Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 11
`Entered: November 5, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CANON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00536
`Case IPR2014-005371
`Patent 7,315,406 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 This paper address issues in the listed cases. The parties are not authorized
`to use this heading style for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper 11
`Entered: November 5, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CANON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00536
`Case IPR2014-005371
`Patent 7,315,406 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 This paper address issues in the listed cases. The parties are not authorized
`to use this heading style for any subsequent papers.
`
`
`
`IPR2014-00536, IPR2014-00537
`Patent 7,315,406 B2
`
`
`
`INTRODUCTION
`Canon Inc. (“Petitioner”) filed three separate Petitions (Paper 1 in
`IPR2014-00535 (“IPR535”), IPR2014-00536 (“IPR536”), and IPR2014-
`00537 (“IPR537”)), each of which sought review of all 31 claims of U.S.
`Patent No. 7,315,406 B2 (“the ’406 patent”). In our Decision dated
`September 24, 2014 (Paper 9 in IPR535, IPR536, and IPR537), we (1)
`instituted inter partes review of all 31 claims of the ’406 patent in IPR535,
`but (2) did not institute review of the same claims of the same patent in
`IPR536 and IPR537. Petitioner now requests rehearing in IPR536 and
`IPR537 (Paper 10 in both cases) of our decision not to institute inter partes
`review of the ’406 patent in those cases. Petitioner bases its rehearing
`requests in those two proceedings on virtually the same arguments;
`accordingly, they will be addressed together. For the reasons that follow,
`Petitioner’s requests for rehearing are denied.
`The applicable standard for a request for rehearing is set forth in 37
`C.F.R. § 42.71(d), which provides in relevant part:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. 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, opposition, or a
`reply.
`
`
`
`
`2
`
`
`
`IPR2014-00536, IPR2014-00537
`Patent 7,315,406 B2
`
`
`
`ANALYSIS
`Petitioner argues that in not instituting inter partes review in IPR536
`and IPR537 we relied on 35 U.S.C. §315(d) and 37 C.F.R. §42.1, but
`“misapprehended” the applicability of each of those provisions to
`Petitioner’s multiple Petitions. (Paper 10, 5 in both cases.) Petitioner’s
`argument is unavailing as we did not base our decision on those cited
`provisions. Instead, we based our decision on 35 U.S.C. §314(a) and 37
`C.F.R. § 42.108(b). Thus, our Decision states:
`We decline to institute an inter partes review of claims
`1–31 on the grounds Petitioner advances based on Kaneko or
`Chizawa in IPR2014- 00536, and Hayashi in IPR2014-00537.
`See 35 U.S.C. §314(a); 37 C.F.R. § 42.108(b).
`
`Paper 9, 19. Although we also stated that our Decision was “consistent with
`the authority granted under 35 U.S.C. §315(d),” and with “the objective” of
`37 C.F.R. § 42.1, we did not rely upon those provisions.
`Petitioner recognizes that “[c]iting to 35 U.S.C. §314(a), the Board
`asserted that Congress has ‘given the Office discretion whether to institute a
`review, or not institute a review.’” (Paper 10, 4 in each case.) Petitioner,
`however, makes no argument that we misapprehended 35 U.S.C. §314(a),
`and makes no mention of 37 C.F.R. § 42.108(b). That rule provides that
`“the Board may deny some or all grounds for unpatentability for some or all
`of the challenged claims.”
`Petitioner further argues that “equitable considerations” require
`institution of inter partes review, referring to the fact that separate fees have
`been paid for the three proceedings. But Petitioner cites no authority
`
`3
`
`
`
`IPR2014-00536, IPR2014-00537
`Patent 7,315,406 B2
`
`
`
`supporting a proposition that the payment of fees requires granting of the
`petition, and we are aware of none. (See Paper 10, 5 in both cases.) Thus,
`Petitioner particularly argues that:
`Denying Petitioner the opportunity to have its grounds of
`rejection[2] considered when Petitioner has accounted for the
`cost of such consideration via separate petition fees is
`inherently unjust and ignores Congress’ intent of providing a
`forum for such a purpose.
`
`
`(Paper 10, 11.) Patent Owner’s argument fails because all three of its
`Petitions were reviewed by the Board. Our Decision makes clear that
`all of the arguments presented by Petitioner in its three Petitions
`challenging the same claims of the same patent were carefully
`considered. Patent Owner elected to organize its challenges to the
`’406 patent across three Petitions, thus gaining the benefit of 180
`pages to make its arguments, instead of the 60 pages provided for a
`single petition. In doing so, Petitioner chose to incur additional fees.
`Petitioner’s separate fee payments, however, did not assure them that
`three separate trials would be instituted.
`CONCLUSION
`Petitioner has not carried its burden of demonstrating that our
`Decision not to institute inter partes review in IPR2014-00536 and
`IPR2041-00537 misapprehended or overlooked any matters. 37 C.F.R. §
`42.71(d). For the foregoing reasons, Petitioner’s Request is DENIED.
`
`
`2 We note that Patent Owner incorrectly refers to “grounds of rejection.”
`This proceeding is not a patent examination and the panel does not make
`“rejections.”
`
`4
`
`
`
`IPR2014-00536, IPR2014-00537
`Patent 7,315,406 B2
`
`PETITIONER:
`Justin J. Oliver
`Daniel S. Glueck
`FITZPATRICK, CELLA, HARPER & SCINTO
`Canon406IPR@fchs.com
`
`PATENT OWNER:
`Brenton R. Babcock
`Ted M. Cannon
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2BRB@knobbe.com
`2tmc@knobbe.com
`
`Donald Coulman
`INTELLECTUAL VENTURES
`dcoulman@intven.com
`
`
`
`
`
`5
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