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`Paper 27
`Entered: January 13, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`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.
`_______________
`
`IPR2014-00938
`Patent 7,429,827 B2
`_______________
`
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and BARRY L.
`GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`
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`
`
`IPR2014-00938
`Patent 7,429,827 B2
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`I. INTRODUCTION
`
`Petitioner filed a revised petition to institute an inter partes review of claims
`24–35 of U.S. Patent No. 7,429,827 B2 (Ex. 1001, “the ’827 patent”). Paper 13, 1.
`We instituted an inter partes review of claims 24–30 and 35 of the ’827 patent but
`denied review of claims 31–34. Paper 20 (“Decision” or “Dec.”). Our denial of
`review of claims 31–34 was premised on Petitioner’s failure to offer a construction
`of a term critical to understanding the scope of claims 31–34, “color changing
`cycle,” and consequent failure to meet its burden under 37 C.F.R. § 42.104(b)(3)–
`(5). Dec. 16–17. In its Request for Rehearing of claims 31–341 (Paper 22, “Req.
`Reh’g”), Petitioner now offers new arguments, not found in its Petition, directed to
`a “color changing cycle.” For this, and other reasons expressed below, we deny
`Petitioner’s request and do not modify our Decision.
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`II. DISCUSSION
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`A. Applicable Standards of Review
`
`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).
`When rehearing a decision on institution, the Board reviews the decision for an
`abuse of discretion. 37 C.F.R. § 42.71(c). In pertinent part, 37 C.F.R. § 42.71(d)
`states:
`
`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,
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`1 Petitioner includes claim 35 in its request, but we consider Petitioner’s inclusion
`of claim 35 to be a typographical error because we instituted review on claim 35.
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`IPR2014-00938
`Patent 7,429,827 B2
`an opposition, or a reply.
`B. Summary of Our Prior Decision
`
`In general, the challenged claims of the ’827 patent (claims 24–35) recite a
`“lighting device to produce light of varying colour.” Claims 31–34, at issue in this
`Request for Rehearing, further specify that the device produces “a continuous color
`changing cycle.” In our Decision, we separately addressed claims 31–34 from
`claims 27–29 and 35 because of “the differences in scope” between the claims.
`Dec. 15. With respect to claims 31–34, we noted that Petitioner failed to construe
`the term “color changing cycle.” Id. at 16. Indeed, we noted that Petitioner
`provided no cogent discussion of “color changing cycle” or how the limitation is
`taught or suggested by the cited prior art. Instead, Petitioner merely provided
`citations in a claim chart. Finding no discernable discussion of “color changing
`cycle” in the prior art or in the Petition, we determined that Petitioner failed to
`meet its burden to construe the claims and explain how they read on the prior art.
`Id. at 16–17. As a consequence, we denied review of claims 31–34.
`
`C. Petitioner’s Contentions
`
`Petitioner first contends that Patent Owner admitted that the plain and
`ordinary meaning of “cycle” does not require repetition. Req. Reh’g. 6–9. First,
`we did not adopt any construction of the term by Patent Owner. In addition, we
`did not construe “color changing cycle,” let alone construe it to require any
`particular form of repetition. Instead, we simply stated that the term “cycle”
`implied some pattern, and that the prior art to which Petitioner cited admonishes
`patterns. Dec. 16–17. Accordingly, the form of repetition, if any, implied by the
`term “cycle,” was not germane in our reason to deny institution of claims 31–34.
`What was germane was Petitioner’s failure to address the claim term sufficiently.
`Id. at 16 (“Petitioner does not provide a claim construction of ‘color changing
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`IPR2014-00938
`Patent 7,429,827 B2
`cycle,’ . . . nor does Petitioner explain how it believes that term reads on what
`Chliwnyj discloses”); id. at 17 (“It is Petitioner’s burden to explain how the
`challenged claims are to be construed and how they read on the prior art”). In view
`of the above, Petitioner’s arguments regarding repetition are unpersuasive.
`At footnote 2 of the Request for Rehearing, Petitioner offers new evidence
`regarding how “cycle” may read on the prior art. Req. Reh’g. 3. We could not
`have misapprehended or overlooked evidence that was not part of the record at the
`time of the Decision, and Petitioner has not shown good cause for considering the
`new exhibit, which existed well before Petitioner filed its Petition, at this stage of
`the proceeding. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,768 (Aug. 14, 2012) (in deciding a request for rehearing, “[e]vidence not
`already of record at the time of the decision will not be admitted absent a showing
`of good cause”).
`At pages 8–12 of the Request for Rehearing, Petitioner offers new
`arguments regarding the construction of “color changing cycle” and new
`arguments regarding how this term may read on the prior art. The proper time to
`have made these arguments was in the Petition, not in the Request for Rehearing.
`Because we could not have overlooked arguments not presented in the Petition,
`Petitioner’s arguments here do not persuade us we overlooked any arguments in
`the Petition.
`At page 12, Petitioner argues that the prior art reference Chliwnyj does not
`teach away from repeating cycles. Our Decision characterized Chliwnyj as
`“admonish[ing] prior art lights that have a perceptible ‘pattern.’” Dec. 16–17. To
`the extent that this passage in our Decision may be mischaracterized, we hereby
`clarify that this passage is not characterizing Chliwnyj as “teaching away” from a
`“color changing cycle.” As Petitioner correctly points out, mere discussion of
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`IPR2014-00938
`Patent 7,429,827 B2
`prior art as inferior is not a teaching away. Req. Req’g. 12 (citing In re Gurley, 27
`F.3d 551, 552–553 (Fed. Cir. 1994)). Notwithstanding, we remain convinced that
`Petitioner’s failures in its Petition under 37 C.F.R. § 42.104(b)(3)–(5) regarding the
`“color changing cycle” limitation justify our decision to deny review of claims 31–
`34.
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`III. CONCLUSION
`
`For the foregoing reasons, Petitioner has not shown that the Board abused its
`discretion by not instituting inter partes review of claims 31–34.
`
`For PETITIONER:
`
`Mark C. Nelson
`Daniel Valenzuela
`Lissi Mojica
`Kevin Greenleaf
`DENTONS US LLP
`mark.nelson@dentons.com
`daniel.valenzuela@dentons.com
`lissi.mojica@dentons.com
`kevin.greenleaf@dentons.com
`iptdocketchi@dentons.com
`
`For PATENT OWNER:
`
`Theodore F. Shiells
`SHIELLS LAW FIRM, P.C.
`tfshiells@shiellslaw.com
`admin@shiellslaw.com
`
`Marcus Benavides
`THE LAW PRACTICE OF MARCUS BENAVIDES
`marcusb@tlpmb.com
`
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