Trials@uspto.gov Paper 21
`571-272-7822
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`Date Entered: August 2, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORNING OPTICAL COMMUNICATIONS RF LLC,
`CORNING INC., and CORNING OPTICAL COMMUNICATIONS LLC,
`Petitioner,
`v.
`PPC BROADBAND, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01955
`Patent 8,647,136 B2
`____________
`
`Before JOSIAH C. COCKS, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`IPR2015-01955
`Patent 8,647,136 B2
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`Petitioner, Corning Optical Communications RF LLC, Corning
`
`Incorporated, and Corning Optical Communications LLC, timely filed a
`request for rehearing of our decision denying institution of inter partes
`review. Paper 20 (“Req. Reh’g”). The Request for Rehearing seeks
`rehearing of our determination not to institute inter partes review of claims
`of claims 50, 53, 57–61 of U.S. Patent No. 8,647,136 B2 (Ex. 1001, “the
`’136 patent”) on the asserted ground of obviousness under 35 U.S.C. §
`103(a) over Matthews,1 Tatsuzuki,2 Burris,3 and Bence.4 Req. Reh’g 2
`(citing Paper 19 (“Decision”)). For the reasons given below, we deny the
`Request for Rehearing.
`
`I. LEGAL STANDARDS
`When rehearing a decision whether to institute inter partes review, we
`review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
`burden of showing [the] decision should be modified lies with the party
`challenging the decision.” 37 C.F.R. § 42.71(d). The request for rehearing
`“must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in” the petition. Id.
`II. ANALYSIS
`Petitioner contends we abused our discretion in our determination that
`“Petitioner had not shown a reasonable likelihood that it is obvious to
`
`
`1 U.S. Patent Application Publication No. 2006/0110977, published May 25,
`2006 (Ex. 1002) (“Matthews”)
`2 Japanese Publication No. 2002-15823 (Ex. 1017) (“Tatsuzuki”) (English
`Translation at Ex. 1003).
`3 U.S. Patent No. 5,975,951, issued November 2, 1999 (Ex. 1004) (“Burris”)
`4 U.S. Patent No. 7,114,990, issued October 3, 2006 (Ex. 1005) (“Bence”)
`2
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`IPR2015-01955
`Patent 8,647,136 B2
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`combine Matthews, Tatsuzuki, Burris and Bence as presented in the
`Petition.” Req. Reh’g 2. According to Petitioner:
`Five PTAB panels have already concluded that it is obvious to
`combine the asserted references as presented by Petitioner to
`sandwich the continuity member of Tatsuzuki between the nut
`and body of Matthews, as taught by Bence. These five PTAB
`panels issued Final Written Decisions cancelling all challenged
`claims of related patents based on this combination. Exs. 1023,
`1024, 1026-1028. . . . The Federal Circuit affirmed the PTAB’s
`determination that one-third of the challenged claims are obvious
`over this combination. PPC Broadband, Inc. v. Corning Optical
`Commc’ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016). It is
`demonstratively unreasonable and an abuse of discretion for this
`Panel to assert that Petitioner has not shown a reasonable
`likelihood that it is obvious to combine the references as
`presented, when this combination has been determined to be
`obvious by five PTAB panels, as affirmed by the Federal Circuit.
`
`Req. Reh’g. 2–3 (footnote omitted).
`
`We are not persuaded by this argument. As an initial matter,
`Petitioner directs us to no authority for the broad proposition that the Board
`should institute inter partes review of claims of a patent based on the
`Board’s determination with respect to the unpatentability of a claims of
`related patent, simply because the challenge is based on the same
`combination of prior art references. To the contrary, although relying on the
`Federal Circuit’s affirmance-in-part in PPC Broadband, Petitioner omits the
`fact that the Federal Circuit vacated the Board’s decision regarding most of
`the claims on appeal, based on the same combination. 815 F.3d at 737; see
`also In re Brimonidine Patent Litigation, 643 F.3d 1366, 1370 (Fed. Cir.
`2011) (affirming finding of obviousness as to one patent, but finding burden
`not satisfied with respect to “related patents”). Moreover, even if these prior
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`Board decisions had not been vacated-in-part, Petitioner did not provide an
`explanation as to how the proposed obvious arrangement of prior art in
`related cases (see, e.g., Ex. 1027, 27), is relevant in the context of the
`different claims at issue or the somewhat different proposed arrangement of
`the prior art here. See Req. Reh’g. 4–5 (citing Paper 2 (Pet.) 22–23).
`We have considered Petitioner’s specific arguments that we
`overlooked several reasons for combining the references in the proposed
`way (i.e., creating a new gap in Matthews). Request 6–8 (citing Pet. 20, 55–
`56). We have also considered Petitioner’s argument that we overlooked
`explanation and testimony in assessing whether the combination addressed
`claimed features, in particular, the requirement that the continuous metallic
`electrical ground pathway is maintained while the forward facing surface of
`the nut is “spaced away” from the rearward facing surface of the post. Req.
`Reh’g. 8–13 (citing, e.g., Pet. 48–50). We disagree.
`It is Petitioner’s burden to establish the reasonable likelihood of
`unpatentability of one or more claims in the challenged patent. 37 C.F.R.
`§ 42.108(c); 35 U.S.C. § 312(a)(3) (requiring the petition to identify with
`particularity each claim challenged and the grounds on which the challenged
`claim is based). We considered Petitioner’s evidence and arguments, but,
`for the reasons stated in the Decision, we found that Petitioner and its
`declarant did not address sufficiently why it would have been obvious to a
`person of ordinary skill in the art to create the specific modification to
`Matthews (including creating a new gap), based on Tatsuzuki, Bence, and
`Burris, or how that modification fully addresses the claim limitations
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`IPR2015-01955
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`(including maintaining the ground pathway while “spaced away”).5 We are
`not persuaded that we overlooked or misapprehended anything in making
`this determination.
`Petitioner argues that “[i]t is an abuse of discretion to give greater
`weight to attorney argument than unrebutted expert testimony,” as Petitioner
`contends we did. Req. Reh’g.13. To be sure, we considered Patent Owner’s
`arguments raised in its Preliminary Response, as our rules require. See 37
`C.F.R. § 42.108(c) (“The Board’s decision will take into account a patent
`owner preliminary response where such a response is filed.”). However, the
`absence of rebuttal testimony does mean the proffered testimony is free of
`evaluation by the Board, which must assess its persuasiveness in light of the
`evidence and scope of the claimed invention. See Dominion Dealer Sol’ns,
`LLC v. AutoAlert, Inc., Case IPR2013-00220, slip op. at 2 (PTAB Oct. 10,
`2013) (Paper 13). Here, for example, we considered Patent Owner’s
`argument that the spring in Tatsuzuki might be crushed––an argument
`supported by the text of Tatsuzuki (see Ex. 1003 ¶ 17)––in assessing how
`the proposed combination would satisfy the limitation requiring the ground
`pathway to be maintained while spaced away, which we found to be unclear.
`
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`5 In this regard, we did not erroneously require “a modified version of
`Figure 8 [of Matthews] that illustrates the second nut-to-post position,
`requiring NF and PR to be spaced away,” as suggested by Petitioner. Request
`11 (quoting Decision 20 (bracketed text added by Petitioner)). This partial
`quote of our Decision is unhelpful because it omits from the quote: “nor
`does Petitioner sufficiently explain how the second nut-to-post position is
`obtained while maintaining continuity between post and nut.” Decision 20
`(emphasis added). It was not an error to require an illustration or sufficient
`explanation in support of the obviousness argument. See KSR Int’l Co. v.
`Teleflex, Inc., 550 U.S. 398, 418 (2006) (requiring articulated reasoning).
`5
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`See Decision 21–22. We determined the proffered testimony did not address
`this limitation sufficiently to meet Petitioner’s burden. Id. We are not
`persuaded this was an abuse of discretion.
`We have considered Patent Owner’s remaining arguments but do not
`find them persuasive.
`
`III. CONCLUSION
`Patent Owner’s request for rehearing is denied.
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`6
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`FOR PETITIONER:
`Todd R. Walters
`todd.walters@bipc.com
`
`Roger H. Lee
`roger.lee@bipc.com
`
`
`Jonathan R. Bowser
`jon.bowser@bipc.com
`
`Kyle K. Tsui
`kyle.tsui@bipc.com
`
`
`
`FOR PATENT OWNER:
`Denis J. Sullivan
`dsullivan@barclaydamon.com
`
`Thomas Hoehner
`thoehner@barclaydamon.com