Trials@uspto.gov
`571-272-7822
`
` Paper 39
`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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper 39
`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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2015-00398
`Patent 6,066,584
`
`
`I. INTRODUCTION
`CeramTec GMBH (“Petitioner”) filed a Request for Rehearing (Paper
`38, “Request” or “Req.”) of our Final Written Decision (Paper 36, “Final
`Written Decision” or “Dec.”) holding that 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, Petitioner’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.
`Petitioner seeks reconsideration based on the contention that the
`evidence of record “established beyond question” that claims 8–10 are
`obvious. Req. 1. Petitioner requests that the Board reverse this aspect of the
`Final Written Decision and find claims 8–10 unpatentable.
`We have reviewed Petitioner’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 Petitioner.
`
`
`
`2
`
`
`
`IPR2015-00398
`Patent 6,066,584
`
`
`III. DISCUSSION
`Petitioner argues that the Board should have held claims 8–10
`unpatentable as obvious over the combination of Lin (Ex. 1002) and Yeh
`(Ex. 1004). Req. 1. Petitioner explains that “[w]hile Petitioner did not
`formally request a finding of unpatentability over this particular
`combination, the Board should have exercised its discretion to hold the
`claims unpatentable.” Id.
`Petitioner requested review of claims 8–10 as obvious over Yeh alone.
`Paper 2 (“Petition” or “Pet.”) 5; Dec. 5. Petitioner did not request review of
`claims 8–10 on any other grounds. Pet. 4–6. Petitioner requested review of
`claims 7, 11, 13, 32, and 37 under 35 U.S.C. § 103(a) as unpatentable over
`the combination of Lin and Yeh. Id. at 4. Petitioner did not include claims
`8–10 in this ground. Id.
`We instituted inter partes review of claims 8–10 under 35 U.S.C.
`§ 103(a) as allegedly unpatentable over Yeh. Paper 11, 19. We did not
`institute inter partes review of claims 8–10 on any other ground, and we
`specified that no other ground set forth in the Petition as to any challenged
`claim was authorized. Id.
`Petitioner now argues that claims 8–10 would have been obvious over
`Lin and Yeh. Req. 2. Petitioner states that the “inescapable conclusion from
`the record” is that Petitioner has met its burden of establishing by a
`preponderance of the evidence that claims 8–10 would have been obvious.
`Id. Petitioner relies, inter alia, on Patent Owner’s alleged admission that the
`limitations of claims 8 and 9 are disclosed by Lin and Yeh (id. at 2–3);
`Patent Owner’s alleged lack of dispute that Yeh discloses the pH limitation
`
`
`
`3
`
`
`
`IPR2015-00398
`Patent 6,066,584
`
`of claim 10 (id. at 3–4); and Patent Owner’s arguments that allegedly
`establish that pH was recognized as a result-effective variable (id. at 4–5).
`At the very least, this argument fails because Petitioner does not point
`to the place where each matter was previously addressed in a motion, an
`opposition, or a reply. Indeed, Petitioner cannot, as this ground was not
`raised in the Petition, was not instituted in the Decision on Institution, was
`not addressed by Patent Owner, and was not raised in the Reply. Petitioner’s
`marshalling of alleged admissions by Patent Owner directed to related issues
`is not persuasive. Additionally, in its Request, Petitioner presents numerous
`arguments that were not raised earlier, in an effort to persuade us that we
`should decide in its favor. Req. 2–5. We need not determine whether these
`arguments would have been persuasive if previously presented, because they
`were not so presented. These arguments are, therefore, not timely in a
`request for rehearing pursuant to 37 C.F.R. § 42.71(d).
`Moreover, we cannot, at this late stage in the proceeding, create out of
`whole cloth a new ground that Petitioner has not presented, and to which
`Patent Owner has not had a chance to respond. Our rules require us to
`“secure the just, speedy, and inexpensive resolution of every proceeding.”
`37 C.F.R. § 42.1(b). If we were to grant a request for rehearing on a ground
`not even presented in the Petition, the due process and other ramifications of
`such an action would be extensive. In the present proceeding, Patent Owner
`would be prejudiced. Other proceedings before the Board would be imbued
`with uncertainty as to which grounds, claims, or combinations of art,
`instituted or not, should be the focus of the parties’ arguments. In sum, if we
`were to grant Petitioner’s request, we would be overreaching in exercising
`our discretion.
`
`
`
`4
`
`
`
`IPR2015-00398
`Patent 6,066,584
`
`
`Petitioner also argues that the Board misapprehended the law
`regarding the scope of final written decisions. Req. 5. Petitioner states that
`“a final written decision in an IPR should not be limited only to the
`instituted grounds, but also should evaluate the record as a whole.” Id. at 6.
`Petitioner interprets 35 U.S.C. § 318(a) as standing for the proposition that
`the Board “shall issue a final written decision with respect to the
`patentability of any patent claim challenged by the petitioner,” rather than
`limiting the final written decision to the specific grounds identified in an
`IPR petition, although Petitioner cites no authority for this interpretation. Id.
`We disagree that “when the record developed during trial establishes
`that claims are unpatentable on grounds not specifically called out in the
`petition, failure to hold such claims unpatentable places form over
`substance.” Id. at 7. Rather, we perceive that we do, in fact, have limited
`discretion in holding a challenged claim unpatentable on grounds not
`identified in a petition or instituted in a decision. Although we are aware of
`panels having instituted inter partes review on grounds not presented in a
`Petition, Petitioner has not made us aware of any final decision that has
`created grounds that were not part of the trial. We have been cautioned by
`our reviewing court that “‘an agency may not change theories in midstream
`without giving respondents reasonable notice of the change’ and ‘the
`opportunity to present argument under the new theory.’” Belden Inc. v.
`Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Rodale Press,
`Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)). Creation of a new
`ground in a final decision or in a request for rehearing would violate both of
`those cautions. Although Petitioner contends that the “Patent Owner has had
`ample notice and opportunity to be heard” (Req. 8), we disagree.
`
`
`
`5
`
`
`
`IPR2015-00398
`Patent 6,066,584
`
`
`IV. CONCLUSION
`We have reviewed and considered the arguments in Petitioner’s
`Request and conclude that Petitioner 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,
`Petitioner uses its Request as an opportunity to argue a new ground, which
`we do not consider at this juncture. Petitioner’s Request also raises matters
`without demonstrating adequately where those matters previously were
`raised. Thus, Petitioner’s challenge does not meet the standard set forth for
`a request for rehearing.
`The request for rehearing is denied.
`
`
`
`
`
`6
`
`
`
`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
`
`
`
`
`
`7
`
`
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