Trials@uspto.gov
`Tel: 571–272–7822
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`Paper 22
`Entered: May 1, 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.
`_______________
`
`IPR2015-00580
`Patent 7,429,827 B2
`_______________
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`Tel: 571–272–7822
`
`
`
`
`
`
`Paper 22
`Entered: May 1, 2015
`
`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.
`_______________
`
`IPR2015-00580
`Patent 7,429,827 B2
`_______________
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2015-00580
`Patent 7,429,827 B2
`
`
`
`I. INTRODUCTION
`
`Petitioner requests inter partes review of claims 31–34 of U.S. Patent
`
`No. 7,429,827 B2 (Ex. 1001, “the ’827 patent”). Paper 10, 1 (“Pet”).
`
`Accompanying the Petition is a timely Motion for Joinder under 35 U.S.C.
`
`§ 315(c) to a pending inter partes review of the ’827 patent. Pet. 1, 5; see
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`also Paper 11 (Petitioner’s Motion for Joinder (“Mot. Joinder”)); Jiawei
`
`Tech. (HK) Ltd. v. Simon Nicholas Richmond, Case IPR2014-00938 (PTAB
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`Dec. 16, 2014) (Paper 20, instituting inter partes review of claims 24–30 and
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`35 of the ’827 patent but not claims 31–34). Patent Owner filed an
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`opposition to Petitioner’s Motion for Joinder (Paper 20, “Opp. Mot.
`
`Joinder”), to which Petitioner filed a reply (Paper 21, “Reply Mot. Joinder”).
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`Patent Owner did not file a preliminary response.
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`We have jurisdiction under 35 U.S.C. § 314, which provides that
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`an inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” Upon consideration of the above-
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`mentioned papers, we do not institute an inter partes review on any
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`challenged claim, and we deny Petitioner’s Motion for Joinder.
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`A. Related Matters
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`The ’827 patent is subject to the aforementioned inter partes review,
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`IPR2014-00938. Pet. 1. We granted Petitioner’s petition for inter partes
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`review in IPR2014-00936 (U.S. Patent No. 7,196,477) and we denied
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`Petitioner’s petition for inter partes review in IPR2014-00937 (U.S. Patent
`
` 2
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`
`
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`
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`IPR2015-00580
`Patent 7,429,827 B2
`
`
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`No. 8,362,700). Pet. 4. The ’700 patent is a continuation-in-part of the ’827
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`patent, which is a continuation-in-part of the ’477 patent.
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`A number of cases pending before the U.S. District Court for the
`
`District of New Jersey were consolidated into Simon Nicholas Richmond v.
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`Jiawei Technology (HK) Ltd., Case No. 3:13-cv-1944 (MLC-DEA) (D.N.J.).
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`Paper 14, 3–4.
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`B. Asserted Ground and Prior Art
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`Petitioner asserts that claims 31–34 of the ’827 patent are
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`unpatentable in view of Chliwnyj,1 Wu,2 and Lau.3 Pet. 6.4
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`II. ANALYSIS
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`C. The First Petition—IPR2014-00938
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`In IPR2014-00938, we determined that, inter alia, Petitioner had not
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`shown a reasonable likelihood that claims 31–34 were unpatentable in view
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`of Chliwnyj and Wu, but that Petitioner had shown a reasonable likelihood
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`that claim 30, which depends from independent claim 27, is unpatentable in
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`view of Chliwnyj, Wu, and Lau. Jiawei Tech. (HK) Ltd., Case IPR2014-
`
`00938, Paper 20 at 20. We denied inter partes review of claims 31–34
`
`because those claims included a limitation—“color changing cycle”—that
`
`
`1 U.S. Patent No. 5,924,784, issued July 20, 1999 (Ex. 1105).
`2 U.S. Patent Application Publication No. 2003/0201874 A1, published Oct.
`30, 2003 (Ex. 1106).
`3 U.S. Patent No. 6,431,719 B1, issued Aug. 13, 2002 (Ex. 1107).
`4 Claim 31 depends from independent claim 27; claims 33 and 34 depend
`from independent claim 32.
`
` 3
`
`
`
`
`
`
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`IPR2015-00580
`Patent 7,429,827 B2
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`
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`we were unpersuaded was shown in Chliwnyj. Id. at 16–17. We noted that
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`Petitioner had not provided a claim construction of that limitation. Id.
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`D. The Second Petition—IPR2015-00580
`
`
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`In the instant proceeding, Petitioner provides proposed constructions
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`for the limitation “color changing cycle.” Pet. 17–21. Petitioner alleges
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`that, in view of its proposed constructions and the additional analysis
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`provided, it has shown a reasonable likelihood that claims 31–34 are
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`unpatentable over Chliwnyj, Wu, and Lau. Id. at 21–51. Petitioner further
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`alleges that these arguments are not substantially similar to the ones it
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`presented in IPR2014-00938. Id. at 51–52.
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`E. Analysis
`
`According to 35 U.S.C. § 325(d):
`
`In determining whether to institute or order a
`proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account
`whether, and reject the petition or request because,
`the same or substantially the same prior art or
`arguments previously were presented to the Office.
`
`As explained above, the prior art presented in the instant
`
`proceeding—Chliwnyj, Wu, and Lau—also was presented in the earlier
`
`proceeding, IPR2014-00938. The only difference is that Petitioner used the
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`specific combination of references to argue that claim 30, not claims 31–34,
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`are unpatentable. There is no question, however, that Chliwnyj, Wu, and
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`Lau were available to Petitioner at the time of filing the earlier Petition, and
`
`actually presented to the Office as prior art to the ’827 patent. Further,
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`Petitioner’s arguments in the instant proceeding are substantially similar to
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` 4
`
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`
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`IPR2015-00580
`Patent 7,429,827 B2
`
`
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`those it made in the earlier proceeding, relying on Lau instead of Chliwnyj
`
`for the “color changing cycle” limitation but presenting a similar analysis for
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`all other limitations of claims 31–34. Compare Pet. 21–51, with Jiawei
`
`Tech. (HK) Ltd., Case IPR2014-00938, Paper 13 at 31–39. Under the
`
`circumstances, we are persuaded to exercise our discretion under 35 U.S.C.
`
`§ 325(d) to deny the Petition because the same prior art and substantially the
`
`same arguments were presented previously to the Office.
`
`Further, the proposed ground directed to claims 31–34 amounts to a
`
`second bite at the apple for Petitioner—Petitioner offers now a claim
`
`construction it could have offered in IPR2014-00938. Petitioner alleges that
`
`Patent Owner admitted in district court that the claim term “varying colour,”
`
`found, for example, in independent claim 27, means substantially the same
`
`thing as “color changing cycle,” found in the claims now challenged.
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`Pet. 17–18; but see Opp. Mot. Joinder 7 (denying that Patent Owner
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`admitted such a construction). Petitioner asserts that Patent Owner in its
`
`Preliminary Response in IPR2014-00938 made statements “inconsistent”
`
`with its alleged prior position in district court and that Petitioner “could not
`
`have reasonably anticipated” this inconsistency. Mot. Joinder 6.
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`Petitioner’s argument is unconvincing. In general, a petitioner must
`
`propose those claim constructions necessary to support its burden of
`
`showing a reasonable likelihood of success. See 37 C.F.R. § 42.104(b)(3)
`
`(the petition must state “[h]ow the challenged claim is to be construed”); see
`
`also 35 U.S.C. § 314(a) (petitioner must show, in its petition, “a reasonable
`
`likelihood” of prevailing). Petitioner, however, did not propose a
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`construction for “color changing cycle” in its Petition in IPR2014-00938.
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` 5
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`IPR2015-00580
`Patent 7,429,827 B2
`
`
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`Although Petitioner states it relied on Patent Owner’s alleged admission in
`
`district court, the claim construction standard in district court is different
`
`from the claim construction standard applied to unexpired patents in inter
`
`partes reviews, and, as such, district court constructions are not binding in
`
`inter partes reviews. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs.,
`
`LLC, 778 F.3d 1271, 1278–82 (Fed. Cir. 2015). Lastly, there is a
`
`presumption against construing two different phrases in two claims to mean
`
`the same thing, and Petitioner provided no explanation in its Petition in
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`IPR2014-00938 as to whether that presumption applies or does not apply in
`
`the context of claims 31–34. See Seachange Int’l, Inc. v. C-Cor, Inc., 413
`
`F.3d 1361, 1368–69 (Fed. Cir. 2005) (“Although the doctrine is at its
`
`strongest ‘where the limitation sought to be ‘read into’ an independent claim
`
`already appears in a dependent claim,’ Liebel-Flarsheim Co. v. Medrad,
`
`Inc., 358 F.3d 898, 910 (Fed. Cir. 2004), there is still a presumption that two
`
`independent claims have different scope when different words or phrases are
`
`used in those claims, Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362,
`
`1365–69 (Fed. Cir. 2000); see also Tandon Corp. v. U.S. Int'l Trade
`
`Comm'n, 831 F.2d 1017, 1023 (Fed. Cir. 1987).”).5 Thus, if Petitioner
`
`wished us to construe “color changing cycle” to mean “varying colour” in
`
`IPR2014-00938 based on alleged statements or constructions made in
`
`
`5 In addition, we note that claim 27 recites a device to produce light of
`“varying colour,” whereas claim 31, which depends therefrom, further
`recites that the device produces “a continuous color changing cycle.” See
`Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
`(denouncing claim constructions that render phrases superfluous and
`selecting a construction that gave each phrase a distinct meaning).
`
` 6
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`IPR2015-00580
`Patent 7,429,827 B2
`
`
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`another proceeding, then it should have discussed those statements or
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`constructions and proposed a construction in IPR2014-00938. We are not
`
`persuaded that allowing Petitioner to begin a second proceeding to argue
`
`now a claim construction it knew of and allegedly relied on before, but never
`
`discussed, is an appropriate circumstance to grant inter partes review. See
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`ZTE Corp. v. ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. at
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`5–6 (PTAB Sept. 25, 2013) (Paper 12) (“The Board is concerned about
`
`encouraging, unnecessarily, the filing of petitions which are partially
`
`inadequate.”); see also 37 C.F.R. § 42.1(b) (directing us to construe our rules
`
`to ensure “the just, speedy, and inexpensive resolution to every
`
`proceeding”).
`
`In view of the above, we deny Petitioner’s Petition under 35 U.S.C.
`
`§ 325(d) and we deny Petitioner’s Motion for Joinder. See 35 U.S.C.
`
`§ 315(c) (requiring for joinder a determination that the petition “warrants the
`
`institution of an inter partes review under section 314”).
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`III. ORDER
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`In accordance with the foregoing, it is
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`ORDERED that an inter partes review is not instituted; and
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`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.
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` 7
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`IPR2015-00580
`Patent 7,429,827 B2
`
`
`
`PETITIONER:
`
`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
`
`
` 8
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