`Tel: 571-272-7822
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`Paper 222
`Entered: August 8, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`POLYGROUP LIMITED MCO,
`Petitioner,
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`v.
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`WILLIS ELECTRIC CO., LTD,
`Patent Owner.
`____________
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`IPR2016-01610 (Patent 8,454,186 B2)1
`____________
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`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
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`
`ORDER
`Conduct of Proceeding on Remand
`37 C.F.R. § 42.5
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`1 The grounds raised in IPR2016-00800 and IPR2016-01609 are
`consolidated with IPR2016-01610.
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`IPR2016-01610 (Patent 8,454,186)
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`This case is before us on remand from the Federal Circuit for a second
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`time. Polygroup Limited MCO v. Willis Electric Company, Ltd, Cases 2021-
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`1401, -1402 (Fed. Cir. Apr. 20, 2022) (“Polygroup II”); see also Polygroup
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`Limited MCO v. Willis Electric Company, Ltd, Cases 2018-1745, -1746, -
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`1747 (Fed. Cir. Mar. 28, 2019) (“Polygroup I”). A conference call was held
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`on August 3, 2022 to discuss the procedure on remand. We listened to
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`proposals from both parties. The following is our representation of the
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`discussion2 and our decision in light of that discussion.
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`Patent Owner argued that in Polygroup II, the Federal Circuit
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`remanded to us solely the limited question of whether claim 7 of US Patent
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`No. 8,454,186 (“the ’186 patent”) would have been obvious in view of
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`Miller3 alone. Patent Owner directed us to the following statement of the
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`Federal Circuit:
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`We note that Polygroup admitted that Miller does
`not teach every limitation in the claim. See Oral
`Argument
`at
`5:35–54,
`https://oralarguments.cafc.uscourts.gov/default.asp
`x?fl=21-1401_10052021.mp3
`(Oct. 5, 2021);
`Appx19. The Board may consider this statement on
`remand when it considers the unpatentability of
`claim 7 in view of Miller alone.
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`Polygroup II, slip op. at 8. Accordingly, Patent Owner proposed that
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`Petitioner has admitted that Miller alone does not teach each limitation of
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`claim 7; that no further briefing is necessary to resolve all issues on remand;
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`and that PTAB can issue its decision on that issue based on the record as it
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`stands.
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`2 Neither party secured the services of a court reporter for the call.
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`3 US Patent No. 4,020,201, iss. Apr. 26, 1977 (Ex. 1007).
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`2
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`IPR2016-01610 (Patent 8,454,186)
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`Petitioner agreed that the sole issue before us on remand is the
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`question of whether claim 7 is obvious in view of Miller alone. Although
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`Petitioner acknowledged its admission, Petitioner stated that obviousness
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`inquiries must also consider the level of ordinary skill in the art, such that its
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`admission is not dispositive. Petitioner also alleges that in a parallel district
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`court proceeding, Patent Owner offered an argument on claim construction
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`that would be relevant to this proceeding. Petitioner argued that, as a
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`“matter of equity,” we should consider documents regarding those
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`statements made in district court. Accordingly, Petitioner requests further
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`briefing and admission of these documents.
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`Upon consideration of the parties’ arguments, we agree with the
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`parties that the sole issue remanded to us is whether claim 7 of the ’186
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`patent is obvious in view of Miller alone.
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`With regard to Petitioner’s observation that even a Miller-alone
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`ground must consider the level of ordinary skill in the art, we agree.
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`However, Petitioner is limited to the ground as set forth in the Petition. SAS
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`Institute Inc. v Iancu, 137 S. Ct. 1348, 1355–57 (2018) (stating that it is
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`“petitioner’s petition” specifically that “define[s] the scope of the litigation
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`all the way from institution through to conclusion”) (emphasis added). The
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`Petition, evidence, and briefing relating the grounds are already part of the
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`record. Thus, we have a complete record from which to decide this issue.
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`Accordingly, we agree with Patent Owner that we can resolve the issue
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`without further briefing. Petitioner’s request for further briefing regarding
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`claim 7 is denied.
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`Lastly, we turn to Petitioner’s request for us to enter and consider
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`statements allegedly made by Patent Owner in district court regarding claim
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`construction. First, we note that “[a]ny person at any time” has the right to
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`3
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`IPR2016-01610 (Patent 8,454,186)
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`submit “statements of the patent owner filed in a proceeding before a
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`Federal court or the Office in which the patent owner took a position on the
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`scope of any claim of a particular patent.” 35 U.S.C. § 301(a)(2). That said,
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`our understanding of our Rules requires that Petitioner, as a party before
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`PTAB, must consult with the panel as to the appropriate manner of filing.
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`See 37 C.F.R. §§ 42.3(a) (“The Board may exercise exclusive jurisdiction
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`within the Office over every involved . . . patent.”), 42.7(a) (“The Board
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`may expunge any paper . . . while [a] patent is under the jurisdiction of the
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`Board that is not authorized under this part or in a Board order.”) (emphasis
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`added), 42.20(a–b) (“Relief . . . must be requested in the form of a motion.”
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`“A motion will not be entered without Board authorization.”). Second, we
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`note that claim construction is a necessary step to determining whether a
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`claim is obvious. See, e.g., Application of Neugebauer, 330 F.2d 353, 356
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`(CCPA 1964) (“The claims as a whole must be analyzed . . . to see if the
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`article defined thereby is distinguishable . . . over the prior art.”) (emphasis
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`removed and emphasis added).
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`Accordingly, although we were not necessarily convinced by
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`Petitioner during the call that the documents Petitioner wishes to submit are
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`statements by Patent Owner in which they take a position on the scope of
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`claim 7 germane to this proceeding, we will permit Petitioner to submit them
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`in order for us to evaluate. Specifically, Petitioner may submit as exhibits
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`the Daubert motion it mentioned during the call, as well as the documents
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`containing expert statements that Petitioner indicated were submitted in
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`support of that motion and cited therein.4 Petitioner is not authorized to file
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`4 If we have misunderstood which documents are encompassed by
`Petitioner’s request, it should contact the Board as soon as possible to
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`4
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`IPR2016-01610 (Patent 8,454,186)
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`any other evidence or submit any argument. It is a routine matter for us to
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`evaluate the credibility of witnesses and to evaluate allegedly conflicting
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`testimony and arguments. It is not apparent to us that it would be useful or
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`cost-effective to have the parties brief us on the content of the documents
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`and how they apply to this case. We will read the relevant parts of them
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`ourselves, and we may request further briefing if we find otherwise.
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`Accordingly, we deny Petitioner’s request for briefing regarding the
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`positions allegedly taken by Patent Owner in district court.
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`Notwithstanding, we will permit both parties to submit a paper
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`containing citations to passages the party believes we should consider in
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`view of the entry of any documents submitted pursuant to this Order. The
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`citations must be to a paper or exhibit in this proceeding (to include the to-
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`be-submitted documents discussed above), may use Bluebook-style citation
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`signals (e.g., “but see,” “compare with,” etc.), and may quote and emphasize
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`language within the cited passages, but may not include argument.
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`Petitioner may file the above-specified documents as exhibits, along
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`with its paper containing citations, no later than two weeks and one calendar
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`day after entry of this Order. Patent Owner may file its paper of citations no
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`later than two weeks after Petitioner’s submission to PTAB. No further
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`papers are authorized at this time.
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`It is SO ORDERED.
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`request clarification, though this does not otherwise limit Petitioner’s rights
`to a rehearing pursuant to 37 C.F.R. § 42.71 nor toll the deadline thereof.
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`5
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`IPR2016-01610 (Patent 8,454,186)
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`FOR PETITIONER:
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`Christopher J. Forstner
`Ryan Schneider
`Alexis N. Simpson
`Robert Angle
`Dabney J. Carr, IV
`TROUTMAN SANDERS LLP
`chris.forstner@troutmansanders.com
`ryan.schneider@troutmansanders.com
`alexis.simpson@troutmansanders.com
`robert.angle@troutmansanders.com
`dabney.carr@troutmansanders.com
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`FOR PATENT OWNER:
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`Emily E. Niles
`Cyrus A. Morton
`ROBINS KAPLAN LLP
`eniles@robinskaplan.com
`cmorton@robinskaplan.com
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`6
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