Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 85
`Entered: November 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`COASTAL INDUSTRIES, INC.,
`Petitioner,
`v.
`SHOWER ENCLOSURES AMERICA, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00573
`Patent 7,174,944 B1
`_______________
`
`Before MICHAEL W. KIM, CARL M. DEFRANCO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge KIM.
`
`Opinion Dissenting-in-Part filed by Administrative Patent Judge
`DEFRANCO.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`
`I.
`
`INTRODUCTION
`Background
`A.
`Coastal Industries, Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1–26 of U.S. Patent No. 7,174,944 (Ex. 1001, “the
`’944 patent”). Paper 1 (“Pet.”). Shower Enclosures America, Inc. (“Patent
`Owner”) filed a Patent Owner’s Election to Waive Under 37 C.F.R.
`§ 42.107(b). Paper 8.
`On July 20, 2017, we instituted an inter partes review only on certain
`claims 1–3, 5, 7–9, 11–14, and 16–26, and only on certain grounds of
`unpatentability, set forth in the Petition. Paper 9 (“Dec.”). After institution
`of trial, Patent Owner filed a Patent Owner Response (Paper 13, “PO
`Resp.”), Petitioner filed a Reply (Paper 20, “Pet. Reply”), and, with Board
`authorization (Paper 21), Patent Owner filed a Sur-Reply (Paper 39,
`“PO Sur-Reply”) “to respond to new evidence and corresponding arguments
`set forth in Petitioner’s Reply.” Paper 21, 2. An oral hearing was held on
`March 28, 2018. Paper 43 (“Tr.”).
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in a petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).
`Consistent with SAS, we modified the trial to institute on all claims and
`grounds set forth in the Petition. Paper 44, 2 (“SAS Order”). We also
`authorized additional briefing and evidence, but noted that “the additional
`briefing and evidence is restricted to that which the parties did not have an
`opportunity to respond.” Paper 49, 3 (“Briefing Order”).
`Subsequent to that authorization, Patent Owner filed a Further
`Response Under 37 C.F.R § 42.120(a), Redacted as Per Paper #54
`
`2
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`(Paper 55; “Further Response”; “PO Supp. Resp.”), to which Petitioner filed
`a Supplemental Reply to Patent Owner’s Further Response (Paper 60;
`“Supplemental Reply”; “Pet. Supp. Reply”).
`Patent Owner additionally filed a Motion to Amend Claims (Paper 52;
`“PO Amend.”), to which Petitioner filed an Opposition to Patent Owner’s
`Motion to Amend Claims (Paper 59; “Pet. Amend.”)1, and Patent Owner
`filed a Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend
`Claims (Paper 69; “PO Reply”).
`Patent Owner also filed a Motion to Exclude Exhibits 1003, 1009,
`1034 (Paper 80; “PO Mot.”) to which Petitioner filed an Opposition to
`Patent Owner’s Motion to Exclude Exhibits 1003, 1009, 1034 (Paper 83;
`“Pet. Opp.”). A supplemental oral hearing was held on October 3, 2018.
`Paper 84 (“Supp. Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and assertions, we determine
`that Petitioner has met its burden of showing, by a preponderance of the
`evidence, that claims 1–3, 5, 7–9, 11–14, and 16–26 of the ’944 patent are
`unpatentable. We determine further that Petitioner has not met its burden of
`showing, by a preponderance of the evidence, that claims 4, 6, 10, and 15 of
`the ’944 patent are unpatentable. We additionally grant Patent Owner’s
`Motion to Amend for substitute claims 33 and 34. We further deny Patent
`Owner’s Motion to Exclude.
`
`
`1 Paper 59 has the same title and was filed at the same time as Paper 58. In a
`communication to the Board, Petitioner requested that the Board refer to
`Paper 59 only.
`
`3
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`
`Related Proceedings
`B.
`Petitioner and Patent Owner identify the following action as related to
`the ’944 patent: Shower Enclosures America, Inc. v. BBC Distribution
`Corp., Case No. 3:15-cv-627 (N.D. Ind.). Pet. 6; Paper 7, 1.
`
`The ’944 Patent
`C.
`The ’944 patent relates generally to “a track mechanism for a tri-panel
`door assembly that uses a header with two tracks and has an interlocking
`function that allows the movement of an outer door to guide the middle door
`with a smooth sliding operation.” Ex. 1001, 1:40–45. Figure 2 of the ’944
`patent is a partially exploded perspective view of triple slide assembly 10,
`and is set forth below.
`
`Ex. 1001, Fig. 2.
`As shown above in Figure 2, triple slide assembly 10 includes two
`track header 12, with front header track 14 and rear header track 16 in the
`
`
`
`4
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`walls of two track header 12. Ex. 1001, 6:27–30. Triple slide assembly 10
`further includes three interlocking slider rails, front rail 20, middle rail 22,
`and rear rail 24. Ex. 1001, 6:31–32.
`Front rail 20 has front track 30 facing middle rail 22 and rear rail
`24 has rear track 32 facing middle rail 22. Middle rail 22 is
`interconnected with rails 20, 24 through front track 30 and rear
`track 32. Front rollers 34 support front rail 20 in header track 14
`and rear rollers 36 support rear rail 24 in header track 16.
`Ex. 1001, 6:32–37.
`Referring to FIG. 2, middle rail 22 has left end 40 with a middle
`front roller 42 aligned with front track 30 and a right end 44 with
`a middle rear roller 46 aligned with rear track 34. Middle front
`roller 42 rides in front track 30 attached to front rail 20. Middle
`rear roller 46 rides in rear track 32 attached to rear rail 24. In this
`configuration, middle rail 22 is supported on left end 40 by front
`rail 20 through track 30 and roller 42 and on the right end 44 by
`rear rail 24 through track 32 and roller 46. This configuration of
`alternating rollers on front and rear tracks provides two direction
`movement of the middle rail 22 and couples front, rear tracks 30,
`32 to middle rail 22 to allow simultaneous gliding, interlocking
`and adjustability. Angled slot 48 is provided for adjustment of
`middle rail 22 in relation to header 12.
`Ex. 1001, 6:40–55.
`
`D. Claims
`Claims 1–26 are challenged, which are all of the current claims in the
`’944 patent. Claims 1, 12, 19, and 22 are independent. Independent claim 1
`is illustrative, and is reproduced below:
`1. A slide assembly for three sliding panels adapted to
`couple to a header having first and second header tracks
`comprising:
`first and second rail members adapted to slidingly couple
`to the first and second header tracks respectively;
`
`5
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`
`first and second track members adapted to couple to said
`first and second rail members respectively; and
`a third rail member adapted to slidingly couple to said first
`and second track members;
`wherein said third rail member is supported by said first
`and second track members; and
`wherein said first and second track members remain
`aligned with the header when the alignment of said first or said
`second rail members is adjusted.
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–26 on the following grounds.
`
`References
`
`Basis
`
`Challenged Claim
`
`Comeau2 and Sterling3
`Van Weelden4
`Van Weelden and Sterling
`Comeau and Jang5
`Van Weelden, Jang, and Sterling
`
`§ 103(a)
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`1–11 and 19–21
`1–3, 5, 7–9, 11–13,
`17–22, 25, and 26
`1–26
`12–16 and 22–24
`12–18 and 22–26
`
`Petitioner also relies on the Declarations of Florin Poenariu
`(Ex. 1003), Trace Jackson (Ex. 1023), Christopher Butler (Ex. 1029), and
`Jeffrey Dowd (Ex. 1034). Of those individuals, Patent Owner cross-
`examined Mr. Poenariu (Ex. 2001), Mr. Butler (Ex. 2003), and Mr. Dowd
`(Exs. 2006, 2007). For Mr. Dowd, Patent Owner filed a Motion for
`
`2 U.S. Patent No. 6,892,783 B1, issued May 17, 2005 (Ex. 1010; “Comeau”).
`3 “Installation Guide: 5700 Series Finesse™ Tri-Panel Bath and Shower
`Doors,” by Sterling, A Kohler Company, published 2002 (Ex. 1009;
`“Sterling”).
`4 U.S. Patent No. 4,633,614, issued Jan. 6, 1987 (Ex. 1011; “Van Weelden”).
`5 EP 0 985 793 A2, published Mar. 15, 2000 (Ex. 1012; “Jang”).
`
`6
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`Observations on Cross Examination (Paper 78; “PO Obs.”), to which
`Petitioner filed a Response to Patent Owner’s Motion for Observations on
`Cross Examination of Reply Witness Mr. Dowd (Paper 81; “Pet. Obs.”).
`
`II. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`Petitioner proposes a level of ordinary skill in the art at the time of the
`invention. Pet. 26. Patent Owner sets forth many assertions related to the
`level of ordinary skill in the art at the time of the invention. PO Resp. 3–14,
`20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet.
`Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of
`those assertions, as a substantive matter, Petitioner asserts that “PO does not
`dispute the definition of a PHOSITA, offer a contrary definition, explain
`how a different definition might affect the Board’s analysis, nor contest the
`Board’s specific interpretation of the prior art references to put the
`PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15–
`16. We agree with that assessment. Moreover, we note that the level of
`ordinary skill in the art is often reflected by the prior art of record. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
`(CCPA 1978). Accordingly, as an initial matter, we address Petitioner’s
`unopposed substantive assertion with respect to the level of ordinary skill in
`the art at the time of the invention.
`Substantive Analysis
`1.
`The Petition asserts the following concerning the level of ordinary
`skill in the art:
`
`7
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`
`Based on the disclosure of the [’]944 Patent, a person
`having ordinary skill in the art (“POSITA”) at the relevant time,
`would have had at least a bachelor’s degree in mechanical
`engineering, industrial engineering or related field, or equivalent
`experience of at least two years working in the field of the design
`and/or installation of sliding door or cabinet systems or
`enclosures.
`Pet. 26. In support, Petitioner provides the Declaration of Mr. Poenariu,
`who asserts the following
`a POSITA at the time of the [’]944 Patent filing would have been
`an engineer with at least a bachelor’s degree in mechanical
`engineering, or a related field, or equivalent experience of at least
`two years of working in the field of design and/or installation of
`sliding door or cabinet systems or enclosures.
`Ex. 1003 ¶ 15; see also Ex. 1003 ¶¶ 13, 14, 16–20 (other paragraphs set
`forth under section heading entitled “Person Having Ordinary Skill in the
`Art (‘PHOSITA’)”). Mr. Poenariu sets forth his qualifications, as follows:
`My educational background includes a Bachelor of
`Science in Mechanical Engineering (1995), and a Master’s
`Degree in Mechanical Engineering (1997) from Politehnica’
`University of Timisoara, Timisoara, Romania, both which were
`credited in 2007 by the University of Toronto, Canada. During
`the latter educational period, I was employed by UMT
`Timisoara, Romania, designing, prototyping and documenting
`mechanical parts and assemblies. My career has been focused
`on the design and development of mechanical parts, and in
`particular, mechanical rail systems for doors, cabinets, partitions
`and such, at several companies in Europe, Canada and in the
`United States.
`I am knowledgeable and familiar with mechanical aspects
`of panel doors and in particular with rails, tracks and their
`operational mechanical design components. Additional details
`of my education and employment history are set forth in my
`current curriculum vitae, provided attached to this Declaration as
`Ex. 1004.
`
`8
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`Ex. 1003 ¶¶ 8–9. Concerning his substantive analysis, which includes his
`assessment of the level of ordinary skill in the art at the time of the
`invention, Mr. Poenariu testifies, as follows:
`My analysis is based on my education and experience as
`set out above and in my CV, including the documents I have read
`and mechanical systems I have developed.
`I reviewed the various relevant publications from the art at
`the time of the alleged invention and the claim analysis that is
`included in the Petition for IPR of the ‘944 Patent, to which this
`declaration relates. I have also reviewed the Petition in its
`entirety. Based on my experience as a person having ordinary
`skill in the art (“POSITA”) at the time of the alleged invention,
`the references accurately characterize the state of the art at the
`relevant time.
`Ex. 1003 ¶¶ 10–11. Mr. Poenariu further states “[m]ore specifically, I have
`reviewed at least the following references for the preparation of this
`Declaration,” and then lists Exhibits 1001, 1002, 1005–1022. Ex. 1003 ¶ 11.
`Among those references are the ’944 patent, Van Weelden, Sterling, Jang,
`and Comeau. Ex. 1003 ¶ 11. The ’944 patent “pertains generally to track
`mechanisms for sliding doors,” with schematic views of the relationship
`between various parts of those slidable doors. Ex. 1001, 1:40–41; Figs. 1–7.
`Van Weelden “relates to structures for mounting a slidable door on rails for
`movement thereon.” Ex. 1011, 1:7–8. Sterling is entitled “5700 Series
`FinesseTM Tri-Panel Bath and Shower Doors,” and reads “[p]lease take a few
`minutes to study these Installation Instructions.” Ex. 1009, 1–2. Jang
`“relates, in general, to sliding doors,” with schematic views of the
`relationship between various parts of those slidable doors. Ex. 1012 ¶ 1,
`Figs. 1–8. Comeau relates to “a multiple panel track system for a window
`covering assembly,” with schematic views of the relationship between
`
`9
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`various parts of such a system. Ex. 1010, 1:4–7; Figs. 1–28; see also Pet. 3
`(citing Ex. 1005, 342–347 (book entitled “Building Construction and
`Superintendence” with a section on “Sliding Door Hangers”)).
`Furthermore, Petitioner additionally asserts the following:
`PO admitted that Mr. Poenariu is a technical expert in the
`art. Paper 43, 26:20–27:3. PO contends that Mr. Poenariu
`cannot opine about the level of ordinary skill in the art, alleging
`that Mr. Poenariu’s analysis was deficient. Paper 43, 4:4–6.
`However, PO has still not provided an alternative level of skill in
`the art, or shown how such a skill would affect Mr. Poenariu’s
`opinions or the Board’s decisions. Further, Mr. Dowd’s
`declaration, Ex. 1034, confirms Mr. Poenariu’s conclusions.
`Accordingly, the Board should ignore PO’s renewed arguments,
`e.g., FR, pp. 11, 14, 16, regarding the level of ordinary skill in
`the art.
`Pet. Supp. Reply 15–16 (emphasis added); Ex. 1034 ¶ 13 (“After reviewing
`the [’]944 specification and claims, I agree with Mr. Poenariu’s POSITA
`definition and provide my opinions from the perspective of a POSITA in the
`early 2000s.”).
`Mr. Dowd sets forth his qualifications, as follows:
`I have been working in the shower door industry since
`1985, when I began working for Southeastern Aluminum
`Products (“Southeastern”) in Jacksonville, Florida. Southeastern
`is a leading bath enclosure company that has been in business
`since 1952 and serves the United States, Canada, and the
`Caribbean.
`I worked for Southeastern from 1985 until 2016. During
`my 30+-year tenure at Southeastern, I received various
`promotions and worked
`throughout
`the United States,
`particularly out of Jacksonville, Florida; Raleigh, North
`Carolina; Indianapolis, Indiana; and Dallas, Texas.
`At Southeastern, I began providing shower enclosure
`technical assistance to customers in 1985 as a customer
`
`10
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`
`representative. In or about 1988, I was promoted to serve as
`Southeastern’s customer service manager. My duties as
`customer service manager at Southeastern included general
`customer service department duties and helping other
`departments,
`including
`in
`the product
`improvement and
`development areas. For example, I routinely provided insight
`and assisted in developing profiles and parts to accommodate
`custom door applications. I also performed local SD installation
`for customers.
`In or about 1990, I joined Southeastern’s sales team as
`their Mid-Atlantic Sales Representative. This new title did not
`limit the scope of my work; I continued to help develop and test
`new product lines, wrote product installation instructions and
`specifications, and provided installation training, as well
`maintained sales accounts.
`In or about 1996, I became Southeastern’s Mid-Western
`sales representative until I was promoted to serve as the Western
`Regional Sales Manager from 1999 to 2005. Aside from the
`areas serviced and additional sales managerial responsibilities,
`my product development functions in the company did not
`substantially differ from those in my previous position. During
`this time period, I helped develop and improve Southeastern
`products, including, for example, by becoming a member of
`Southeastern’s product advisory council and participating in the
`development of a pivot door hinge system which Southeastern
`implemented in some of their bathroom enclosure products. This
`pivot door hinge system was awarded U.S. Pat. No. 6,643,898
`B1 of which I am a listed inventor.
`In or about 2005, I was promoted to Southeastern’s Vice-
`President of Sales. I served in that capacity until I was again
`promoted by Southeastern in 2014 to serve as Vice-President of
`Sales & Marketing. I left my position at Southeastern in 2016
`and have been serving as Coastal Industries, Inc.’s Western
`Regional Manager, International Accounts West / Midwest /
`Caribbean / Canada, for just over two years.
`
`11
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`Ex. 1034 ¶¶ 1–6. Concerning his substantive analysis, which includes his
`assessment of the level of ordinary skill in the art at the time of the
`invention, Mr. Dowd testifies, as follows:
`As part of my analysis set forth in this declaration, I have
`reviewed the disclosure and claims of U.S. Pat. No. 7,174,944
`(“the ‘944 Patent”) from the viewpoint of a person of ordinary
`skill in the art at the time of the earliest possible priority of the
`‘944 Patent (Jun. 11, 2003) based on my experience in the
`shower enclosures field. I have reviewed the following patents,
`publications, and other materials.
`Ex. 1034 ¶ 8. Listed as having been reviewed are Exhibits 1001–1003,
`1008–1022, 1035–1038, and among them are the ’944 patent, Comeau, Van
`Weelden, Sterling, and Jang. Ex. 1034 ¶ 8.
`Given the above, and the other assertions set forth by Petitioner in the
`relevant portions of the Petition, Mr. Poenariu’s Declaration, and Mr.
`Dowd’s Declaration, we find that Petitioner’s proffered level of ordinary
`skill at the time of the invention is adequately supported and correct. There
`is no doubt that the relevant field of technology is installation of slidable
`doors, and Mr. Poenariu and Mr. Dowd each testify, essentially, that one of
`ordinary skill at the time of invention would have been an engineer with
`some experience in that field. As a practical matter, that is the level of
`ordinary skill proffered by Petitioner, and we need not come to a more exact
`articulation.
`Accordingly, we find, as stated by Petitioer, that “a person having
`ordinary skill in the art (“POSITA”) at the relevant time, would have had at
`least a bachelor’s degree in mechanical engineering, industrial engineering
`or related field, or equivalent experience of at least two years working in the
`
`12
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`field of the design and/or installation of sliding door or cabinet systems or
`enclosures.” Pet. 26.
`
`Procedural Analysis
`2.
`Patent Owner sets forth many alleged procedural defects, promulgated
`by both Petitioner and the Board, related to the level of ordinary skill in the
`art. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to
`those alleged procedural defects. Pet. Reply 2–4, 9–18; Pet. Supp. Reply
`15–16. We address each in turn.
`a.
`Analysis of Patent Owner’s Procedural
`Assertions Generally Applicable to Decision
`At the outset, under the heading of “Applicable Rules of Patent Law,”
`Patent Owner makes several citations to the Manual of Patent Examining
`Procedure (“MPEP”), as well as 35 U.S.C. § 132 and In re Piasecki, 745
`F.2d 1468 (Fed. Cir. 1984). PO Resp. 3–6 (citing MPEP §§ 2103, 2111,
`2141); see also Pet. 20–21, 26–27 (citing MPEP § 2141); Pet. Reply 14
`(citing MPEP § 2141). The MPEP is based on case law. Insofar as such
`case law concerns patent law principles generally applicable to both patent
`applications and issued patents, it is relevant and must be considered.
`With respect to claim construction, Patent Owner first cites to Phillips
`v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc), but then
`later cites to In re Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999).
`Petitioner asserts that the Board does not apply Phillips, which is the claim
`construction standard used in district court, and instead applies the “broadest
`reasonable construction in light of the specification of the patent in which it
`
`13
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`appears.” Pet. Reply 10–11 (citing 37 C.F.R. § 42.100(b)).6 For unexpired
`patents, Petitioner is, of course, correct, however, we note that In re
`Cortright is a case that utilizes the standard applicable to this proceeding.
`In the next section of Patent Owner’s Response, under the heading
`“Applicable Rules of Evidence,” Patent Owner cites to Aqua Products, Inc.
`v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). PO Resp. 7. The portion of Aqua
`Products quoted, however, only relates to amended claims, and has been
`applied below to those claims.
`In that same section, Patent Owner also refers to Federal Rule of
`Evidence 702. PO Resp. 7; see also PO Resp. 14 (“The Board, as the
`gatekeeper, must ignore that testimony completely.”), 30 (“[T]he events in
`this case, as shown by Mr. Poenariu’s responses in his deposition (some of
`which are described above in detail), demonstrate that his Declaration was a
`complete sham. Mr. Poenariu simply signed what was written and put in
`front of him by his employer’s attorney. The transcript demonstrates Mr.
`Poenariu’s complete lack of fundamental understanding of the legal issues,
`rampant evasion, and a total irresponsibility for the truth of the statements of
`fact and opinions he proffered.”). Petitioner asserts that this is essentially a
`“quasi-motion to exclude,” and should not be considered. Pet. Reply 2–3;
`see also Pet. Reply 9–10 (“The Board is Capable of Evaluating the
`Declaration and Should Not Exclude It.”). Insofar as Patent Owner is
`asserting that any expert testimony should be excluded, and not considered
`
`6 We acknowledge that for petitions filed on or after November 13, 2018, the
`Phillips standard will be applied. Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent
`Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018).
`
`14
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`at all, because it does not meet the indicia of reliability under F.R.E. 702, we
`agree with Petitioner that the proper vehicle for such an assertion is a motion
`to exclude, and those arguments are addressed below in our consideration of
`Patent Owner’s Motion to Exclude.7
`Having said that, insofar as Patent Owner is asserting that any weight
`accorded any expert testimony should be discounted because it does not
`meet the indicia of reliability under F.R.E. 702, those arguments are proper,
`and should be considered.
`Patent Owner further asserts the following:
`37 CFR §42.22(c) permitted Coast to submit a “Statement
`of Material Facts” with its Petition. Coastal did not do so. Thus,
`it is not reasonable or feasible for the Patent Owner to attempt to
`decipher with specificity what those material facts may be from
`the Petition, and then specifically deny any such material fact as
`it would need to under 37 CFR §42.23(a). In general, however,
`and as explained in more detail above, the Patent Owner denies
`each and every allegation made by Coastal about what a POSITA
`would or would not think, know, or do. In addition, since there
`is no evidence of record as to what the relevant level of skill in
`the pertinent art is, the Patent Owner denies each and every
`allegation made by Coastal about how a reference would or could
`be combined with another reference, as well as every allegation
`of fact dependent upon what a claim element would mean to a
`person of ordinary skill in the art. Further, to the extent that any
`allegation of material fact made by Coastal was not expressly
`relied upon by the Board in its Decision, objection to that
`material fact is expressly reserved
`
`7 “The policy considerations for excluding expert testimony, such as those
`implemented by the gatekeeping framework established by the Supreme
`Court in Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993), are less
`compelling in bench proceedings such as inter partes reviews than in jury
`trials.” Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc., Case
`IPR2015-00249, slip op. at 23 (PTAB June 2, 2016) (Paper 76).
`
`15
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`PO Resp. 29. As noted by Patent Owner, Petitioner did not submit such a
`“Statement of Material Facts,” and so there is no “Statement of Material
`Facts” to object to or deny, expressly reserved or otherwise. With respect to
`other things objected to or denied, as a practical matter, the Board can only
`consider objections or denials to specific, discrete facts or arguments
`identified by Patent Owner. Accordingly, if Petitioner advances a fact or
`argument supported by evidence, and Patent Owner does not challenge that
`fact or argument, or underlying evidence, with specificity, while Patent
`Owner’s blanket objections and denials are noted, as a practical matter, the
`Board can do no more than weigh the fact or argument, as well as the
`underlying evidence, in determining whether Petitioner has met its burden
`with respect to that specific fact or argument.
`b.
`Analysis of Patent Owner’s Procedural
`Assertions Specific to Level of Ordinary Skill
`Patent Owner asserts that the Decision on Institution is procedurally
`deficient, because it does not affirmatively set forth a level of ordinary skill
`in the art. PO Resp. 8–9, 14. According to Patent Owner, “[w]ithout
`determining what the ‘level of ordinary skill in the pertinent art’ actually is,
`the entire obviousness analysis must STOP. It is procedurally (and
`logically) dead in the water.” PO Resp. 9. Petitioner responds that the
`Board is not required to set forth an express finding as to the level of
`ordinary skill in the art in a decision on institution, and, indeed, that in many
`instances “[s]pecifying a particular level of skill is not necessary where the
`prior art itself reflects an appropriate level.” Pet. Reply 14–16 (citing MPEP
`§ 2141.03(II) (citing Chore-Time Equipment, Inc. v. Cumberland Corp., 713
`F.2d 774, 778–79 (Fed. Cir. 1983); Okajima v. Bourdeau, 261 F.3d at
`1355)). Petitioner asserts further that the Federal Circuit rejected an
`
`16
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`argument similar to Patent Owner’s assertions in VirnetX Inc. v. Apple Inc.,
`665 F. App’x 880, 884–85 (Fed. Cir. 2016) (unpublished). We agree with
`Petitioner’s overall assertion, generally, but also on additional bases.
`Specifically, Patent Owner’s assertions appear to stem from a
`fundamental misunderstanding of inter partes review proceedings. Inter
`partes reviews are adversarial proceedings, where the Board, as decision
`maker, makes findings and renders judgment. Ultimate judgment is not
`rendered, however, until the final written decision. 35 U.S.C. § 318(a).
`Until that point in time, the papers that are the focus of the proceeding are
`those rendered by the parties, which, for a petitioner, is primarily the
`petition. Accordingly, during an inter partes review, a patent owner’s focus
`should first and foremost be on the petition, in that any relevant assertions
`should be directed to purported deficiencies set forth in the petition.
`Of course, the Board does render a decision on institution. 35 U.S.C.
`§ 314(a). The decision on institution, however, is no more than a notice
`document as to whether a trial has been instituted on the claims and grounds
`set forth in the petition. SAS, 138 S. Ct. at 1355–56 (“[T]he statute says the
`Director must decide ‘whether to institute an inter partes review . . . pursuant
`to a petition.’ § 314(b). The Director, we see, is given only the choice
`‘whether’ to institute an inter partes review. That language indicates a
`binary choice—either institute review or don’t.”). There is no statutory
`requirement that the decision on institution contain anything more than
`providing such notice to the parties, as the substantive requirements for
`instituting trial focus solely on the content of the petition. 35 U.S.C.
`§ 314(a) (“The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`
`17
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”) (emphases added); see also 37 C.F.R. § 42.108(c) (“Inter partes
`review shall not be instituted for a ground of unpatentability unless the
`Board decides that the petition supporting the ground would demonstrate
`that there is a reasonable likelihood that at least one of the claims challenged
`in the petition is unpatentable.”) (emphases added). Patent Owner indicates
`that it is fully aware of the claims and grounds on which trial was instituted.
`PO Resp. 2; PO Supp. Resp. 2. Accordingly, any assertions concerning
`other “defects” in the Decision on Institution are misplaced.8 To that end,
`we note that all of the MPEP sections and case law cited above by Patent
`Owner, regarding the alleged necessity of affirmatively setting forth a level
`of ordinary skill in the art, concern final decisions rendered by the Board,
`both from appeals from examiner rejections and trial proceedings, and not
`decisions on institution.
`Indeed, we note further that, although not required to, Patent Owner
`did not file a preliminary response. Had Patent Owner challenged the level
`of ordinary skill in the art in the preliminary response, the Decision on
`Institution most likely would have addressed it. And if Patent Owner truly
`
`
`8 Although this determination would be legally sufficient under SAS Inst. v.
`Iancu, 138 S. Ct. 1348 (2018), for purposes of deciding whether to institute
`trial on a petition, the Office’s current policy is to provide details to the
`parties to the extent practicable, including responding to a Patent Owner’s
`arguments. See SAS Q&As, E1 (June 5, 2018) (available at
`https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf).
`Here, although Patent Owner did not file a preliminary response, the Board
`did provide details in the Decision on Institution, including denying trial on
`certain claims and grounds. See generally Dec.
`
`18
`
`

`

`IPR2017-00573
`Patent 7,174,944 B1
`
`believed the Decision on Institution was fundamentally deficient in some
`way, the proper vehicle was a request for rehearing, of which none was filed.
`37 C.F.R. § 42.71(c)–(d).
`In view of the above, Patent Owner’s assertions are misplaced, in that
`there was no requirement for the Board to affirmatively set forth a level of
`ordinary skill in the art in a decision on institution. The proper focus of such
`an inquiry i