Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: December 6, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BIXOLON CO., LTD.,
`Petitioner,
`
`v.
`
`SHINHEUNG PRECISION CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01068
`Patent 6,629,666 B2
`____________
`
`Before KEN B. BARRETT, BARRY L. GROSSMAN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: December 6, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BIXOLON CO., LTD.,
`Petitioner,
`
`v.
`
`SHINHEUNG PRECISION CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01068
`Patent 6,629,666 B2
`____________
`
`Before KEN B. BARRETT, BARRY L. GROSSMAN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`Case IPR2016-01068
`Patent 6,629,666 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Bixolon Co., Ltd., filed a Request for Rehearing (Paper 10,
`“Req. Reh’g”) of the Decision (Paper 8, “Dec.”) denying institution of an
`inter partes review of any of challenged claims 1–18 of U.S. Patent No.
`6,629,666 B2 (Ex. 1001, “the ’666 patent”). Req. Reh’g 1. Petitioner
`argues that the Decision relies upon unsupported factual findings regarding
`the Hosomi reference, is contrary to prevailing law, and misapprehends or
`overlooks the Sato reference. Id. at 1–2. The Request for Rehearing is
`denied.
`
`STANDARD OF REVIEW
`II.
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion occurs if the 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). Further, 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
`Petitioner argues that the Board erred in finding “that it is impossible
`for Hosomi’s optical detector and bolt 25 and hole 72 to exist together.” See
`Req. Reh’g 1, 3. This argument misstates the Decision’s findings. The
`Decision does not state that it is impossible for these structures to be used
`together. See Dec. 12–15. Indeed, the Decision states explicitly, “it may be
`
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`Case IPR2016-01068
`Patent 6,629,666 B2
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`feasible” for these structures to be used together. Id. at 14. The Board
`found, however, that the structure Petitioner relies upon to satisfy the
`claimed “position adjusting means”—bolt 25 and hole 72—“appears
`mutually exclusive to Hosomi’s ‘means for optically detecting.’” Id. at 12.
`The Board found that the Petition, and the cited expert testimony of Mr.
`Charles Curley (Ex. 1006), failed to explain persuasively whether it would
`have been obvious to a person of ordinary skill in the art to utilize Hosomi’s
`“means for optically detecting” with the disclosed and relied-upon structure
`of Hosomi’s contact-based detector 24, including bolt 25 and hole 72,
`because those structures appear mutually exclusive to each other. Dec. 13–
`14. Petitioner’s Request for Rehearing does not inform us of error in that
`regard. It is Petitioner’s burden, not the Board’s obligation, to demonstrate
`how the claims are unpatentable over the prior art of record. See 37 C.F.R.
`§ 104(b)(4); Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
`IPR2015-00609, Paper 9, 12 (PTAB Aug. 14, 2015) (“While it might be
`possible for us to arrive at an articulable ground by sifting through
`Petitioners’ identifications of grounds, the claim charts, the references, and
`the numerous cited paragraphs of the expert declaration . . . we decline to do
`so.”). On the facts of this case, Petitioner’s vague statements about how
`Hosomi’s structure may be modified (e.g., to replace contact-based detecting
`element 64 with an optical detector), without addressing the impact of that
`modification on other related structures (e.g., limit switch 67, actuating lever
`63, supporting frame 62, hole 72/bolt 25), does not satisfy this burden. See,
`e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-
`00003, Paper No. 8, 10 (PTAB Oct. 25, 2012) (“[W]e will address only the
`basis, rationale, and reasoning put forth by the Petitioner in the petition, and
`
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`Case IPR2016-01068
`Patent 6,629,666 B2
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`resolve all vagueness and ambiguity in Petitioner’s arguments against the
`Petitioner.”).
`Petitioner argues that Hosomi’s “paper end detector 24 comprises
`detecting element 64 to detect the end of the recording paper.” Req. Reh’g
`3–4. Petitioner and Mr. Curley state that an optical detector can replace
`contact-based detecting element 64. Id. at 5 (citing Ex. 1006 ¶¶ 86, 102).1
`Therefore, according to Petitioner, paper end detector 24 may use “means
`for optically detecting as an alternative for using the limit switch [67 of
`detector 24], not as a replacement of the paper end detector 24 in its
`entirety.” Id. at 3.
`As stated in the Decision, however, the Petition fails to explain
`cogently whether it would have been obvious to use Hosomi’s means for
`optically detecting with the existing structure of Hosomi’s contact-based
`detector 24. See Dec. 14. Petitioner contends that an optical detector simply
`would be substituted for Hosomi’s contact-based detecting element 64. See
`Req. Reh’g 5. However, this does not account for Petitioner’s admission
`that optical detection is “an alternative to . . . using the limit switch.” Id.
`(second emphasis added). For example, the Petition fails to explain whether
`it would have been obvious to a person of ordinary skill in the art to utilize
`an optical detector in place of contact-based detecting element 64 but to
`nonetheless retain other portions of Hosomi’s contact-based detector 24
`(e.g., actuating lever 63, supporting frame 62) that are not utilized with
`optical detection, but instead actuate the limit switch that is not being used.
`
`1 We do not consider statements made by Mr. Curley in conjunction with a
`separate proceeding because those statements are not in evidence in this
`proceeding. See Req. Reh’g 5–6 (citing Ex. 1011 in IPR2017-00086); 37
`C.F.R. § 42.6(a)(3).
`
`4
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`Case IPR2016-01068
`Patent 6,629,666 B2
`
`See, e.g., Pet. 18–20, 29–32; Ex. 1002, 6:32–56, 7:2–13, 8:40–45, 9:14–21.
`Indeed, if optical detection is “an alternative for using the limit switch,” as
`Petitioner contends (Req. Reh’g 3), unused limit switch 67, its actuating
`lever 63, and its supporting frame 62 appear unnecessary to the modified
`detector. The Petition does not address whether it would have been obvious
`to remove or retain these structures, and has not shown reasonably that they
`would remain when Hosomi’s detector is modified to include means for
`optically detecting. Without more, an optical detector appears mutually
`exclusive to the structures used to actuate the limit switch, e.g., lever 63 and
`frame 62, with bolt 25 and hole 72.
`The challenged claims also recite “position adjusting means,” which
`Petitioner contends to be Hosomi’s bolt 25 and hole 72. Pet. 19; Req. Reh’g
`4. According to Petitioner, these structures are “separate from the structure
`for providing detection . . . and complementary” such that a person of
`ordinary skill in the art “understands that the disclosed bolt 25/hole 72
`structure to adjust the location of the detection is applicable to either the
`contact-based or optical-based detection.” Req. Reh’g 6–7. Although we
`understand that height adjustment may be desirable regardless of the manner
`of detection, we are unpersuaded by Petitioner’s argument. Id. at 8. The
`Petition has not shown reasonably that height adjustment would be achieved
`with bolt 25 and hole 72 when optical detection is utilized. Bolt 25 and hole
`72 are integrated with actuating lever 63 and supporting frame 62 of contact-
`based detector 24, wherein lever 63 rotates about frame 62 to actuate limit
`switch 67. Ex. 1002, 6:44–45, 7:8–9, 7:14–25, 8:18–34. Accordingly, those
`structures are not “separate from the structure for providing detection,” as
`argued. As discussed above, the Petition fails to address whether it would
`
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`Case IPR2016-01068
`Patent 6,629,666 B2
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`have been obvious to a person of ordinary skill in the art to retain these
`unnecessary structures, used for actuating limit switch 67, when Hosomi’s
`detector is modified to include means for optically detecting.
`We are also unpersuaded by Petitioner’s argument that the Decision
`misapplies relevant law, because Petitioner’s argument relies upon a
`misstatement of the Decision’s findings. Req. Reh’g 8–12; see supra 2–3.
`Further, we recognize the Federal Circuit’s position that “[c]ombining two
`embodiments disclosed adjacent to each other in a prior art patent does not
`require a leap of inventiveness.” Id. at 11–12 (citing Boston Scientific v.
`Cordis, 554 F.3d 982, 991 (Fed. Cir. 2009)). While the proposition may be
`true, it remains Petitioner’s burden to explain clearly to the Board how the
`challenged claims are unpatentable over the prior art, including whether and
`how it would have been obvious to modify the prior art. Petitioner failed to
`meet its burden.2
`Finally, we are unpersuaded by Petitioner’s argument that Sato
`discloses light emitting and receiving elements and the combination of
`Hosomi and Sato renders obvious non-contact detecting means and a
`position adjusting means, wherein the “the position adjusting mechanism
`(bolt 25, hole 72) is independent of the detecting mechanism (detection lever
`63, detecting element 64).” Req. Reh’g 13–15. For the same reasons
`discussed above, the Petition fails to address whether it would have been
`obvious to a person of ordinary skill in the art to retain unnecessary contact-
`
`2 We are unpersuaded that “a dispute over the expert’s declaration . . . must
`be resolved in Petitioner’s favor.” Req. Reh’g 12 (citing 37 C.F.R.
`§ 42.108(c)). The cited Rule does not apply here, where the Board did not
`find “a genuine issue of material fact created by [Patent Owner’s]
`testimonial evidence.” 37 C.F.R. § 42.108(c). The Decision does not rely
`on Patent Owner’s testimonial evidence.
`6
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`Case IPR2016-01068
`Patent 6,629,666 B2
`
`based structures for actuating the limit switch (e.g., lever 63, frame 62, and
`integrated bolt 25/hole 72) when Hosomi’s detector is modified to include
`means for optically detecting, even if the means for optically detecting are
`the specific emitters and receivers of Sato.
`For all of the above reasons, Petitioner’s Request for Rehearing is
`denied.
`
`
`
`
`PETITIONER:
`
`Kyle Choi
`Matt Dushek
`Daniel Tallitsch
`BAKER & MCKENZIE LLP
`kyle.choi@bakermckenzie.com
`matt.dushek@bakermckenzie.com
`daniel.tallitsch@bakermckenzie.com
`
`
`
`PATENT OWNER:
`
`Robert Hilton
`George Davis
`MCGUIREWOODS LLP
`rhilton@mcguirewoods.com
`gdavis@mcguirewoods.com
`
`
`
`
`
`
`
`7
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