Trials@uspto.gov
`571-272-7822
`
`Paper 40
`
`Entered: September 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAMELBAK PRODUCTS, LLC,
`Petitioner,
`
`v.
`
`IGNITE USA, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01034
`Patent 8,863,979 B2
`____________
`
`Before SALLY C. MEDLEY, KEN B. BARRETT, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`

`
`IPR2015-01034
`Patent 8,863,979 B2
`
`
`I. INTRODUCTION
`Patent Owner, Ignite USA, LLC, filed a Request for Rehearing (Paper
`38, “Req. Reh’g”) of the Final Written Decision (Paper 37, “Final Dec.”) in
`which we concluded that Petitioner, CamelBak Products, LLC, had shown
`by a preponderance of the evidence that claim 7 of U.S. Patent No.
`8,863,979 B2 (Ex. 1001, “the ’979 patent”) is unpatentable under 35 U.S.C.
`§ 103(a).1 Req. Reh’g 1. Patent Owner argues that our Decision with
`respect to claim 7 should be modified because we misapprehended or
`overlooked Patent Owner’s argument and evidence showing that: (1) the
`proposed modification to Oosterling does not permit a 90 degree pivot as
`claimed and (2) a person of ordinary skill in the art would not have been
`motivated to undertake the proposed modification. Id. The Request for
`Rehearing is denied.
`
`II. STANDARD OF REVIEW
`A request for rehearing must identify specifically all matters the party
`
`believes we misapprehended or overlooked, and the place where each matter
`was addressed previously in a motion, an opposition, or a reply. 37 C.F.R.
`§ 42.71(d).
`
`III. ANALYSIS
`A. The Board Did Not Misapprehend or Overlook Patent Owner’s
`Argument or Evidence Showing that Petitioner’s Proposed Modification
`Does Not Allow a 90 Degree Pivot
`Patent Owner contends that we overlooked or misapprehended the
`
`argument presented in the Patent Owner Response that modifying the shape
`
`1 In the Final Written Decision, we also concluded that Petitioner had shown
`by a preponderance of the evidence that claims 1, 3, 6, and 10–15 are
`unpatentable under 35 U.S.C. § 102(b), but Patent Owner does not seek
`rehearing with respect to those claims. Final Dec. 3, 40; Req. Reh’g. 1.
`2
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`

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`IPR2015-01034
`Patent 8,863,979 B2
`
`or size of Oosterling’s spring 40 would not permit the lever to pivot 90
`degrees as claimed, due to interference between the lever and the side of the
`lid and/or opening. Req. Reh’g 5; PO Resp. 43. Patent Owner explains that
`“Oosterling discloses the ‘spring element 40’ as extending up from the
`bottom edge 47 of the lever 37 . . . The lever 37 extends down from shaft
`supports 33 to the bottom edge 47.” Req. Reh’g 6 (citing Ex. 1003, 9:19–
`26, Figs. 8–9).
`
`Patent Owner provides an annotated version of Oosterling’s Figure 9,
`reproduced below.
`
`
`According to Patent Owner, in the annotated version of Figure 9, the yellow
`shading purportedly identifies a portion of lever 37, the blue shading
`purportedly identifies the spring 40, and the red shading purportedly
`identifies the side of the lid 4. Id. at 7. Patent Owner argues that “if only the
`‘shape or size of the spring 40 [blue portion]’ is altered, the portion of the
`lever 37 extending between shaft support 33 and spring arm 40 [yellow
`portion] will impact (hit) the side of the lid where the opening 34 is located
`[red portion],” preventing the lever from pivoting 90 degrees. Id.
`
`3
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`IPR2015-01034
`Patent 8,863,979 B2
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`This argument provides substantial elaboration upon the argument
`
`presented in the Patent Owner Response. Compare Req. Reh’g 5–8, with
`PO Resp. 43 (lines 8–12). Indeed, Patent Owner’s explanation that
`Oosterling’s spring 40 comprises only the portion extending upwardly from
`bottom edge 47 (i.e., the blue shaded portion), while the lever includes the
`portion extending downwardly from shaft support 33 to bottom edge 47 (i.e.,
`the yellow shaded portion), is articulated for the first time in this Request. A
`Request for Rehearing is not an opportunity to develop new arguments or
`expand upon arguments made cursorily in a prior paper. Put simply, we
`could not have overlooked or misapprehended arguments or evidence not
`presented or developed cogently by Patent Owner in the first instance in the
`Patent Owner Response.
`
`In any event, this newly developed argument is inconsistent with
`Patent Owner’s prior description of Oosterling’s spring 40. For example, the
`Patent Owner Response states that Oosterling discloses “an integral V-
`shaped spring element 40.” PO Resp. 3 (emphasis added); see also Pet. 12.
`Patent Owner’s current argument that Oosterling’s spring includes only the
`rightmost leg of that “V-shape[]” does not comport with Patent Owner’s
`prior representation. Additionally, understanding the spring to include both
`legs of the “V-shape[]” appears necessary for the disclosed structure to store
`and release energy in its operation as a spring. See Ex. 1003, 8:34–9:3
`(disclosing that “spring element 40 presses against the inside of the beaker 2
`when the lid 4 has been placed on the beaker 2” and “presses the lever 37
`toward the center of the beaker 2”), Figs. 8c–8d, Fig. 9. Accordingly, we
`understand Oosterling’s spring to be “V-shaped,” i.e., to include both the
`
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`IPR2015-01034
`Patent 8,863,979 B2
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`yellow and blue portions in Patent Owner’s annotated Figure 9, consistent
`with Patent Owner’s prior representation.
`
`With respect to claim 7, Petitioner’s proposed modification of
`Oosterling includes, for example, “changing the shape or size of the spring
`(40)” to “allow the lever 37 to pivot approximately 90 degrees.” Final Dec.
`31 (citing Pet. 42; Ex. 1008 ¶ 33d).2 The shape or size of the entire “V-
`shaped” spring, i.e., both the yellow and blue portions in Patent Owner’s
`annotation, is subject to modification. Therefore, we remain unpersuaded by
`Patent Owner’s argument that changing the shape or size of the spring is
`insufficient to permit 90 degree pivoting due to impact of the lever with the
`side of the lid and/or opening. Patent Owner provides no technical
`reasoning or evidence to show that the lever would impact the side of the lid
`and/or opening when the entire V-shaped spring is modified as proposed.
`See Final Dec. 33–34. Indeed, Patent Owner’s argument in this regard
`suggests only that if the right leg of Oosterling’s V-shaped spring is
`modified, the left leg of the V-shaped spring may impact the side of the lid.
`See Req. Reh’g 7. However, the modification proposed by Petitioner
`involves changing the shape or size of Oosterling’s spring 40, which
`includes both legs of the V-shape. Therefore, Patent Owner’s argument is
`unpersuasive.3
`
`
`2 Patent Owner complains that it has not been afforded an opportunity to
`rebut Petitioner’s Reply, which discussed the proposed modification. Req.
`Reh’g 4 n.3. As Patent Owner acknowledges, however, our Final Written
`Decision did not rely on Petitioner’s Reply. Id. at 4. Patent Owner has
`neither the necessity nor the right to respond to Reply arguments or evidence
`upon which we do not rely.
`3 Patent Owner notes that our Final Written Decision quotes incorrectly
`Patent Owner’s argument as contending that the lever will “impact[] the size
`5
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`IPR2015-01034
`Patent 8,863,979 B2
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`Patent Owner makes similar arguments with respect to the lever’s
`
`purported impact with seal 46. Req. Reh’g 8–9. As above, Patent Owner’s
`argument assumes that only a portion of Oosterling’s spring, i.e., the blue
`portion in Patent Owner’s annotation, is modified. However, this is not the
`modification proposed by Petitioner. As explained in our Final Written
`Decision, Patent Owner’s arguments fail to account for a spring that has
`been modified in shape or size as proposed.4 Final Dec. 34.
`B. The Board Did Not Misapprehend or Overlook Patent Owner’s
`Argument or Evidence Showing that A Person of Ordinary Skill in the Art
`Would Not Have Been Motivated to Undertake
`Petitioner’s Proposed Modification
`Patent Owner contends that we overlooked Patent Owner’s showing
`
`that the proposed modification to the shape or size of Oosterling’s spring
`would have “detrimental effects” on Oosterling’s lid design, “including
`precluding proper attachment of the lid 4 to the beaker.’” Req. Reh’g 10.
`This argument was not overlooked; rather, Patent Owner has not explained
`persuasively how a modified spring would preclude proper lid attachment.
`As discussed above and in our Final Written Decision, we are unpersuaded
`
`of the lid and/or opening.” See Final Dec. 33–34 (emphasis added); Req.
`Reh’g 5–6 n.5; PO Resp. 43. This is a typographical error. We note,
`however, that our Final Written Decision addresses Patent Owner’s actual
`argument that the lever will impact the “side” of the lid and/or opening.
`Final Dec. 33–34 (“Patent Owner provides no technical reasoning to explain
`how a spring modified as proposed by Petitioner would be ineffective to
`pivot 90 degrees due to impact with . . . the side[] of the lid or opening.”).
`4 Similarly, the cited testimony of Mr. Steininger is unpersuasive because it
`only addresses a change in the spring’s “length,” where the proposed
`modification involves a change to the spring’s “shape or size.” Req. Reh’g.
`9 (citing Ex. 2006, 278:22–284:21); Final Dec. 31. This testimony does not
`show that the claimed pivoting would be prevented with a change in shape
`or size.
`
`6
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`IPR2015-01034
`Patent 8,863,979 B2
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`that Oosterling’s lever would impact the side of Oosterling’s lid, opening, or
`seal, because Patent Owner’s argument in this regard does not account for a
`modified spring as proposed. See Final Dec. 33–34. Further, as explained in
`our Final Written Decision, we are unpersuaded by Patent Owner’s
`contention that the proposed modification would eliminate the disclosed
`interference fit between Oosterling’s lever and opening. Compare Req.
`Reh’g 10–11, with Final Dec. 33 n. 10. Patent Owner has not presented any
`technical analysis or compelling evidence showing that changing the shape
`or size of Oosterling’s spring would eliminate the interference fit disclosed
`by Oosterling. See PO Resp. 42–46 (arguing that changing the size of
`Oosterling’s opening would eliminate the interference fit, but making no
`such argument with respect to a change in shape or size of the spring).
`
`Patent Owner also contends that we overlooked several additional
`arguments that were addressed specifically in our Final Written Decision.
`Compare Req. Reh’g 11 (contending we overlooked Patent Owner’s
`showing that the proposed modification would require “substantial
`reconstruction and redesign”), with Final Dec. 34–35 (addressing this
`argument); compare Req. Reh’g 12–14 (contending we overlooked Patent
`Owner’s showing that a person of ordinary skill in the art would not have
`modified Oosterling to improve cleaning access), with Final Dec. 32–33
`(addressing this argument);5 Req. Reh’g 14–15 (contending we overlooked
`
`5 Patent Owner alleges that we relied on “irrelevant, speculative testimony”
`regarding “user perception,” which Patent Owner sought to exclude. Req.
`Reh’g 13–14; Final Dec. 32–33 (citing Ex. 2006, 248:22–249:7). We
`disagree with this characterization of the cited testimony. We do not
`understand Dr. Slocum’s testimony to concern the “perception” of users with
`respect to cleanliness; rather, Dr. Slocum discusses whether a limited lever
`pivot is sufficient to clean certain lids. Ex. 2006, 248:22–249:7.
`7
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`Patent Owner’s showing that a person of ordinary skill in the art would not
`have modified Oosterling to prevent inadvertent lever closure), with Final
`Dec. 31–32 (addressing this argument).6 A Request for Rehearing is not an
`opportunity to express mere disagreement with our Final Written Decision
`or with our weighing of the evidence. The proper course is for Patent Owner
`to appeal, not to file a Request for Rehearing to re-argue issues that already
`have been considered and decided. See 35 U.S.C. § 319.
`Patent Owner’s Request for Rehearing is denied.
`
`
`PETITIONER:
`David D’Ascenzo
`david@dascenzoiplaw.com
`
`PATENT OWNER:
`David S. Moreland
`litdocketing@mcciplaw.com
`Walter Hill Levie III
`tlevie@mcciplaw.com
`Jessica Keesee
`jkeesee@mcciplaw.com
`
`
`6 We are not persuaded by Patent Owner’s argument regarding the cited
`testimony of Dr. Slocum. Req. Reh’g 15. That a strong “snap” may “better”
`prevent lid closure does not discredit Dr. Slocum’s opinion that a person of
`ordinary skill in the art would have been motivated to increase the pivot
`range to achieve this goal. See, e.g., Ex. 1008 ¶ 33(d); Ex. 2004, 178:23–
`179:5, 179:20–180:6, 181:4–24.
`
`8