Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 28
`Entered: July 25, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`NONEND INVENTIONS N.V.,
`Patent Owner.
`____________
`
`Case IPR2016-00174
`Patent 8,090,862 B2
`____________
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 28
`Entered: July 25, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`NONEND INVENTIONS N.V.,
`Patent Owner.
`____________
`
`Case IPR2016-00174
`Patent 8,090,862 B2
`____________
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`IPR2016‐00174
`
`Patent 8,090,862 B2
`
`
`
`
`
`BACKGROUND
`I.
`On May 8, 2017, we issued a Final Written Decision in this
`proceeding. Paper 26 (“Decision” or “Dec.”). In the Decision, we held
`Petitioner demonstrated, by a preponderance of the evidence, that claims 1–6
`and 8–18 of U.S. Patent No. 8,090,862 B2 (“the ’862 patent”) (Dec. 32–33)
`are unpatentable as anticipated by Shastri1, and claims 1–20 are unpatentable
`over Goldszmidt2 or over Goldszmidt in combination with Lumelsky3 (id.
`45–46). On June 5, 2017, Petitioner filed a Request for Rehearing
`challenging our determination that Petitioner waived any arguments
`regarding Real Party in Interest, and erroneously found Patent Owner failed
`to antedate the Shastri reference. Paper 27 (“Request”).
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” “An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.”
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). On rehearing, the
`burden of showing the Decision should be modified lies with the party
`challenging the Decision—here, Patent Owner. 37 C.F.R. § 42.71(d). “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.” Id.
`
`
`1 U.S. Patent Publication 2002/0065922 A1.
`2 U.S. Patent 6,195,680 B1.
`3 U.S. Patent 6,377,996 B1.
`
`2
`
`
`
`
`
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`IPR2016‐00174
`
`Patent 8,090,862 B2
`
`
`Furthermore,
`[a] request for rehearing is not an opportunity merely to disagree
`with the panel’s assessment of the arguments or weighing of the
`evidence, or to present new arguments or evidence. It is not an
`abuse of discretion to have performed an analysis or reached a
`conclusion with which Petitioner disagrees, and mere
`disagreement with the Board’s analysis or conclusion is not a
`proper basis for rehearing.
`Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, at 3–4 (PTAB Jan. 28,
`2016) (Paper 9).
`For the reasons that follow, Petitioner’s request for rehearing is
`denied.
`
`II. ANALYSIS
`A. Waiver of Argument
`Our Scheduling Order made clear that any “arguments for
`patentability” not raised in Patent Owner’s Response are deemed waived.
`Paper 11, 2–3 (“The patent owner is cautioned that any argument for
`patentability not raised in the response will be deemed waived.”). Patent
`Owner argues,
`Nonend’s argument regarding the real-party in interest
`cannot fairly be characterized as an “argument for patentability.”
`Rather, it was an argument that the petition should have never
`been taken up and could not be continued to be considered when
`it was not being prosecuted in the name of the real parties in
`interest.
`Request 2. Thus, Patent Owner contends it was not provided “fair notice”
`that its preliminary arguments relating to real party in interest would be
`waived if not re-stated in its Response. Id.
`Initially, we deny Patent Owner’s Request because it fails to identify
`specifically an argument that we misapprehended or overlooked as required
`
`3
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`IPR2016‐00174
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`
`
`Patent 8,090,862 B2
`
`
`by our rules. Patent Owner’s argument that it received insufficient notice
`that its preliminary arguments regarding real party in interest (Paper 7, 4–13)
`would be waived fails to identify an argument we overlooked or
`misapprehended. Instead, Patent Owner’s argument challenges the propriety
`of our cautionary order that such arguments not raised in its Response will
`be waived. Arguments that are not raised in Patent Owner’s Response could
`not have been overlooked or misapprehended.
`Furthermore, recent case law supports our Decision’s analysis that
`Patent Owner waived its arguments relating to real party in interest.
`NuVasive waived its public accessibility arguments before
`the PTAB and may not raise them on appeal. NuVasive
`challenged the public accessibility of the prior art references
`during the preliminary proceedings of the inter partes review,
`J.A. 159–63 (section of NuVasive's Preliminary Response that
`addresses public accessibility), but failed to challenge public
`accessibility during the trial phase, J.A. 227–93 (NuVasive's
`Trial Response that fails to address public accessibility).
`In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016)
`Even assuming, arguendo, that Patent Owner did not waive arguments
`relating to real party in interest, our Decision on Institution already
`determined that these arguments in Patent Owner’s Preliminary Response
`were not persuasive. Paper 10, 6. Furthermore, Patent Owner’s Response
`failed to provide any further argument on that issue, and even considering
`the issue anew, based on the arguments set forth in Patent Owner’s
`Preliminary Response, we are unpersuaded our determination requires
`alteration.
`
`4
`
`
`
`IPR2016‐00174
`
`Patent 8,090,862 B2
`
`
`
`
`
`Antedating Shastri
`B.
`Patent Owner argues the “only evidence of record supported
`Nonend’s position that the inventors of the patents-in-suit had an invention
`date before the effective date of the Shastri reference.” Request 3. Patent
`Owner further contends “the Board discounted the only evidence of
`record . . . [and, thus,] shifted the burden of persuasion back to Nonend.” Id.
`Our Decision did not improperly shift the burden of persuasion back
`to Patent Owner. As we observed in our Decision, Patent Owner complied
`with its burden to produce evidence supporting its position that the patent at
`issue antedates Shastri. Dec. 18–19 (“We find that Patent Owner has met
`that burden by producing the Declarations of the inventors of the ’862 patent
`(Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027, 2029) that
`allegedly show conception prior to Shastri, and reasonable diligence through
`filing of a patent application (constructive reduction to practice) to antedate
`the filing of Shastri. PO Resp. 11–13.”). As an initial matter, we disagree
`with Patent Owner’s argument that it provided the only evidence relating to
`antedating Shastri. Petitioner did provide cross-examination testimony of
`Patent Owner’s declarants—the inventors of the ’862 patent—concerning
`this issue, which is “evidence.” Even putting that aside, however, what
`Patent Owner is actually asserting is that the evidence Patent Owner
`provided supports only its position, and that, relatedly, Petitioner cannot use
`that same evidence to support Petitioner’s position. That assertion has no
`merit. While certainly a party would be expected to present evidence that,
`on balance, would favor their position, the evidence itself is merely objective
`information that can be used by any party, as appropriate. To that end, a
`party submitting evidence submits it at their own peril. In that vein,
`
`5
`
`
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`
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`IPR2016‐00174
`
`Patent 8,090,862 B2
`
`
`Petitioner had every right to, and indeed did, reply to Patent Owner’s
`proffered evidence (inventor Declarations and related documents) by
`arguing that Patent Owner’s evidence on this issue was not persuasive. Pet.
`Reply 6–8 (citing Exs. 1014 and 1015).
`As we discussed in our Decision, we weighed Petitioner’s proffered
`testimony against Patent Owner’s proffered evidence. Dec. 20–26. We
`determined that Patent Owner’s proffered evidence in support of its claim to
`antedate Shastri was not persuasive when viewed in the context of the entire
`record, including the cross-examination testimony of Patent Owner’s
`Declarants. Thus, our Decision did not overlook or misapprehend Patent
`Owner’s arguments to antedate Shastri, nor did we “discard” the “only”
`evidence on the issue.
`
`
`
`
`III. ORDERS
`For the foregoing reasons, it is:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`6
`
`
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`
`
`IPR2016‐00174
`
`
`
`Patent 8,090,862 B2
`
`PETITIONER:
`David L. Cavanaugh
`Michael Van Handel
`Daniel Williams
`WILMER CUTLER PICKERING HALE AND DORR LLP
`David.Cavanaugh@wilmerhale.com
`michael.vanhandel@wilmerhale.com
`daniel.williams@wilmerhale.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`Matthew J. Antonelli
`ANTONELLI, HARRINGTON & THOMPSON LLP
`matt@ahtlawfirm.com
`
`
`7
`
`
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