminary response. Thus, we
decline Petitioner‟s request.
Petitioner has not carried its burden of demonstrating an abuse of
discretion in the Board‟s decision not to include Petitioner‟s asserted ground
of anticipation of claim 4 based on Münnekehoff in the instant inter partes
review. In consideration of the foregoing, it is hereby ORDERED that
Petitioner‟s request for rehearing is denied.
Case IPR2013-00132
Patent 7,806,360 B2

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PETITIONER:

W. Karl Renner
Hyun Jin In
FISH & RICHARDSON P.C.
3200 RBC Plaza
60 South Sixth Street
Minneapolis, MN 55402
axf@fr.com
apsi@fr.com

PATENT OWNER:

Scott Smiley
Mark C. Johnson
THE CONCEPT LAW GROUP
200 South Andrews Avenue
Suite 100
Fort Lauderdale, FL 33301
Info@ConceptLaw.com
mjohnson@conceptlaw.com