Paper 15
`Entered: March 13, 2017
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01382
`Patent 5,732,375
`____________
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`Entered: March 13, 2017
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01382
`Patent 5,732,375
`____________
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2016-01382
`Patent 5,732,375
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Toyota Motor Corporation filed a Petition requesting an
`
`inter partes review of claim 11 of U.S. Patent No. 5,732,375 (“the
`
`’375 patent”) on July 8, 2016. Paper 2 (“Pet.”). Patent Owner
`
`Signal IP Inc., filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`
`With our prior authorization, Petitioner filed a Reply (Paper 11, “Reply”) for
`
`the express purpose of addressing whether the Petition should be denied
`
`under 35 U.S.C. §§ 314(a) and 325(d). See Paper 9. On January 5, 2017, we
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`issued a Decision Denying Institution of Inter Partes Review. Paper 12
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`(“Decision” or “Dec.”). In particular, we exercised our discretion under
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`35 U.S.C. § 325(d) to deny institution because “the same or substantially the
`
`same prior art or arguments previously were presented to the Office.” Id. at
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`12. On February 6, 2017, Petitioner filed a Request for Rehearing,
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`contending that we “overlook[ed] the critical difference between the two
`
`Tokuyama references.” Paper 14 (“Request” or “Req.”), 1. For the reasons
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`that follow, Petitioner’s Request is denied.
`
`II. ANALYSIS
`
`The applicable standard for a request for rehearing is set forth in
`
`37 C.F.R. § 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. 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, opposition, or a reply.
`
`
`
`2
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`
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`IPR2016-01382
`Patent 5,732,375
`
`
`
`When reconsidering a decision on institution, we review the decision for an
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`abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may
`
`be determined 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. See Star
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`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold
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`P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203
`
`F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the
`
`burden of showing the decision should be modified, which includes
`
`specifically identifying all matters the party believes we misapprehended or
`
`overlooked. See 37 C.F.R. § 42.71(d).
`
`The ’375 patent was previously the subject of a petition for inter
`
`partes review filed by Petitioner in Case IPR2016-00291 in which Petitioner
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`alleged claim 11 would have been obvious under 35 U.S.C. § 103(a) over:
`
`(1) Schousek1 and Tokuyama,2 and (2) Tokuyama and Mazur.3 IPR2016-
`
`00291, Paper 2. That petition was denied on June 10, 2016. IPR2016-
`
`00291, Paper 13. In this case, Petitioner contends that claim 11 is
`
`unpatentable as obvious under 35 U.S.C. § 103(a) over: (1) Schousek,
`
`
`1 U.S. Patent No. 5,474,327, issued December 12, 1995 (Ex. 1002,
`“Schousek”).
`2 JP 06-022939, published March 25, 1994 (Ex. 1003 and Ex. 1004 (English
`translation) “Tokuyama”).
`3 U.S. Patent No. 5,454,591, issued October 3, 1995 (Ex. 1011, “Mazur”).
`3
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`
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`IPR2016-01382
`Patent 5,732,375
`
`
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`Tokuyama, and Tokuyama ’1664; and (2) Tokuyama, Mazur, and Tokuyama
`
`’166. Pet. 5. Thus, the grounds asserted in the Petition are the same grounds
`
`asserted by Petitioner in Case IPR2016-00291, but with the addition of
`
`Tokuyama ’166 to each ground.
`
`Petitioner argues that the Decision “overlooks the critical difference
`
`between the two Tokuyama references.” Req. 1. The critical difference
`
`between the two Tokuyama references identified by Petitioner is that “[t]he
`
`Tokuyama reference asserted in the earlier petition has 12 seat sensors,”
`
`while “the newly asserted Tokuyama ’166 reference has only the nine
`
`sensors.” Req. 1–2. This difference was not overlooked, as it was expressly
`
`addressed in the Decision:
`
`With regard to the additional reference, Tokuyama ’166, asserted
`in the Petition in this case, Petitioner first explains that
`“Tokuyama ’166 discloses a very similar system to Tokuyama,
`except that Tokuyama ’166 included only sensors S1 to S9 on
`the seat, not sensors S10 to S12 on the front of the seat.” Pet. 23.
`
`Dec. 10; see also Dec. 11 (“In its Petition and Reply, the only substantive
`
`difference Petitioner identifies between Tokuyama ’166 and Tokuyama is
`
`that the first discloses nine sensors and the second twelve.”) (citing Pet. 23;
`
`Reply 2). The Decision also discusses the importance Petitioner attributes to
`
`this distinction:
`
`includes “additional
`the Petition
`that
`Petitioner argues
`explanation and evidence, including new prior art (Tokuyama
`’166 []), that ‘are distinguished substantively’ from the earlier
`
`4 English translation of Japanese Unexamined Patent Application
`Publication 05-066166 to Tokuyama et al. and associated translation
`declaration (Ex. 1017, “Tokuyama ’166”).
`4
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`
`
`
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`IPR2016-01382
`Patent 5,732,375
`
`
`
`petition because they squarely address the Board’s reasons for
`denying that petition.” Reply 2. According to Petitioner, “the
`new Tokuyama ’166 reference directly addresses the Board’s
`reasoning for the ‘all the sensors’ element.” Id.
`
` Dec. 10–11. Petitioner has not shown that we overlooked the critical
`
`difference between the two Tokuyama references.
`
`Petitioner further asserts that “[t]he Board did not explain its basis for
`
`concluding that the two Tokuyama references are substantially the same
`
`other than to state generally that Tokuyama ’166 ‘discloses a very similar
`
`system to Tokuyama.’” Req. 2 (citing Dec. 11). Remarkably, as set forth in
`
`the portion of the Decision quoted above, it was Petitioner that stated in the
`
`Petition that “Tokuyama ’166 discloses a very similar system to Tokuyama.”
`
`Dec. 10 (quoting Pet. 23). In arguing that the Decision does not explain why
`
`the two references are substantially similar, Petitioner disregards the entirety
`
`of the Decision, as well as Petitioner’s own admissions. Nor did we
`
`overlook or fail to appreciate “the importance of this difference between the
`
`two Tokuyama references to the ‘all the sensors’ issue,” as Petitioner argues.
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`See Req. 2. As we noted in the Decision, “[a]ccording to Petitioner, ‘the
`
`new Tokuyama ’166 reference directly addresses the Board’s reasoning for
`
`the ‘all the sensors’ element.’”). Dec. 11. As we explained in the Decision:
`
`In consideration of the Petition, Preliminary Response, and
`Reply, we determine that the prior art asserted by Petitioner in
`the Petition is “the same or substantially the same prior art”
`previously presented in IPR2016-00291. 35 U.S.C. §325(d).
`Three of the four references asserted in the Petition were asserted
`in IPR2016-00291.
` By Petitioner’s own admission, the
`additional reference asserted in the Petition, Tokuyama ’166,
`“discloses a very similar system to Tokuyama” and is relevant to
`5
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`IPR2016-01382
`Patent 5,732,375
`
`
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`Petitioner’s arguments “to the extent the Board disagrees” with
`Petitioner’s contentions regarding Tokuyama. Pet. 23, 40, 43.
`
`Dec. 11. Finally, our statement that “[t]o the extent Petitioner disagreed
`
`with our determination in IPR2016-00291, Petitioner had the opportunity to
`
`request rehearing in that proceeding and elected not to,” does not “confirm”
`
`our “failure to appreciate this important difference between the two
`
`Tokuyama references,” as Petitioner argues. See Req. 11; Dec. 11. The
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`Petition in this case repeatedly disagreed with our prior decision in IPR2016-
`
`00291. As we stated in the Decision:
`
`Petitioner then proceeds to argue that “contrary to the Board’s
`conclusions” in Case IPR2016-00291, “one of ordinary skill in
`the art reviewing Tokuyama would have understood that
`Tokuyama” discloses features of claim 11 the Board previously
`found Petitioner had not sufficiently shown. Pet. 34. Similarly,
`Petitioner argues that “Petitioner also respectfully disagrees with
`the Board’s conclusion in Case IPR2016-00291 that Tokuyama
`cannot add up the binary values for the sensors.” Id. at 38.
`Further with regard to whether Petitioner had sufficiently shown
`in Case IPR2016-00291 that Tokuyama discloses summing the
`assigned load ratings, as claimed, Petitioner states that it
`“respectfully disagrees with [the Board’s conclusion in Case
`IPR2016-00291] because it incorrectly assumes that ‘all the
`sensors’ are S1 to S12.” Id. at 39.
`
`Dec. 9. We do not view Petitioner’s second Petition as an appropriate
`
`substitute for Petitioner’s failure to request reconsideration of issues that
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`could have been, but were not raised in a request for reconsideration in Case
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`IPR2016-00291. Our determination in IPR2016-00291 did not address
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`Tokuyama ’166 because Petitioner did not include Tokuyama ’166 in any
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`ground of unpatentability asserted in IPR2016-00291. Accordingly, we
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`
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`6
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`IPR2016-01382
`Patent 5,732,375
`
`
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`agree with Petitioner that Petitioner could not have raised Tokuyama ’166 in
`
`a request for rehearing in IPR2016-00291. See Req. 2–3. That, however, in
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`no way suggests that we failed to appreciate differences between Tokuyama
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`’166 and Tokuyama in our Decision to deny the Petition in this case.
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`III. CONCLUSION
`
`We have reviewed all of the arguments in the Request for Rehearing
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`and find them to be without merit. For the reasons above, we conclude that
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`Petitioner has not met its burden of showing an abuse of discretion, or that
`
`we misapprehended or overlooked any of Petitioner’s arguments, in our
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`determination to exercise our discretion under 35 U.S.C. § 325(d) to deny
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`institution. We, therefore, deny Petitioner’s request to reverse our
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`determination not to institute an inter partes review of the ’375 patent.
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`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`7
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`8
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`IPR2016-01382
`Patent 5,732,375
`
`
`
`PETITIONER
`
`John Flock
`Jflock@kenyon.com
`
`George Badenoch
`ptab@kenyon.com
`
`
`
`PATENT OWNER
`
`Tarek Fahmi
`Tarek.fahmi@ascendalaw.com
`
`
`
`
`
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`
`
`
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