Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 222
`Entered: August 8, 2022
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`POLYGROUP LIMITED MCO,
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC CO., LTD,
`Patent Owner.
`____________
`
`IPR2016-01610 (Patent 8,454,186 B2)1
`____________
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`1 The grounds raised in IPR2016-00800 and IPR2016-01609 are
`consolidated with IPR2016-01610.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 222
`Entered: August 8, 2022
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`POLYGROUP LIMITED MCO,
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC CO., LTD,
`Patent Owner.
`____________
`
`IPR2016-01610 (Patent 8,454,186 B2)1
`____________
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`1 The grounds raised in IPR2016-00800 and IPR2016-01609 are
`consolidated with IPR2016-01610.
`
`
`
`IPR2016-01610 (Patent 8,454,186)
`
`This case is before us on remand from the Federal Circuit for a second
`
`time. Polygroup Limited MCO v. Willis Electric Company, Ltd, Cases 2021-
`
`1401, -1402 (Fed. Cir. Apr. 20, 2022) (“Polygroup II”); see also Polygroup
`
`Limited MCO v. Willis Electric Company, Ltd, Cases 2018-1745, -1746, -
`
`1747 (Fed. Cir. Mar. 28, 2019) (“Polygroup I”). A conference call was held
`
`on August 3, 2022 to discuss the procedure on remand. We listened to
`
`proposals from both parties. The following is our representation of the
`
`discussion2 and our decision in light of that discussion.
`
`Patent Owner argued that in Polygroup II, the Federal Circuit
`
`remanded to us solely the limited question of whether claim 7 of US Patent
`
`No. 8,454,186 (“the ’186 patent”) would have been obvious in view of
`
`Miller3 alone. Patent Owner directed us to the following statement of the
`
`Federal Circuit:
`
`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.
`
`Polygroup II, slip op. at 8. Accordingly, Patent Owner proposed that
`
`Petitioner has admitted that Miller alone does not teach each limitation of
`
`claim 7; that no further briefing is necessary to resolve all issues on remand;
`
`and that PTAB can issue its decision on that issue based on the record as it
`
`stands.
`
`
`2 Neither party secured the services of a court reporter for the call.
`
`3 US Patent No. 4,020,201, iss. Apr. 26, 1977 (Ex. 1007).
`
`2
`
`
`
`IPR2016-01610 (Patent 8,454,186)
`
`Petitioner agreed that the sole issue before us on remand is the
`
`question of whether claim 7 is obvious in view of Miller alone. Although
`
`Petitioner acknowledged its admission, Petitioner stated that obviousness
`
`inquiries must also consider the level of ordinary skill in the art, such that its
`
`admission is not dispositive. Petitioner also alleges that in a parallel district
`
`court proceeding, Patent Owner offered an argument on claim construction
`
`that would be relevant to this proceeding. Petitioner argued that, as a
`
`“matter of equity,” we should consider documents regarding those
`
`statements made in district court. Accordingly, Petitioner requests further
`
`briefing and admission of these documents.
`
`Upon consideration of the parties’ arguments, we agree with the
`
`parties that the sole issue remanded to us is whether claim 7 of the ’186
`
`patent is obvious in view of Miller alone.
`
`With regard to Petitioner’s observation that even a Miller-alone
`
`ground must consider the level of ordinary skill in the art, we agree.
`
`However, Petitioner is limited to the ground as set forth in the Petition. SAS
`
`Institute Inc. v Iancu, 137 S. Ct. 1348, 1355–57 (2018) (stating that it is
`
`“petitioner’s petition” specifically that “define[s] the scope of the litigation
`
`all the way from institution through to conclusion”) (emphasis added). The
`
`Petition, evidence, and briefing relating the grounds are already part of the
`
`record. Thus, we have a complete record from which to decide this issue.
`
`Accordingly, we agree with Patent Owner that we can resolve the issue
`
`without further briefing. Petitioner’s request for further briefing regarding
`
`claim 7 is denied.
`
`Lastly, we turn to Petitioner’s request for us to enter and consider
`
`statements allegedly made by Patent Owner in district court regarding claim
`
`construction. First, we note that “[a]ny person at any time” has the right to
`
`3
`
`
`
`IPR2016-01610 (Patent 8,454,186)
`
`submit “statements of the patent owner filed in a proceeding before a
`
`Federal court or the Office in which the patent owner took a position on the
`
`scope of any claim of a particular patent.” 35 U.S.C. § 301(a)(2). That said,
`
`our understanding of our Rules requires that Petitioner, as a party before
`
`PTAB, must consult with the panel as to the appropriate manner of filing.
`
`See 37 C.F.R. §§ 42.3(a) (“The Board may exercise exclusive jurisdiction
`
`within the Office over every involved . . . patent.”), 42.7(a) (“The Board
`
`may expunge any paper . . . while [a] patent is under the jurisdiction of the
`
`Board that is not authorized under this part or in a Board order.”) (emphasis
`
`added), 42.20(a–b) (“Relief . . . must be requested in the form of a motion.”
`
`“A motion will not be entered without Board authorization.”). Second, we
`
`note that claim construction is a necessary step to determining whether a
`
`claim is obvious. See, e.g., Application of Neugebauer, 330 F.2d 353, 356
`
`(CCPA 1964) (“The claims as a whole must be analyzed . . . to see if the
`
`article defined thereby is distinguishable . . . over the prior art.”) (emphasis
`
`removed and emphasis added).
`
`Accordingly, although we were not necessarily convinced by
`
`Petitioner during the call that the documents Petitioner wishes to submit are
`
`statements by Patent Owner in which they take a position on the scope of
`
`claim 7 germane to this proceeding, we will permit Petitioner to submit them
`
`in order for us to evaluate. Specifically, Petitioner may submit as exhibits
`
`the Daubert motion it mentioned during the call, as well as the documents
`
`containing expert statements that Petitioner indicated were submitted in
`
`support of that motion and cited therein.4 Petitioner is not authorized to file
`
`
`4 If we have misunderstood which documents are encompassed by
`Petitioner’s request, it should contact the Board as soon as possible to
`
`
`4
`
`
`
`IPR2016-01610 (Patent 8,454,186)
`
`any other evidence or submit any argument. It is a routine matter for us to
`
`evaluate the credibility of witnesses and to evaluate allegedly conflicting
`
`testimony and arguments. It is not apparent to us that it would be useful or
`
`cost-effective to have the parties brief us on the content of the documents
`
`and how they apply to this case. We will read the relevant parts of them
`
`ourselves, and we may request further briefing if we find otherwise.
`
`Accordingly, we deny Petitioner’s request for briefing regarding the
`
`positions allegedly taken by Patent Owner in district court.
`
`Notwithstanding, we will permit both parties to submit a paper
`
`containing citations to passages the party believes we should consider in
`
`view of the entry of any documents submitted pursuant to this Order. The
`
`citations must be to a paper or exhibit in this proceeding (to include the to-
`
`be-submitted documents discussed above), may use Bluebook-style citation
`
`signals (e.g., “but see,” “compare with,” etc.), and may quote and emphasize
`
`language within the cited passages, but may not include argument.
`
`Petitioner may file the above-specified documents as exhibits, along
`
`with its paper containing citations, no later than two weeks and one calendar
`
`day after entry of this Order. Patent Owner may file its paper of citations no
`
`later than two weeks after Petitioner’s submission to PTAB. No further
`
`papers are authorized at this time.
`
`It is SO ORDERED.
`
`
`
`
`
`
`
`
`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.
`
`5
`
`
`
`IPR2016-01610 (Patent 8,454,186)
`
`FOR PETITIONER:
`
`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
`
`
`FOR PATENT OWNER:
`
`Emily E. Niles
`Cyrus A. Morton
`ROBINS KAPLAN LLP
`eniles@robinskaplan.com
`cmorton@robinskaplan.com
`
`6
`
`
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