Trials@uspto.gov
`571-272-7822
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`Paper 9
`Entered: August 8, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`JOHN CRANE, INC.,
`JOHN CRANE PRODUCTION SOLUTIONS, INC. &
`JOHN CRANE GROUP CORP.,
`Petitioner,
`
`v.
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`FINALROD IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
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`WIEKER, Administrative Patent Judge.
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`
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`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
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`

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`Case IPR2016-00521
`Patent 8,851,162 B2
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`I. INTRODUCTION
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`Petitioner, John Crane, Inc., John Crane Production Solutions, Inc.,
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`and John Crane Group Corp., filed a Request for Rehearing (Paper 8, “Req.
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`Reh’g”) of the Decision (Paper 7, “Dec.”) denying institution of an inter
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`partes review of any of challenged claims 1–40 of the U.S. Patent No.
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`8,851,162 B2 (Ex. 1001, “the ’162 patent”). Req. Reh’g 1. Petitioner
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`argues that our Decision misapprehended the proper claim scope and
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`overlooked evidence showing that the prior art disclosed the claim
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`limitations as properly understood. Id. The Request for Rehearing is
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`denied.
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`II. STANDARD OF REVIEW
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`When rehearing a Decision on Petition, the Board will review the
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`Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion occurs if the Decision is based on an erroneous interpretation of
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`law, if a factual finding is not supported by substantial evidence, or if the
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`Decision represents an unreasonable judgment in weighing relevant factors.
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`Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
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`Furthermore, a request for rehearing must identify specifically all matters the
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`party believes we misapprehended or overlooked, and the place where each
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`matter was addressed previously in a motion, an opposition, or a reply. 37
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`C.F.R. § 42.71(d).
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`III. ANALYSIS
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`A. The Board Did Not Misapprehend the “Such That” Claim Language
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`Independent claims 1, 11, 20, and 31 require, in substantially similar
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`language, “each apex forming a perimeter . . . that is the narrowest part of
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`the cavity . . . such that the leading edge is longer than the trailing edge.”
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`Ex. 1001, 8:37–45; see also id. at 9:38–46, 10:37–48, 11:43–54. We discuss
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`claim 1 representatively. See. e.g., Dec. 5; Pet. 21–22.
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`In its Request for Rehearing, Petitioner argues that we
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`misapprehended the claim language by interpreting “such that” to require a
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`“direct causal connection” between the location of the apex and the lengths
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`of the leading and trailing edges. Req. Reh’g 8; see also id. at 4–10.
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`Specifically, Petitioner contends that because the claims define the apex as
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`the narrowest part of the cavity, it is not possible for the “apex alone to
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`directly impact the lengths of the leading and trailing edges.” Id. at 7; see
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`also id. at 5–8. As a consequence, Petitioner contends, “the only
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`requirements of the apex supported by the specification are: (1) that the
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`apex be the location at the narrowest part of the cavity, and (2) that the apex
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`be consistent with a wedge shape where the leading edge is longer than the
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`trailing edge.” Id. at 9.
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`We disagree with Petitioner that we misapprehended the claim
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`language. The Petition did not present any claim construction of “such
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`that,” let alone a construction that aligns with the argument made in this
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`Request. See Pet. 13–17. Indeed, the Petition explained that for “terms not
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`specifically construed, Petitioners apply the [broadest reasonable
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`interpretation] of those terms.” Id. at 13; see also In re Translogic Tech.,
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`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (giving terms their ordinary and
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`customary meaning in light of the patent’s disclosure). Therefore, we could
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`not have misapprehended the claim language by applying its ordinary
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`meaning in the absence of any persuasive argument or evidence suggesting
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`that another interpretation would be more appropriate.
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`In any event, we disagree with Petitioner’s newly presented argument.
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`Petitioner directs our attention to the Federal Circuit’s decision in MStar
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`Semiconductor, Inc. v. International Trade Commission, 183 Fed. Appx. 957
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`(Fed. Cir. 2006). Req. Reh’g 8. The Federal Circuit’s analysis in MStar,
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`however, aligns with the reasoning applied in our Decision denying
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`institution. In MStar, the court interpreted claim language including “such
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`that”1 and stated: “it is not sufficient that the time periods are equal, as
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`MStar contends; rather, there must be a logical relationship of some sort
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`between the second clock signal and the equality of the time periods.” 183
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`Fed. Appx. at 962 (emphasis added). Similarly, in our Decision, we stated:
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`It is not sufficient to merely identify where [an apex, a leading
`edge, and a trailing edge] are shown purportedly in the prior art.
`The claimed relationship between the structures must be shown
`also. The Petition does not show sufficiently that the apexes
`taught by the combination of Rutledge ’431 and Strandberg
`form perimeters that impact the lengths of the leading and
`trailing edges such that the leading edge is longer than the
`trailing edge.
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`Dec. 12 (paragraph formatting omitted). Indeed, our Decision holds that
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`Petitioner failed to identify “the claimed relationship,” e.g., a “logical
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`relationship” between the elements associated with the “such that” language.
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`Petitioner has not demonstrated that this interpretation conflicts with Federal
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`Circuit law.
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`In conjunction with its discussion of MStar, Petitioner contends that
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`our interpretation of “such that” is inconsistent with the ’162 patent and
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`1 The claim limitation at issue in MStar reads: “wherein said second clock
`signal is generated to have a clock period such that the time to provide said
`plurality of destination pixel data is equal to a period to receive said source
`pixel data in said source image frame.” 183 Fed. Appx. at 961.
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`cited expert testimony. Req. Reh’g 8–10. We disagree. Although the claim
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`language could be clearer, our interpretation of the claims is supported by
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`the ’162 patent. For example, Figures 2 and 2A of the ’162 patent depict
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`apexes 116 in locations that impact the length of the leading edges and
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`trailing edges. Ex. 1001, Figs. 2–2A. Additionally, claim 4 states that “the
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`wedge shaped portions are determined by an angle associated with the apex
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`between the leading edge and the trailing edge,” which is consistent with
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`our interpretation of the “such that” language of independent claims 1, 11,
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`20, and 31. See id. at 9:4–6 (emphasis added); see also id. at 3:62–4:11,
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`7:18–25. Finally, although the cited expert testimony states that a person of
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`ordinary skill in the art would have found it obvious that both the angle at
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`the apex and the angle between the leading edge and trailing edge determine
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`the wedge shaped portion, this testimony does not state that “the apex alone
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`cannot control the lengths of the edges,” as Petitioner contends. Req. Reh’g
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`10 (citing Ex. 1010 ¶ 184). Whether a wedge shape may be determined by
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`two angles does not preclude an arrangement, as claimed, where the apex
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`impacts the lengths of the leading and trailing edges.
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`B. The Board Did Not Overlook Evidence Addressing the “Impact” of
`the Apex on Wedge Shape and Size
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`We also disagree that we overlooked evidence addressing “the impact
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`of the apex (as well as the angle at the apex) on the overall shape of the
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`wedge” and “how various factors [such as the apex, the angle of the
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`inclination of the edges extending from the apex, and the edge lengths]
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`contribute to the shape of the wedges.” Id. at 10–14. The cited portions of
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`the Petition and Mr. Wooley’s Declaration do not show that the prior art
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`apexes form perimeters such that the leading edge is longer than the trailing
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`edge, as claimed. See Pet. 6–8, 22–23, 26–28; Ex. 1010 ¶¶ 36–43. Evidence
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`showing that the apex impacts the “overall shape of the wedge” or that other
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`factors “contribute to the shape of the wedges” is not responsive to the claim
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`language.
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`For all of the above reasons, Petitioner’s Request for Rehearing is
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`denied.
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`

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`Case IPR2016-00521
`Patent 8,851,162 B2
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`PETITIONER:
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`Dion M. Bregman
`Jason C. White
`Ryan B. McBeth
`Nicholas A. Restauri
`Matthew C. Lee
`Nicholaus E. Floyd
`MORGAN LEWIS & BOCKIUS LLP
`dbregman@morganlewis.com
`jwhite@morganlewis.com
`rmcbeth@morganlewis.com
`nicholas.restauri@morganlewis.com
`matthew.lee@morganlewis.com
`nfloyd@morganlewis.com
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`
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`PATENT OWNER:
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`John D. Holman
`Josh Shamburger
`MATTHEWS, LAWSON, MCCUTCHEON & JOSEPH, PLLC
`jholman@matthewsfirm.com
`jshamburger@matthewsfirm.com
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