Shaw Industries Group, Inc.v.Automated Creel Systems, Inc.Download PDFPatent Trial and Appeal BoardJul 24, 201412253398 (P.T.A.B. Jul. 24, 2014) Copy Citation 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 2 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 3 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 4 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 5 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 6 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 7 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 Copy with citationCopy as parenthetical citation