Trials@uspto.gov
`571-272-7822
`
` Paper 40
`Entered: February 10, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CERAMTEC GMBH,
`Petitioner,
`
`v.
`
`CERAMEDIC LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00398
`Patent 6,066,584
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper 40
`Entered: February 10, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CERAMTEC GMBH,
`Petitioner,
`
`v.
`
`CERAMEDIC LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00398
`Patent 6,066,584
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2015-00398
`Patent 6,066,584
`
`
`I. INTRODUCTION
`CeraMedic LLC (“Patent Owner”) filed a Request for Rehearing
`(Paper 37, “Request” or “Req.”) of our Final Written Decision (Paper 36,
`“Final Written Decision” or “Dec.”) in which claims 1–5, 7, 11–13, 15–17,
`19–21, 23, 30–38, 52, and 53 of U.S. Patent No. 6,066,584 (Ex. 1001, “the
`’584 patent”) are unpatentable. For the reasons that follow, Patent Owner’s
`Request for Rehearing is denied.
`II. THE REQUEST FOR REHEARING
`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, an opposition, or
`a reply.
`
`Thus, a request for rehearing is not an opportunity merely to disagree with
`the Board’s assessment of the arguments or weighing of the evidence, or to
`present new arguments or evidence.
`Patent Owner requests rehearing to address two issues in our Final
`Written Decision: first, whether Lin (Ex. 1002) discloses two different
`“dispersing methods,” and second, whether our determination that claim 32
`was obvious was erroneous.
`We have reviewed Patent Owner’s Request and carefully considered
`all the arguments presented, including those not addressed specifically in
`this Decision. For the following reasons, we are not persuaded that the
`Board misapprehended or overlooked arguments or evidence with respect to
`the contentions asserted by Patent Owner.
`
`
`
`2
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`IPR2015-00398
`Patent 6,066,584
`
`
`III. DISCUSSION
`(A) “Dispersing Methods”
`Patent Owner argues that the Board overlooked previously presented
`evidence that Lin’s first “dispersing method” did not “cause α-Al2O3 powder
`to become or continue being distributed throughout an aqueous solution.”
`Req. 4–6. Patent Owner also argues that the Board overlooked previously
`presented evidence that Petitioner did not allow Patent Owner to cross-
`examine Petitioner’s declarant about Lin’s “stirring” as a third “dispersing
`method.” Id. at 6–10. Finally, Patent Owner argues that reversal on
`grounds 1, 2, 5, and 10 is warranted, as those grounds relied on Lin’s
`disclosure of two different dispersing methods. Id. at 10–12.
`(i) “throughout”
`In our Final Written Decision, we maintained our earlier construction
`of the term “dispersing α-Al2O3 powder . . . in an aqueous solution to create
`a mixture” to mean “causing α-Al2O3 powder to become or continue being
`distributed throughout an aqueous solution” and “dispersing methods” to
`mean “methods that cause α-Al2O3 powder to become or continue being
`distributed throughout an aqueous solution.” Dec. 6. We noted that the
`parties discussed and applied this construction, but that neither party
`presented arguments or evidence persuasive to modify it in light of the
`record developed at trial. Id.
`Patent Owner’s argument here addresses the portion of our claim
`construction that concerns the term “throughout.” Req. 4. Patent Owner
`argues that “merely introducing α-Al2O3 powder into an aqueous solution is
`not a ‘dispersing method’ because it does not necessarily cause α-Al2O3
`powder to become or continue being distributed throughout the aqueous
`
`
`
`3
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`IPR2015-00398
`Patent 6,066,584
`
`solution.” Id. at 5. Patent Owner appears to argue that if the α-Al2O3
`powder is not fully dispersed throughout the solution, the dispersing method
`of Lin does not meet the claim construction. Id. This approach to the
`argument is not only newly presented, but also misunderstands our claim
`construction. Nowhere in our claim construction do we require any
`particular degree of dispersion.
`Patent Owner had the opportunity and the available pages to develop
`its arguments as to whether the term “throughout” should have a particular
`meaning. Patent Owner’s Request also does not indicate where this
`argument was raised in its Patent Owner Response, and we are unable to
`determine where this argument may have been presented in the Patent
`Owner Response. Paper 20 (“PO Resp.”) Rather, to the extent the argument
`was raised in the Patent Owner Response, it is found within Patent Owner’s
`“intensive dispersing methods” argument and is directed to a different issue.
`Id. at 8. Patent Owner’s assertion that it raised this argument in its Motion
`for Observations is unavailing. The Motion for Observations is not a proper
`vehicle in which to present new arguments. Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“An observation
`should be a concise statement of the relevance of identified testimony . . . .
`An observation (or response) is not an opportunity to raise new issues, re-
`argue issues, or pursue objections.”). It would be unfair to Petitioner to
`consider a potentially dispositive issue that Patent Owner raised (if at all) for
`the first time at trial in a paper filed after Petitioner’s last substantive brief,
`namely, Petitioner’s Reply. Thus, Patent Owner’s arguments are newly
`presented in the Request for Rehearing, and we need not consider them.
`
`
`
`4
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`IPR2015-00398
`Patent 6,066,584
`
`
`To the extent that Patent Owner disagrees with our claim construction
`or our treatment of Lin’s dispersing methods, our consideration of the
`arguments and evidence presented by each party concerning the “dispersed”
`issue included consideration of the entirety of the record before us, including
`the parties’ arguments, declarant testimony, and the parties’ arguments at
`oral hearing. Dec. 5–6, 8–12. Our Final Written Decision need not “address
`every argument raised by a party or explain every possible reason supporting
`its conclusion,” so long as it “provide[s] an administrative record showing
`the evidence on which the findings are based, accompanied by the agency’s
`reasoning in reaching its conclusions.” See Synopsys, Inc. v. Mentor
`Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (citing Human Dev.
`Ass’n v. NLRB, 937 F.2d 657, 669 (D.C. Cir. 1991); In re Sang Su Lee, 277
`F.3d 1338, 1342 (Fed. Cir. 2002)). In our Final Written Decision, we noted
`that Lin expressly states that “Al2O3 powder was dispersed in deionized
`water,” and explained how this led to our determination that Lin discloses
`two different dispersing methods. See, e.g., Dec. 9 (emphasis added). As
`such, we did not overlook the evidence we are alleged to have overlooked;
`instead, we considered the arguments and evidence presented by each party
`as a whole in determining that Petitioner had met its burden of persuasion.
`Mere disagreement with our conclusion is not a proper basis for rehearing.
`Because Patent Owner’s argument that reversal on grounds 1, 2, 5,
`and 10 is warranted also relies on this same premise that Lin does not
`disclose two different dispersing methods, we decline to grant the request for
`rehearing on this argument for the same reasons given above.
`
`
`
`5
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`IPR2015-00398
`Patent 6,066,584
`
`
`(ii) Cross-examination
`In our Final Written Decision, as acknowledged by Patent Owner, we
`discussed the Board’s position on the “stirring” issue identified by Patent
`Owner in its Request. Dec. 9–12, Req. 6–7 (citing portions of the Final
`Written Decision addressing the “stirring” issue). Thus, Patent Owner’s
`argument that we overlooked the “stirring” issue contravenes its own
`acknowledgment that the Board discussed the issue in the Final Written
`Decision. Req. 7.
`Patent Owner now presents a new argument that we overlooked that
`claim 32 was challenged on obviousness grounds, whereas claim 1 was
`challenged on anticipation grounds, and that combining different
`embodiments is improper for anticipation. Id. Patent Owner, however, does
`not point out where this matter was previously raised. Patent Owner also
`states that “Patent Owner did not have notice of Petitioner’s late-breaking
`position” regarding the stirring issue. Id. As we noted in our Final Written
`Decision, however, the argument was raised in the Petition, albeit regarding
`a different claim; balancing the requirements of our statutes and rules
`regarding replies with the requirements of APA compliance and due process,
`we determined that the issue was fairly raised in the Petition, and that Patent
`Owner was given a fair opportunity to address its import in this proceeding.
`Dec. 11–12. Moreover, even taking into account Patent Owner’s arguments,
`Lin lists stirring immediately after listing “preparing a dilute dispersed
`aqueous solution” and “followed by ultrasonication.” Ex. 1002, 37. In
`discussing slip casting on page 40, Lin specifies that aqueous suspensions
`“were prepared by the same procedure as in the previous section” on page
`37. Id. at 40. Petitioner’s expert opined that one of ordinary skill in the art
`
`
`
`6
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`IPR2015-00398
`Patent 6,066,584
`
`would understand that initial dispersion, ultrasonication, and stirring were
`applied in both processes. Ex. 1020 ¶ 10; Tr. 72:21–74:4.
`Patent Owner further argues that the Board overlooked Petitioner’s
`work product objections and instructions not to answer to Dr. Clarke during
`his cross-examination, which should have led the Board to disregard Dr.
`Clarke’s testimony or deeply discount the weight of his testimony. Req. 8.
`In our Final Written Decision, we noted that Patent Owner was able to cross-
`examine Dr. Clarke and submit a Motion for Observations on Cross-
`Examination. Dec. 12; see also Paper 29; Ex. 2013, 116–125. We also note
`that Patent Owner could have sought relief from the Board during the
`deposition if the objection was improper, or could have requested permission
`to file a motion soon thereafter. During oral hearing, we further explored
`Patent Owner’s opportunity to cross-examine Dr. Clarke. Tr. 28:14–18,
`34:6–24; 71:16–72:12 (identifying the specific question to which Petitioner
`objected and additional testimony by Dr. Clarke on related issues). We
`considered all of these factors in rendering our Final Written Decision. Dec.
`12. We do not find accurate Patent Owner’s representation that it had “no
`opportunity” to cross-examine Dr. Clarke about the “stirring” issue,
`particularly as Petitioner’s observations on the same are part of its Motion
`for Observations. Req. 8; Paper 29, 5–6.
`(B) Claim 32
`Patent Owner argues that the Board erred in concluding that claim 32
`was obvious over Yeh and Lin, for two reasons. Req. 12. First, Patent
`Owner argues that the Board “erred in holding that Yeh’s purportedly
`superior green density would have motivated a person of ordinary skill in the
`art to combine Yeh.” Id. Second, Patent Owner argues that the Board
`
`
`
`7
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`IPR2015-00398
`Patent 6,066,584
`
`“incorrectly stated that CeraMedic ‘did not address the benefits of good
`dispersion and mixture aging pointed out in the petition.’” Id. at 13.
`As a preliminary matter, Patent Owner does not indicate where its first
`argument was previously presented. Accordingly, we are not persuaded that
`the argument is timely. Nevertheless, Petitioner presented evidence in its
`Petition that Yeh’s green density would have been 70% as part of its
`argument that one of ordinary skill in the art would have combined Lin with
`Yeh. Pet. 24; see also Ex. 1004, 316, 427. Petitioner also presented
`evidence in its Petition that Lin’s green density would have been 61–63%.
`Pet. 17 (citing Ex. 1013 ¶ 38). In its Reply, Petitioner elaborated that Yeh’s
`70% green density was higher than the 61% green density of compacts
`produced using Lin’s powder. Reply 19; Ex. 1020 ¶¶ 40, 43–45. Based on
`this argument and evidence, we determined that one of ordinary skill in the
`art, appreciating Yeh’s higher green density, would have been motivated to
`combine Yeh with Lin in this regard. Patent Owner’s disagreement with our
`conclusion does not persuade us otherwise. Although Patent Owner refers to
`the arguments in its Response regarding measurements of green density in
`Yeh (Req. 12–13 (citing Resp. 13–16)), these arguments were presented in
`the context of a discussion of Yeh alone, and do not address the issue of
`whether a person of ordinary skill in the art would have been motivated to
`combine Lin and Yeh.
`Regarding Patent Owner’s second argument, we noted in our Final
`Written Decision that Patent Owner’s arguments in its Response did not
`appear to address Petitioner’s arguments that good dispersion and mixture
`aging are beneficial (Dec. 31); rather, they addressed the drawbacks of
`adding Yeh’s additional dispersing steps to Lin. Thus, we acknowledged
`
`
`
`8
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`IPR2015-00398
`Patent 6,066,584
`
`that the parties made separately targeted arguments that in certain instances
`argued past each other. Our Final Written Decision focused on and
`discussed what we found to be the persuasive reasoning on this issue. Id. at
`30–31. Again, Patent Owner’s disagreement with our conclusion does not
`persuade us otherwise.
`
`IV. CONCLUSION
`We have reviewed and considered the arguments in Patent Owner’s
`Request and conclude that Patent Owner has not carried its burden of
`demonstrating that the Board misapprehended or overlooked any matters in
`rendering the Final Written Decision. 37 C.F.R. § 42.71(d). Rather, Patent
`Owner uses its Request as an opportunity to re-argue positions with which
`we disagreed in our Final Written Decision. Merely disagreeing with our
`analysis or conclusions does not serve as a proper basis for a request for
`rehearing. Patent Owner also uses its Request to raise matters without
`adequately demonstrating where those matters previously were raised. Thus,
`Patent Owner’s challenge does not meet the standard set forth for a request
`for rehearing.
`The Request for Rehearing is denied.
`
`
`
`
`
`9
`
`
`
`IPR2015-00398
`Patent 6,066,584
`
`
`FOR PETITIONER:
`
`Gina N. Shishima
`Thomas Owens
`Mark T. Garrett
`FULBRIGHT & JAWORSKI LLP.
`gina.shishima@nortonrosefulbright.com
`tom.owens@nortonrosefulbright.com
`mark.garrett@nortonrosefulbright.com
`
`
`
`FOR PATENT OWNER:
`
`Kevin K. McNish
`John M. Desmarais
`Andrew G. Heinz
`DESMARAIS LLP.
`kmenish@desmaraisllp.com
`jdesmarias@desmaraisllp.com
`aheinz@desmaraisllp.com
`
`
`
`
`
`10
`
`
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