Trials@uspto.gov
`Tel: 571–272–7822
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`Paper 24
`Entered: February 6, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.,
`Petitioner,
`
`v.
`
`SIMON NICHOLAS RICHMOND,
`Patent Owner.
`_______________
`
`IPR2014-00937
`Patent 8,362,700 B2
`_______________
`
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
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`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`

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`IPR2014-00937
`Patent 8,362,700 B2
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`I. INTRODUCTION
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`Petitioner filed a revised petition to institute an inter partes review of claims
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`1–11, 13–15, 24–34, and 45–47 of U.S. Patent No. 8,362,700 B2 (Ex. 1001, “the
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`’700 patent”). Paper 14, 1. We denied institution of inter partes review of all
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`challenged claims. Paper 22 (“Decision” or “Dec.”). Our denial of review these
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`claims was premised on Petitioner’s failure to offer a construction and analysis of a
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`term critical to understanding the scope of independent claims 1 and 45–47, “color
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`changing cycle,” and consequent failure to meet its burden under 37 C.F.R. §
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`42.104(b)(3)–(5). Dec. 7–8, 9–10. In its Request for Rehearing (Paper 23, “Req.
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`Reh’g”), Petitioner now offers new arguments, not found in its Petition, directed to
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`a “color changing cycle.” For this, and other reasons expressed below, we deny
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`Petitioner’s request and do not modify our Decision.
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`II. DISCUSSION
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`A. Applicable Standards of Review
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`An inter partes review may be instituted if it is determined that there is a
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`“reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).
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`When rehearing a decision on institution, the Board reviews the decision for an
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`abuse of discretion. 37 C.F.R. § 42.71(c). In pertinent part, 37 C.F.R. § 42.71(d)
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`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.
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`states:
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`IPR2014-00937
`Patent 8,362,700 B2
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`B. Summary of Our Prior Decision
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`In general, each of the challenged independent claims of the ’700 patent
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`recites a lighting device that produces light of varying color. In our Decision, we
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`noted that Petitioner failed to construe the term “color changing cycle.” Id. at 7, 9.
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`Indeed, we noted that Petitioner provided no cogent discussion of “color changing
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`cycle” or how the limitation is taught or suggested by the cited prior art. Instead,
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`Petitioner merely provided citations in a claim chart. Finding no discernable
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`discussion of “color changing cycle” in the prior art or in the Petition, we
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`determined that Petitioner failed to meet its burden to construe the claims and
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`explain how they read on the prior art. Id. at 7–8, 10. As a consequence, we
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`denied review of all challenged claims.
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`C. Petitioner’s Contentions
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`Petitioner requests that a particular member of this three-judge panel serve
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`as authoring judge. See Req. Reh’g at 1, n.1. This request is improper. Judges in
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`this proceeding are assigned according to Standard Operating Procedure 1 (rev. 13,
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`2009) (available at www.uspto.gov).
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`Petitioner contends that the Petition “defined” the term “color changing
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`cycle.” Id. at 2. Petitioner likewise contends that we should have “analyze[d] the
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`petition’s express definition of the plain meaning of ‘color changing cycle.’” Id. at
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`2–3 (citing to pages 21–22, 42, and 53 of the Petition). Petitioner provided no such
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`definition, however. Page 42 of the Petition contains a mere repetition of the claim
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`language. Pages 21–22 and 53 of the Petition are simply claim charts, which do
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`not explain how the claim terms read on the prior art.1 Further, Petitioner’s
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`1 If the claim charts did include any discussion as to how the claim term was to be
`construed, they would have been rejected as improper. See Paper 12, 2 (rejecting
`Petitioner’s first Petition as improper for containing arguments in the claim charts).
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`IPR2014-00937
`Patent 8,362,700 B2
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`purported interpretation of “color changing cycle”–“ramp up and down the
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`intensity of the light emitted over time by said at least two light sources”–merely
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`repeats the language in claims 1 and 46 preceding “color changing cycle.”
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`Accordingly, Petitioner does not persuade us we overlooked its “express
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`definition.”
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`Petitioner next contends that its analysis was “relying on and applying the
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`ordinary and customary meaning” of “color changing cycle,” and argues that it
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`need not construe every term. Id. at 3. We agree that a petitioner need not
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`construe explicitly every term, but that is not the issue here. The issue here is
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`whether Petitioner had made a threshold showing in its Petition. Petitioner failed
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`to include any cogent analysis involving the “color changing cycle” claim
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`limitation. Dec. 7–8, 9–10. The only treatment Petitioner gave that claim
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`limitation was to point to portions of the prior art in claim charts. The
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`correspondence between the claim limitation and the things described at the cited
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`portions of Petitioner’s claim chart, however, was unclear. Id. Petitioner may not
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`need to provide a claim construction if such correspondence is sufficiently clear,
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`but that was not the case here, and Petitioner failed to explain this insufficiency.
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`Petitioner then contends that we used a “narrow definition” of “color
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`changing cycle” in our Decision. Req. Reh’g. 9. Likewise, Petitioner contends
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`that the “sole basis” of our Decision to deny inter partes review as being based on
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`our purported “narrow definition.” Id. at 9–10. Both of these contentions are
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`mischaracterizations of our Decision. Our basis for denying the Petition, as
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`explained in the Decision, was Petitioner’s failure to address properly the “color
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`changing cycle” limitation of each independent claim. Dec. 8 (“It is Petitioner’s
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`burden to explain how the challenged claims are to be construed and how they read
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`IPR2014-00937
`Patent 8,362,700 B2
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`on the prior art.”); id. at 9 (“Petitioner . . . does not provide an explanation of how
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`it reads the ‘color changing cycle’ limitation on Richmond.”).
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`Petitioner now attempts to provide a late explanation for how the prior art
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`describes the “color changing cycle” limitation (id. at 4–9) and disputes our
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`analysis of the prior art in the Decision (id. at 9–13). Petitioner’s late explanation
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`is a new argument; we could not have overlooked arguments we had not seen in
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`the Petition. Likewise, Petitioner’s complaints about our analysis do not undo
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`Petitioner’s failure to address the claim language in the Petition. We have
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`reviewed our Decision and are not persuaded to modify it.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner has not shown that we abused our
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`discretion by not instituting inter partes review of the ’700 patent.
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`IPR2014-00937
`Patent 8,362,700 B2
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`
`Petitioners:
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`Mark Nelson
`mark.nelson@dentons.com
`
`Daniel Valenzuela
`daniel.valenzuela@dentons.com
`
`Lissi Mojica
`lissi.mojica@dentons.com
`
`Kevin Greenleaf
`kevin.greenleaf@dentons.com
`
`Patent Owner:
`
`Theodore Shiells
`tfshiells@shiellslaw.com
`
`Marcus Benavides
`marcusb@tlpmb.com
`
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