Wilco Marsh Buggies and Draglines, Inc.

Patent Trials and Appeals Board

Mar 4, 2021

IPR2020-00344 (P.T.A.B. Mar. 4, 2021)

Trials@uspto.gov Paper 12
Tel: 571-272-7822 Entered: March 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
EIK ENGINEERING SDN. BHD.,
Petitioner,

v.

WILCO MARSH BUGGIES & DRAGLINES, INC.,
Patent Owner.
____________

IPR2020-00344
Patent 6,918,801 B2
____________

Before LYNNE H. BROWNE, BARRY L. GROSSMAN, and
SCOTT C. MOORE, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
A. Summary of Procedural History
EIK Engineering Sdn. Bhd. (“Petitioner”) filed a petition, Paper 1
(“Petition” or “Pet.”), to institute an inter partes review of claims 1–18
(collectively, the “challenged claims”) of U.S. Patent 6,918,801 B2 (the
“’801 patent”). Wilco Marsh Buggies & Draglines, Inc. (“Patent Owner”)
filed a Preliminary Response. Paper 4 (“Prelim. Resp.).
Petitioner asserted 20 distinct grounds against the 18 claims in the
’801 patent. See Dec. 8–9; Pet. 5–7. In our Decision denying institution, we
held that:
The Petition fails to identify with particularity what disclosure is
relied on from each of the references in Grounds 7, 8, 11, and 12,
how it would be combined with the other disclosures, and why
the proposed combination would have been obvious to a person
of ordinary skill in the relevant technology. Without any
explanation as to what, how, and why the references would have
been combined in Grounds 7, 8, 11, and 12, we, and the Patent
Owner, are left to speculate as to the specific details of asserted
unpatentability based on combining the references to arrive at the
claimed invention.
See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined
that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the
proceeding sufficiently that we do not institute an inter partes review.”
Id. at 16–17.
On July 23, 2020, Petitioner filed a Request for Rehearing of our
Decision Denying Institution. See Paper 8 (“Req. Reh’g.”). Petitioner also
filed a request for Precedential Opinion Panel (“POP”) review of the
following “precedent-setting” question:
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Whether it is an abuse of discretion for the Board to deny
institution based solely on a perceived deficiency with only a
small minority of grounds addressing a small minority of
challenged claims, without giving any consideration to whether
the remaining grounds demonstrate a reasonable likelihood of
success and weighing them against the grounds and claims where
no reasonable likelihood of success has been shown.
See Ex. 3001. The request for POP review was denied. Paper 11.1 The
Order denying POP review further ordered that “the original panel maintains
authority over all matters, including considering the submitted rehearing
request.” Id. at 2. Accordingly, we now consider the submitted rehearing
request.
As we explain below, we determine we did not overlook or
misapprehend any matters, thus 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

1 The PTAB E2E docket system correctly identifies the denial of POP
review as Paper “11,” dated “October 26, 2020.” This document itself,
however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the
PTAB E2E docket system for this IPR proceeding is Patent Owner’s
“RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed
on August 21, 2020 See Paper 10. We note that Patent Owner was not
authorized to file this response. See Consolidated Office Patent Trial
Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The
opposing party should not file a response to a request for rehearing absent a
request from the Board.”). No such request was made by the Board.
Accordingly, Paper 10 will be expunged from this record and will not be
considered in deciding Petitioner’s Request for Rehearing.
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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
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). If an inter partes review is instituted, a final written decision
under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all
grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct.
1348 (2018).
Petitioner asserts “two independent bases” supporting its Request for
Rehearing. Req. Reh’g. 2. First, Petitioner asserts “the Petition clearly
identifies the specific disclosures relied on from each reference in Grounds
7–8 and 11–12 and explains precisely how and why a POSITA would have
combined the references as claimed.” Req. Reh’g. 2.
Second, Petitioner asserts “the Board clearly erred by failing to follow
the PTAB’s published guidance, whereby pursuant to SAS Institute the
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Board considers the number of claims and grounds that meet the reasonable
likelihood standard when deciding whether to institute inter partes review.”
Id.
We address each of these arguments below.
A. Compliance with 35 U.S.C. § 312(a)(3)
for Grounds 7, 8, 11, and 12
(Claims 6, 7, 16, 17)
According to Petitioner, “[t]he Board overlooked and
misapprehended” the specific disclosures relied on from each reference in
Grounds 7, 8, 11, and 12. Req. Reh’g. 2. Petitioner also asserts the Board
overlooked Petitioner’s explanation of “precisely how and why a POSITA
would have combined the references” when the Board “determined that the
Petition did not ‘identify with particularity the evidence that supports’ these
Grounds.” Id. Based on this argument, Petitioner concludes that “the sole
basis for denial was erroneous and reversal is required.” Id. We disagree.
Petitioner admits “[t]he Board correctly identified” Grounds 7, 8, 11,
12. Req. Reh’g. 2 (citing Dec. 8, 12, 13).
Because Petitioner uses a circuitous, scavenger hunt, format to
identify the asserted Grounds and the evidence supporting those grounds, it
is helpful to again identify the Grounds at issue, Grounds 7, 8, 11, and 12.
For Grounds 7 and 8, Petitioner asserts:
Grounds 5–8: Claims 6, 16 and 7, 17 are obvious in view of any
of Grounds 1, (Ground 5), 2 (Ground 6), 3 (Ground 7) or 4
(Ground 8) in further view of Soehnlen.
Pet. 6. Thus, Ground 7 is Ground “3” “in further view of Soehnlen.”
Accordingly, the circuitous route to defining Ground 7 requires that we
identify Ground 3. For Ground 3, Petitioner asserts:
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Grounds 2–4: Claims 1–5 and 9–15 are obvious in view of
Prestenbach and any of Soehnlen (Ground 2), Fujita (Ground 3)
or Zong (Ground 4).
Pet. 5. Thus, Ground 3 is obviousness based on Prestenbach and Fujita.
Because Ground 7 builds on Ground 3, Ground 7 is obviousness based on
Prestenbach, Fujita, “in further view of Soehnlen.” Id. at 6.2 Thus, as stated
in our Decision, Ground 7 asserts unpatentability based on combining
disclosures from three references. Dec. 12 (“Petitioner is relying on a
combination of three references in each of Grounds 7 and 8.”). We also
noted in our Decision that Petitioner’s expert testimony from Dr. Stevik was
consistent with our determination of the references asserted in Ground 7. Id.
(citing Ex. 1003 ¶ 78 (Dr. Stevick’s testimony “identifying Ground 7 as
‘Prestenbach and Fujita (Ground 3) and Soehnlen’”).
In its Request for Rehearing Petitioner does not dispute that Ground 7
asserts unpatentability of claims 6, 7, 16, and 17 based on Prestenbach,
Fujita, and Soehnlen. Req. Reh’g. 3 (“The Board correctly
identified . . . Ground 7 as the combination of Prestenbach, Fujita and
Soehnlen”).
Following an analysis identical to that followed above for Ground 7,
our Decision determined that:

2 Prestenbach is Ex. 1003 in this proceeding; Fujita is Ex. 1007; Soehnlen is
Ex. 1008. We recognize Patent Owner asserts that Fujita is not a valid
reference against the ’801 patent. See Prelim. Resp. 43 (asserting that
“Fujita is not an effective reference that can be used to defeat patentability of
the instant claims.”). The ultimate status of Fujita as a reference is not at
issue in considering compliance with § 312(a)(3) at this institutional stage of
the proceeding. What is at issue is the clarity and specificity of Grounds 7,
8, 11, and 12.
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• Ground 8 asserts unpatentability of claims 6, 7, 16, and 17
based on Prestenbach, Zong,3 and Soehnlen;
• Ground 11 asserts unpatentability of claims 7 and 17 based on
Prestenbach, Fujita, Soehnlen, and Kissick;4 and
• Ground 12 asserts unpatentability of claims 7 and 17 based on
Prestenbach, Zong, Soehnlen, and Kissick.
E.g., see Dec. 8. Petitioner does not dispute our identification of any of the
asserted Grounds 7, 8, 11, and 12. Req. Reh’g. 3.
In the context of Grounds 2–4, which are the foundation for Grounds
7 and 8, Petitioner acknowledges that each of Soehnlen, Fujita, and Zong
provide redundant disclosures of a spud assembly. Pet. 46 (“a POSITA
would have found it obvious to modify the vehicle of Prestenbach to include
spud assemblies in view of any of Soehnlen, Fujita or Zong . . . The spud
assemblies of each of those references retract the spuds entirely above the
bottom of the pontoons.”).
Petitioner also candidly admits that:
While Petitioner proposes 20 grounds, the analysis can be
grouped into five simple categories . . . The number of proposed
grounds is due to the fact that Petitioner relies on any of
Soehnlen, Zong or Fujita to supply the missing spud features of
Prestenbach (Grounds 2-4). However, the arguments for
combining those references with Prestenbach are essentially the

3 Zong is Ex. 1009. Petitioner prepared an annotated version of Zong,
Ex. 1010, which includes line numbers added to each page to facilitate
specific citation. See Pet. vii (List of Exhibits). Petitioner cites to Exhibit
1010 when citing Zong. See e.g., Pet. 13 (citing “Ex-1010, 4:28-29”). To
avoid any confusion, we also will cite to Exhibit 1010, which includes the
line numbers added by Petitioner.
4 Kissick is Ex. 1014
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same, and therefore do not require multiple, separate analyses
by the Board.
Pet. 79–80 (emphasis added).
Thus, Petitioner acknowledges that Soehnlen, Zong or Fujita are cited
for the repetitious, redundant, disclosure of the “missing spud features” in
Prestenbach. Our Trial Practice Guide suggests that “parties should avoid
submitting a repository of all the information that a judge could possibly
consider, and instead focus on concise, well-organized, easy-to-follow
arguments supported by readily identifiable evidence of record.”
Consolidated Trial Practice Guide November 2019 (“TPG”)5 at 39.
1. Grounds 7, 8
In our Decision, we stated:
Petitioner is relying on a combination of three references
in each of Grounds 7 and 8. . . . Thus, for Grounds 7 and 8,
Petitioner fails to identify, with particularity, how and why the
evidence supports a ground of unpatentability based on three
references for the challenge to each claim in Grounds 7 and 8, as
required by 35 U.S.C. § 312(a)(3).
Dec. 12. We further explained, that the “confusion” in Grounds 7 and 8 is
that Grounds 7 and 8 clearly rely on a combination of three references –
Prestenbach, Fujita, and Soehnlen (Ground 7), and Prestenbach, Zong, and
Soehnlen (Ground 8) – whereas elsewhere in the Petition Petitioner asserts
that Soehnlen, Zong, and Fujita are each alternatives (“Soehnlen, Zong or
Fujita”).” Id. at 12–13. We stated that for Grounds 7 and 8, “Petitioner fails
to identify, with particularity, how and why the evidence supports a ground

5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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of unpatentability based on three references for the challenge to each claim
in Grounds 7 and 8, as required by 35 U.S.C. § 312(a)(3).” Id. at 13.
In its Request for Rehearing, Petitioner takes specific issue with our
statements, as properly understood by Petitioner, that ‘“there is no analysis
or discussion as to how or why Soehnlen and Zong would both be combined
with Prestenbach in Ground 8 or Soehnlen and Fujita would both be
combined with Prestenbach in Ground 7.’” Req. Reh’g. 4. According to
Petitioner, “the Board overlooked and misapprehended the parts of the
Petition that clearly identify and explain the evidence that the Board found
missing.” Id. at 4. Petitioner asserts that “[t]he Petition explains how and
why Soehnlen and Fujita are both combined with Prestenbach.” Id. We
disagree. Indeed, the Request for Rehearing repeats the same inconsistent
arguments we found lacking in the Petition.
Petitioner asserts that we “overlooked, and did not apprehend, that the
Petition merely added Soehnlen to the existing combinations of art for
Grounds 3 and 4, respectively. This led to the Board not considering
Grounds 3 and 4 when evaluating Grounds 7 and 8.” Req. Reh’g 5
(emphasis added). Petitioner’s speculation is incorrect.
We agree that Ground 3 argued why the challenged claims in Ground
3 would have been obvious based on Prestenbach and Fujita, and that
Ground 4 argued why the challenged claims in Ground 4 would have been
obvious based on Prestenbach and Zong. We also agree with Petitioner that
Grounds 7 and 8 “merely added Soehnlen to the existing combinations of
art” for Grounds 3 and 4, respectively” (Id. (emphasis added)). Thus, to
meet Petitioner’s burden of proof, Grounds 7 and 8 needed to explain what
each of the proposed combinations of three references contributed to the
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asserted unpatentability of the claims challenged in Grounds 7 and 8, and
why it would have been obvious to combine selected disclosures from each
of the three references. We have not been directed to any persuasive
evidence that the Petition met this burden.
As we stated above, the Petition argues that each of Soehnlen, Fujita,
and Zong represent alternative disclosures of the “spud features” missing
from Prestenbach. See Pet. 79 (“Petitioner relies on any of Soehnlen, Zong
or Fujita to supply the missing spud features of Prestenbach (Grounds 2-4”).
Yet, in Grounds 7 and 8, Petitioner asserts Soehnlen and Fujita (Ground 7)
and Soehnlen and Zong (Ground 8) as cumulative disclosures of the spud
features missing from Prestenbach. While Soehnlen is a cumulative
reference in Grounds 7 and 8, these Grounds are argued as if Soehnlen is an
alternative, or substitute, for Fujita (Ground 7) and Zong (Ground 8). As
argued in the Petition, Fujita and Zong play no role in asserted Grounds 7
and 8, respectively.
The Request for Rehearing includes this same inconsistency as to
whether Soehnlen and Fujita (Ground 7), and Soehnlen and Zong (Ground
8) are alternative or cumulative. Req. Reh’g. 9 (citing Pet. 68–69). The
cited portion from the Petition (Pet. 68–69) includes the following statement:
“A POSITA would have easily understood how to substitute the spud
assemblies of Harada, Fujita or Zong, with the winch system of Soehnlen.”
Pet. 69 (emphasis added). Here, the Petition clearly and unequivalently
states that, in the context of Grounds 7 and 8, Soehnlen is a “substitute,” an
alternative, for Fujita and Zong, respectively, thereby resulting in only two
references being asserted. Yet, Petitioner admits that Grounds 7 and 8 each
include three references, Prestenbach, Fujita, and Soehnlen (Ground 7) and
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Prestenbach, Zong, and Soehnlen (Ground 8). E.g., Req. Reh’g 3 (“The
Board correctly identified . . . Ground 7 as the combination of Prestenbach,
Fujita and Soehnlen . . . . The Board also correctly identified . . . Ground 8
as the combination of Prestenbach, Zong and Soehnlen (citations omitted)).
Indeed, on the same page of the Request for Rehearing (page 9) where
Petitioner asserts Soehnlen is a “substitute” for either Fujita (Ground 7) or
Zong (Ground 8), Petitioner also asserts that the discussion in the Petition
provides the rationales “for further combining Soehnlen” with the other two
references on which Grounds 7 and 8 are based. See Req. Reh’g. 9.
Petitioner explains its asserted Grounds 7 and 8 as follows:
Claims 6, 7, 16, and 17 additionally require a specific type
of spud, namely a winch-type spud with a spud retainer (e.g., a
sleeve). Neither the combination of Prestenbach and Fujita
(Ground 3) nor Prestenbach and Zong (Ground 4) discloses this
feature. Thus, in Ground 7 the Petition further combines
Soehnlen, which teaches winch-type spuds, with the
combination of Prestenbach and Fujita (i.e., Ground 3), and in
Ground 8 the Petition further combines Soehnlen with the
combination of Prestenbach and Zong (i.e., Ground 4).
Id. at 7 (citations omitted; all emphases in original text). Petitioner has not
directed us to any persuasive argument in the Petition as to how or why the
spud of Fujita (Ground 7) or Zong (Ground 8) is modified by Soehnlen.
Petitioner’s argument appears to be that the winch-type spud with a spud
retainer disclosed in Soehnlen replaces entirely the spud disclosed in either
Fujita (Ground 7) or Zong (Ground 8). If Soehnlen replaces, or is an
alternative to, Fujita or Zong, then neither Fujita nor Zong play any role in
the asserted Grounds 7 and 8, which clearly require three references.
Petitioner’s chosen dependency of asserted Grounds 7 and 8 on
Grounds 3 and 4, respectively, created the result obtained. In Ground 3, for
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example, we agree that Petitioner asserted how and why Prestenbach would
have been modified with Fujita. In Ground 7, which builds on Ground 3, we
agree that Petitioner asserted how and why Prestenbach would have been
modified by Soehnlen. For Ground 7, however, the Petition fails to explain
what contribution Fujita adds to the proposed combination, and why.
Having asserted a Ground of unpatentability based upon combining three
references, Petitioner’s burden is to address the role each of the three
references plays in Petitioner’s asserted unpatentability. Petitioner failed to
meet this burden.
Moreover, the evidence itself does not support Petitioner’s argument.
Figure 3 from Fujita, reproduced below, is a perspective view of the
“spud attachment part” disclosed in Fujita. Ex. 1007, 6.6

6 Exhibit 1007 is a certified English translation of a published, unexamined,
Japanese patent application. The pages of the translation, including the
Translator’s Certificate of Translation, are numbered 1–14. Some, but not
all, of the text also includes paragraph numbers, such as [0001] (see e.g., Ex.
1007, 3). To facilitate precise citation we will cite to the page number and,
when available, also to the paragraph number.
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As described in Fujita, spuds 30 are mounted on the front and rear
parts of floats 20 so as to enable free vertical and undulating movement.
Ex. 1007, 5, ¶ 14. Bracket 31 is secured on the frontward and rearward parts
of top surface 20b of floats 20. Id. Guide cylinder 32 is attached to bracket
31 with pins 33 so as to enable “swinging freely in a vertical direction.” Id.
Spuds 30 are inserted into guide cylinder 32 “in a freely sliding manner,
permitting spuds 30 to slide against guide cylinder 32 without rotating. Id.
Cylinder 34 is mounted between top surface 20b of floats 20 and
guide cylinder 32. Id. at 5, ¶ 15. When cylinder 34 extends, guide cylinder
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32 is placed in a vertical position. Ex. 1007, 5, ¶ 15. When cylinder 34
contracts, guide cylinder 32 is placed in a horizontal position. Id.
Spud movement mechanism 35 is mounted on guide cylinder 32.
“For example, a motor drive type winch 36 can be mounted on the guide
cylinder 32, and a cable 37 that is wound and drawn out by the winch 36
can be connected to the tip part of the spuds 30.” Ex. 1007, 5, ¶ 16
(emphasis added). Using the winch, guide cylinder body 32 is placed in a
vertical position. Id.
Thus, Petitioners argument that Fujita does not disclose a winch-type
spud is not supported by the evidence. See Req. Reh’g. 7 (“Claims 6, 7, 16,
and 17 additionally require a specific type of spud, namely a winch-type
spud with a spud retainer (e.g., a sleeve.)”). Neither the combination of
Prestenbach and Fujita (Ground 3) nor Prestenbach and Zong (Ground 4)
discloses this feature.”) Contrary to Petitioner’s argument, Fujita clearly
discloses a winch-type spud (element 36) and spud retainer (element 32).
The clear disclosure in Fujita illustrates the precise issue we identified
– when Soehnlen is added to arguably modify Fujita and Prestenbach in
Ground 7, how are the references combined, and why. Fujita discloses a
winch-type spud (36) and a guide cylinder or “spud retainer” (32).
Petitioner acknowledges that a “spud retainer” is simply “a sleeve.” Req.
Reh’g. 7 (“ . . . a spud retainer (e.g., a sleeve.)”). Petitioner cites no
persuasive evidence or argument in the Petition that answers the question of
how is Fujita modified with Soehnlen in Ground 7, and why.
If Petitioner is merely replacing Fujita with Soehnlen, then Ground 7
is based on two references, not three, because Fujita plays no role in the
asserted Ground 7. Petitioner, however, agrees that Ground 7 requires a
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contribution from three references, but the Petitions fails to identify with the
particularity required by 35 U.S.C. § 312(a)(3) what is being modified in the
three references and why.
A similar analysis applies to Ground 8 and Zong.
Figures 1 and 2 from Zong are reproduced below. See Ex. 1010, 8, 9.

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Figure 1 of Zong is a front view of an amphibious irrigation channel
excavator. Ex. 1010, 3:5–6. Figure 2 of Zong is a left view of an
amphibious irrigation channel excavator. Id. at 3:7–8.
As described in Zong, the amphibious excavator includes “positioning
spuds” 10. Ex. 1010, 3:17. Positioning-spud moving hydraulic cylinders 2
are mounted on a left side and a right side of platform 15. Id. at 17–18.
Positioning spud 10 is used to float the amphibious excavator when the
water depth exceeds 1 meter, and can be used for positioning when the
positioning spud loses an adhesion force. Ex. 1010, 3:18–20. In addition,
during extension for positioning, the positioning-spud moving hydraulic
cylinders (unnumbered) can be used to drive positioning spuds 10 to move
along guide slots (unnumbered) on left pontoon 12 and right pontoon 17, so
as to drive the entire amphibious excavator to move forwards or backwards.
Id. at 3:20–23. When reaching a limited position of the guide slot, the
positioning spud is pulled up, extends downwards after being reset without
being loaded along the guide slot, and is then driven again. Id. at 3:23–25.
By means of cyclic operations, the amphibious excavator is driven to move
forward to compensate for the insufficient driving force provided by
“stokes” of track paddles. Id. at 3:25–26. Thus, spuds 10 perform a dual
function of fixing the amphibious vehicle in place or assisting with
propulsion. They perform these functions by means of hydraulic drive
cylinders and guide slots.
For Ground 8, the Petition does not identify what components of Zong
are being replaced with components of Soehnlen, and why. If Petitioner is
merely replacing Zong with Soehnlen, then Ground 8 is based on two
references, not three, because Zong plays no role in the asserted Ground 8.
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Petitioner, however, agrees that Ground 8 requires a contribution from three
references, but the Petitions fails to identify with the particularity required
by 35 U.S.C. § 312(a)(3) what is being modified in the three references and
why.
Grounds 7 and 8 clearly assert unpatentability based on three
references. Petitioner has not established that we overlooked or
misapprehended any evidence or argument in the Petition how and why the
evidence supports unpatentability based on three references for the challenge
to each claim in Grounds 7 and 8, as required by 35 U.S.C. § 312(a)(3).
2. Grounds 11 and 12
Grounds 11 and 12 are identical to Grounds 7 and 8, respectively,
except Grounds 11 and 12 further add a fourth reference, Kissick, to the
three references in each of Grounds 7 and 8. Req. Reh’g. 5 (“for Grounds
11 and 12, the Petition merely added Kissick to the combination of
references from Grounds 7 and 8 (discussed above), respectively.”).
Petitioner asserts that “when analyzing Grounds 11 and 12 the Board did not
consider the evidence and analysis provided for Grounds 7 and 8, which as
discussed above were based in-part on the evidence and analysis of Grounds
3 and 4.” Id. Because Grounds 11 and 12 build on Grounds 7 and 8, they
include the same infirmities discussed that infect claims 7 and 8.
3. Conclusion as to Compliance
with 35 U.S.C. § 312(a)(3)
for Grounds 7, 8, 11, and 12
Based on the analysis above, Petitioner has not established that we
abused our discretion, or misapprehended or overlooked any evidence or
controlling authority, in determining that the Petition fails to identify with
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particularity what disclosure of the cited references is relied on for Grounds
7, 8, 11, and 12, how the disclosures would have been combined with the
other disclosures, and why the proposed combination of references would
have been obvious to a person of ordinary skill in the relevant technology
B. Discretionary Denial
Petitioner’s second basis of an asserted abuse of our discretion is that
“the Board clearly erred by failing to follow the PTAB’s published
guidance, whereby pursuant to SAS Institute the Board considers the number
of claims and grounds that meet the reasonable likelihood standard when
deciding whether to institute inter partes review.” Req. Reh’g 2 (emphasis
added); id. at 13 (“The Board Committed Clear Error by Denying the
Petition Based Solely on Perceived Defects with Four Minor Grounds.”
(heading III.B) (emphasis added)). Petitioner further states the Board denied
the Petition “based on a perceived defect with four out of twenty grounds,
which address only four out of a total of eighteen challenged claims. The
Board did not consider the merits of the other grounds or weigh them against
the minority of grounds the Board took issue with.” Id. at 14.
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.”); Harmonic
Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
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permitted, but never compelled, to institute an IPR proceeding.”). “If the
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). “The Director bears the political responsibility of determining
which cases should proceed. While he has the authority not to institute
review on the merits of the petition, he could deny review for other reasons
such as administrative efficiency . . . .” Id.
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. 3003, 1 (response to question A1) 7; see also Ex. 3004, 1
(The PTO’s “Guidance on the impact of SAS on AIA trial proceedings,” 8
stating “As required by the [SAS] decision, the PTAB will institute as to all
claims or none. If the PTAB institutes a trial, the PTAB will institute on all
challenges raised in the petition.”).

7 Exhibit 3003 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.
8 Available at https://www.uspto.gov/patents-application-process/patent-
trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 27, 2018;
modified Sep. 21, 2020). The PTO recently revised its rules of practice for
instituting inter partes or post-grant reviews to require institution on either
all challenged claims, and all of the asserted grounds, presented in a petition
or none. See 85 FR 79120–79129 (amending, among other rules, 37 C.F.R.
§ 108). The amended Rule 108 applies to IPR petitions filed on or after
January 8, 2021. Id. Thus, the petition in the proceeding before us, filed on
December 23, 2019 (Paper 3), is governed by the cited Policy Guidance.
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In the context of an inter partes review, the Director’s discretion is
informed by 35 U.S.C. § 316(b), which requires the Director to “consider the
effect . . . on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to timely complete
proceedings.” 35 U.S.C. § 316(b); see also TPG at 58 (stating there may be
reasons where 35 U.S.C. § 316(b) “favors denying a petition even though
some claims meet the threshold standards for institution” under 35 U.S.C.
§ 314(a)).
In exercising our discretion on behalf of the Director to deny a
Petition, “the Board takes a holistic view of whether efficiency and integrity
of the system are best served by denying or instituting review.” See, e.g.,
Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20,
2020) (Precedential). Apple v. Fintiv was decided in the context of
evaluating the factors related to a co-pending parallel district court
proceeding. The same holistic view applies equally to situations where
some claims meet the requirements for instituting a trial and some do not.
While we consider the number of claims that fail to meet the statutory and
other requirements to institute an inter partes review, as well as the number
of claims that meet these requirements, there is no fixed threshold or ratio of
claims that meet the requirements compared to those that do not meet the
requirements that controls our determination, as suggested by Petitioner (see
Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its
“SAS Q&As”, which stated:
D3. Q: Will the Board institute a petition based on the
percentage of claims and grounds that meet the reasonable
likelihood standard, e.g., 50%?
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A: No. The Board does not contemplate a fixed threshold for a
sufficient number of challenges for which it will institute.
Instead, the panel will evaluate the challenges and determine
whether, in the interests of efficient administration of the Office
and integrity of the patent system (see 35 USC § 316(b)), the
entire petition should be denied under 35 USC § 314(a).
Ex. 3003, 8.
As explained in our TPG,
If a panel determines that a petition meets the standards for
institution in relation to fewer than all the challenges presented,
or where deficiencies in the petition (such as a failure to provide
a construction under 35 U.S.C. § 112(f)) affect only a portion of
the challenges presented, the panel will evaluate all the
challenges and determine whether, in the interests of efficient
administration of the Office and integrity of the patent system,
the entire petition should be denied.
TPG, 64. Where no trial is instituted, a decision to that effect will be
provided, as was done in this proceeding. “The Board expects that the
decision will contain a short statement as to why the standards were not met,
although this may not be necessary in all cases.” Id. at 64–65.
In our Decision, we provided a short statement that “[t]he lack of
particularity [concerning Grounds 7, 8, 11, and 12] infects the proceeding
sufficiently that we do not institute an inter partes review.” Dec. 16–17.
Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 (PTAB
March 6, 2019) (Informative) considered discretionary denial of a an IPR
petition under 35 U.S.C § 314(a) based on a failure to identify grounds with
particularity under 35 U.S.C § 312(a)(3). In Adaptics, the Board stated:
[t]he statutory requirement for particularity in a petition for IPR
takes on heightened importance when considered in conjunction
with SAS’s ‘all-or-nothing’ approach. Because the Board’s
practice, in light of SAS, is to institute on all grounds asserted in
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a petition, the Board may consider whether a lack of particularly
as to one or more of the asserted grounds justifies denial of an
entire petition.
Id. at 17 (emphasis added).
In Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper
9 at 10 (PTAB Nov. 7, 2018) (Informative), the Board determined that even
when a petitioner demonstrates a reasonable likelihood of prevailing with
respect to one or more claims, “institution of review remains discretionary.”
(citations omitted). Oronite also stated that Office Guidance “explains that
the Board may consider the number of claims and grounds that meet the
reasonable likelihood standard when deciding whether to institute inter
partes review under 35 U.S.C. § 314(a).” Id. at 19–11 (emphasis added)
(citing SAS Q&As, part D [see Ex. 3003, 8 in the proceeding before us].
Petitioner asserts that because the Board “denied the Petition based on
a perceived defect with four out of twenty grounds, which address only four
out of a total of eighteen challenged claims” we abused our discretion. Req.
Reh’g. 14. Petitioner also asserts that Grounds 7, 8, 11, and 12 are “Four
Minor Grounds” and these minor grounds should not infect the entirety of
this proceeding. Id. at 13 (Heading III.B).
As stated in our Decision, the lack of particularity in Grounds 7, 8, 11,
and 12 infected the entire proceeding justifying denial of institution of an
inter partes review. We disagree with Petitioner’s suggestion that our
institution determination merely weighs whether there are more grounds or
claims justifying determination than not. See Ex. 3003, 8.
Petitioner’s asserted reason for an admitted proliferation of repetitive
grounds is that although Petitioner “proposes 20 grounds, the analysis can be
grouped into five simple categories” Pet. 79. Petitioner also states that the
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arguments for relying on any of Soehnlen, Zong or Fujita to supply the
missing spud features of Prestenbach (Grounds 2-4) “are essentially the
same, and therefore do not require multiple, separate analyses by the Board.”
Id.
Petitioner’s concession 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 20 separate, distinct,
and admittedly repetitious grounds that both the Board, and Patent Owner,
would need to address. This does not promote the efficient administration of
the Office or of this proceeding. As stated in Adaptics, the Board may
consider whether a lack of particularly “as to one or more of the asserted
grounds justifies denial of an entire petition.” Adaptics, IPR2018-01596,
Paper 20 at 17. Here, we made the determination authorized in Adaptics that
the lack of particularity in the Petition justified denial of the entire Petition.
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.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

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PETITIONER

Stephen Zinda
J. David Cabello
James H. Hall
CABELLO HALL ZINDA, PLLC
stephen@chzfirm.com
james@chzfirm.com
david@chzfirm.com

PATENT OWNER

Charles W. Hanor
HANOR LAW FIRM PC
patents@hanor.com

Thomas S. Keaty
KEATY LAW FIRM LLC
tskeaty@keatypatentfirm.com