Paper No. 13
`Trials@uspto.gov
`571-272-7822 Entered: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUARDIAN BUILDING PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`JOHNS MANVILLE,
`Patent Owner.
`____________
`
`Case IPR2017-00633
`Patent 6,245,282 B1
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d); 37 C.F.R. § 42.108
`
`

`

`IPR2017-00633
`Patent 6,245,282 B1
`
`
`INTRODUCTION
`I.
`Guardian Building Products, Inc. (“Petitioner”) requests an inter
`partes review of claims 6–29 of U.S. Patent No. 6,245,282 B1 (“the ’282
`patent,” Ex. 1001). Paper 2 (“Pet.”). Johns Manville (“Patent Owner”) filed
`a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`Based upon the particular circumstances of this case, we exercise our
`discretion under 35 U.S.C. § 314(a) and § 325(d) and do not institute an
`inter partes review of the challenged claims.
`BACKGROUND
`II.
` Related Proceedings
`The parties identify Reissue Application No. 15/062,755 (the “’755
`reissue application”), which concerns the ’282 patent. Pet. 2; Paper 4, 1.
`The ’755 reissue application was filed by Patent Owner on March 7, 2016,
`before the filing of the instant Petition, and is currently pending. In the
`reissue proceeding, a final Office action was issued on May 8, 2017,
`rejecting claims 6–29 and 31—all claims pending in the application. Patent
`Owner filed a notice of appeal to the Board on June 28, 2017.1
`The parties also identify the following district court litigation
`involving the ’282 patent: Johns Mansville Corp. v. Knauf Insulation, Inc.,
`COD-1-15-cv-02671 (D. Colo., filed Dec. 9, 2015). Pet. 1; Paper 4, 2. On
`October 27, 2016, the District Court granted Patent Owner’s motion to stay
`pending completion of reissue proceedings, and the case has been
`
`
`1 The May 8, 2017 final Office action, a June 1, 2017 Patent Owner
`response, a June 14, 2017 advisory action, and the June 28, 2017 notice of
`appeal were entered in the reissue application after Patent Owner filed its
`Preliminary Response and were not filed as exhibits in this proceeding.
`2
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`IPR2017-00633
`Patent 6,245,282 B1
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`administratively closed, subject to reopening for good cause. Ex. 2001, 346
`(district court docket entry 67, Order and Recommendation of United States
`Magistrate Judge, included in the file history for the ’755 reissue
`application).
`
` The ’282 Patent
`The ’282 patent, titled “Apparatus and Method for Forming Fibers
`from Thermoplastic Fiberizable Materials,” issued on June 12, 2001.
`The ’282 patent relates to fibers “produced [] from molten thermoplastic
`fiberizable material in a rotary fiberizing process by passing the fiberizable
`material through rows of fiberizing holes in an annular sidewall of a
`fiberizing disk.” Ex. 1001, Abstract. More particularly, the invention
`claimed in the ’282 patent is “an apparatus and method for forming fibers
`from molten thermoplastic fiberizable materials which improves the physical
`characteristics of the fibers produced and the integrity of blankets formed
`from the fibers.” Id. at 1:8–12.
` Illustrative Claim
`As issued, the ’282 patent included 29 claims. The Petition
`challenges claims 6–29,2 of which only claim 6 is independent. Claims 7–29
`depend, directly or indirectly, from claim 6, which is reproduced below:
`6. A method for producing fibers from a molten thermo-plastic
`fiberizable material comprising:
`providing a fiberizing disk having a bottom wall and an annular
`peripheral sidewall integral with and extending upward from a
`periphery of the bottom wall; the annular sidewall having a
`plurality of annular, horizontally extending rows of fiberizing
`holes therein through which a molten thermoplastic fiberizable
`
`2 As discussed below, prior to the filing of the instant Petition, Patent Owner
`canceled claims 1–5 in the reissue proceeding. Ex. 1017, 2; Ex. 2001, 211.
`3
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`IPR2017-00633
`Patent 6,245,282 B1
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`
`material is passed to fiberize the molten thermoplastic fiberizable
`material; the plurality of annular rows of fiberizing holes having an
`uppermost row of fiberizing holes and a lowermost row of
`fiberizing holes;
`supplying a molten thermoplastic fiberizable material to the
`bottom wall of the fiberizing disk radially inward of the annular
`peripheral sidewall;
`rotating the fiberizing disk to cause the molten thermoplastic
`fiberizable material supplied to the bottom wall of the fiberizing
`disk to flow outward to the annular sidewall, up the annular
`sidewall, and outward through the fiberizing holes in the annular
`sidewall in a generally horizontal direction to form fibers;
`supplying a combustible gas or gaseous mixture through a first
`manifold to the fiberizing disk internally of the annular sidewall;
`burning the combustible gas or gaseous mixture externally of the
`first manifold and within the fiberizing disk; forming products of
`combustion through the burning of the combustible gas or gaseous
`mixture; and helping maintain the fiberizing disk and the molten
`thermoplastic fiberizable material supplied to the fiberizing disk
`within a desired temperature range for fiberization through the
`burning of the combustible gas or gaseous mixture;
`supplying a second combustible gas or gaseous mixture through
`a second manifold; burning the combustible gas or gaseous
`mixture from the second manifold externally of the second
`manifold and the fiberizing disk; forming products of combustion
`from the burning of the combustible gas or gaseous mixture from
`the second manifold; heating an annular fiber attenuation zone
`which is concentrically located relative to and extends outward
`from the annular sidewall of the fiberizing disk from a height of
`the uppermost row of fiberizing holes to a height of the lowermost
`row of fiberizing holes with the products of combustion from the
`burning of the combustible gases or gaseous mixtures from the first
`and second manifolds; and attenuating within the annular fiber
`attenuation zone, with the products of combustion from the
`burning of the combustible gases or gaseous mixtures from the first
`and second manifolds, fibers formed by the fiberizing disk; and
`
`
`
`4
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`

`

`positioning a gaseous fluid discharge ring concentrically
`relative the fiberizing disk and spaced outwardly from the annular
`sidewall of the fiberizing disk; discharging a high velocity annular
`curtain of gaseous fluid in a downward direction from the gaseous
`fluid discharge ring at a height equal to or above the uppermost
`row of fiberizing holes to help attenuate fibers in the heated
`annular fiber attenuation zone and redirect, downward for
`collection, the fibers formed by the fiberizing disk that have passed
`through the heated annular fiber attenuation zone.
`Ex. 1001, 10:4–11:4.
` The Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims of the ’282 patent are
`unpatentable based upon the following grounds:
`Reference(s)
`Statutory
`Basis
`§102/§103
`§102
`§103
`§103
`§103
`§103
`§103
`
`6, 10
`6, 10
`6, 10
`7, 8
`9
`11, 12
`13–16, 24–29
`
`Claim(s) Challenged
`
`IPR2017-00633
`Patent 6,245,282 B1
`
`
`McCoppin3
`Firnhaber4
`Firnhaber and Snyder5
`McCoppin and Charpentier6
`McCoppin and Snyder
`McCoppin and Admitted Prior Art
`McCoppin, Admitted Prior Art, and
`Blandin7
`McCoppin, Charpentier, Admitted
`Prior Art, and Blandin
`
`§103
`
`17–23
`
`
`3 U.S. Patent No. 3,265,477 (“McCoppin,” Ex. 1005).
`4 U.S. Patent No. 3,227,536 (“Firnhaber,” Ex. 1006).
`5 U.S. Patent No. 5,785,996 (“Snyder,” Ex. 1007).
`6 U.S. Patent No. 3,304,164 (“Charpentier,” Ex. 1008).
`7 U.S. Patent No. 5,277,706 (“Blandin,” Ex. 1009).
`5
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`IPR2017-00633
`Patent 6,245,282 B1
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`
`The Petition is supported by the Declaration of Steve W. Martin,
`Ph.D. Ex. 1002 (the “Martin Declaration).
`III. ANALYSIS
`A. Statutory and Regulatory Framework
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to
`institute an IPR proceeding”); Intelligent Bio-Systems, Inc. v. Illumina
`Cambridge Ltd., Case IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013)
`(Paper 19) (“Congress did not mandate that an inter partes review must be
`instituted under certain conditions. Rather, by stating that the Director—and
`by extension, the Board—may not institute review unless certain conditions
`are met, Congress made institution discretionary.”).
`In determining whether to institute an inter partes review, the Board
`may “deny some or all grounds for unpatentability for some or all of the
`challenged claims.” 37 C.F.R. § 42.108(b). The Board’s discretionary
`determination of whether to institute review is, in part, guided by 35 U.S.C.
`§ 325(d), which states, in relevant part:
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take
`into account whether, and reject the petition or request because,
`the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`35 U.S.C. § 325(d).
`Our discretion under Section 325(d) involves a balance between
`several competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens,
`Case IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11)
`
`
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`Patent 6,245,282 B1
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`(“While petitioners may have sound reasons for raising art or arguments
`similar to those previously considered by the Office, the Board weighs
`petitioners’ desires to be heard against the interests of patent owners, who
`seek to avoid harassment and enjoy quiet title to their rights.”) (citing H.
`Rep. No. 112-98, pt. 1, at 48 (2011)). “On the one hand, there are the
`interests in conserving the resources of the Office and granting patent
`owners repose on issues and prior art that have been considered previously.”
`Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB
`Apr. 3, 2017) (Paper 8). “On the other hand, there are the interests of giving
`petitioners the opportunity to be heard and correcting any errors by the
`Office in allowing a patent—in the case of an inter partes review—over
`prior art patents and printed publications.” Id.
` The Reissue Proceeding
`Petitioner provides an outline of the reissue proceeding. Pet. 9–10.
`Patent Owner also provides a timeline of the reissue proceeding in its
`Preliminary Response. Prelim. Resp. 9–11. Based on the parties’
`representations and our review of the record, the history of the reissue
`proceeding generally is as follows:
`- March 7, 2016 – Patent Owner filed an application for reissue of
`the ’282 patent. The application for reissue included original
`claims 1–29 and new claim 30. Ex. 2001, 1–69. Patent Owner
`argued that the claims in the reissue application are distinguishable
`over art cited in an information disclosure statement (IDS),
`including Firnhaber (Ex. 1006). Ex. 1015, 12–14; Ex. 2001, 1–2,
`38–40.
`
`
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`IPR2017-00633
`Patent 6,245,282 B1
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`
`- October 7, 2016 – in an Office action, the Examiner rejected
`claims 1–5 and new claim 30, while deeming claims 6–29
`allowable. Pet. 9 (citing Ex. 1016, 3–7); Ex. 2001, 160–68.
`- October 20, 2016 – Patent Owner submitted an amendment and
`reply to the Office action, cancelling claims 1–5 and 30. Ex. 2001,
`211–19.
`- November 14, 2016 – in a final Office action, the Examiner
`rejected claims 6–29 as based on a defective reissue declaration.
`Ex. 2001, 234–41.
`- November 22, 2016 – Patent Owner submitted an amendment and
`reply to the final Office action, adding new claim 31 and
`presenting arguments directed to the defective reissue declaration.
`Id. at 242–60.
`- January 10, 2017 – Patent Owner submitted an additional IDS
`identifying the instant Petition (filed on January 9, 2017), the
`Martin Declaration, and all the references cited in the Petition, i.e.,
`the McCoppin, Firnhaber, Charpentier, Blandin, and Snyder
`references. Id. at 262–71.
`- January 23, 2017 – in a non-final Office action, the Examiner
`rejected claims 6–29 and 31, based in part on art identified in the
`January 10, 2017 IDS, as summarized in the table below, stating
`that the finality of the previous Office action “has been withdrawn
`and prosecution has been reopened in view [of] the application
`cited by reissue applicant in an[] IDS filed January 10, 2017.”
`Id. at 272–82.
`
`
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`IPR2017-00633
`Patent 6,245,282 B1
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`
`Reference(s)
`
`McCoppin
`McCoppin and Charpentier
`McCoppin
`McCoppin and Battigelli8
`
`Statutory
`Basis
`§102
`§103
`§103
`§103
`
`Claim(s)
`Rejected
`6, 9, 10
`7, 8, 17–23
`11–16, 24–29
`31
`
`The Examiner indicated that the IDS submitted on January 10,
`2017, was considered. Id. at 275; see also id. at 283–84 (noting
`“ALL REFERENCES CONSIDERED EXCEPT WHERE LINED
`THROUGH”).
`- February 17, 2017 – Patent Owner submitted Remarks/Arguments
`in response to the Examiner’s rejections. Id. at 288–305.
`- March 29, 2017 – in a non-final Office action, the Examiner
`rejected claims 6–29 and 31, as summarized in the table below. Id.
`at 316–26.
`Reference(s)
`
`McCoppin
`McCoppin and Charpentier
`McCoppin and Battigelli
`
`Statutory
`Basis
`§103
`§103
`§103
`
`Claim(s)
`Rejected
`6, 9–16, 24–29
`7, 8, 17–23
`31
`
`- April 11, 2017 – Patent Owner submitted Remarks/Arguments in
`response to the Examiner’s rejections. Id. at 352–69.
`- May 8, 2017 – in a final Office action, the Examiner rejected
`claims 6–29 and 31, maintaining the grounds of rejection from the
`March 29, 2017 non-final Office action.
`
`
`8 U.S. Patent No. 6,158,249 to Battigelli.
`9
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`Patent 6,245,282 B1
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`- June 1, 2017 – Patent Owner submitted Remarks/Arguments in
`response to the Examiner’s rejections.
`- June 14, 2017 – in an advisory action, the Examiner addressed
`Patent Owner’s arguments and maintained the same grounds of
`rejection.
`- June 28, 2017 – Patent Owner filed a notice of appeal to the Board.
` Discussion
`Patent Owner asks the Board to exercise its discretion to deny
`institution under 35 U.S.C. § 325(d), because “the Examiner in the pending
`reissue proceeding has considered the identical references and arguments
`presented in the Petition.” Prelim. Resp. 18–21. Patent Owner summarizes:
`the pending reissue application has expressly considered the
`two primary references cited in the Petition (McCoppin and
`Firnhaber); has expressly considered two of the four secondary
`references cited in the Petition (Snyder and Charpentier); and
`has had an opportunity to review not only the other two
`secondary references cited in the Petition (Blandin and
`“Admitted Prior Art”), but also the arguments contained in the
`Petition itself, as the Petition and references cited therein were
`submitted in an IDS only a day after the Petition was filed with
`the Board.
`Id. at 11.
`Petitioner does not directly address Section 325(d), but argues, inter
`alia, that “there is no indication that the full scope of Firnhaber was
`considered during the prosecution of either the ’282 patent or its currently
`pending reissue application.” Pet. 33.
`We agree with Patent Owner that the present situation, in which the
`Petition, the Martin Declaration, and all the references cited therein were
`presented in toto to the Examiner in an IDS, and the Examiner considered
`
`
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`and took action on the presentation, falls within the ambit of Section 325(d).
`We recognize that the Examiner’s rejections of claims 6–29 in the reissue
`proceeding, presently on appeal before the Board, are based on fewer than
`all of the references cited in the Petition. To fall within the scope of Section
`325(d), however, all that is required is that the same or substantially the
`same art and arguments were presented to the Office. Regardless of the
`exact combination of references cited in the Examiner’s rejections, it is
`beyond dispute that all references in the Petition were presented to the
`Office during the reissue proceeding. The statute, therefore, gives us the
`discretion to deny the Petition.
`We exercise our discretion under Section 325(d) to deny the Petition
`with regard to claims 6–29 for at least three reasons based on the particular
`facts of this case.
`First, the challenged patent underwent a comprehensive examination
`during the reissue proceeding that addressed all claims currently pending
`before us in this proceeding, and there is a pending appeal of the Examiner’s
`decision in the reissue proceeding that will be considered by the Board in
`due course. Efficiency of proceedings before the Office would be frustrated
`were we to consider the challenges in the current Petition, which are
`substantially similar to the grounds on which the challenged claims currently
`stand rejected in the reissue proceeding. Further inefficiency would be
`introduced if the Board were to institute an inter partes review and then
`subsequently consider the substantially similar rejections in the appeal of the
`Examiner’s decision in the reissue proceeding. Moreover, disposition of the
`appeal in the reissue proceeding may result in additional prosecution before
`the Examiner, which may result in alteration or even cancellation of the
`
`
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`claims challenged in the present proceeding. Such an outcome would
`change the scope of the claims in the patent presently challenged in
`Petitioner’s request for an inter partes review, and for this additional reason,
`proceeding on the now-existing claims would frustrate the Board’s objective
`of efficiency.
`Second, not only was the same art presented to the Office, as
`discussed above, but that art was expressly considered and substantively
`applied against the claims in a series of Office actions in the reissue
`proceeding. As detailed above, the primary references relied upon in the
`Petition—McCoppin and Firnhaber—as well as one secondary reference—
`Charpentier—were expressly addressed by Patent Owner and the Examiner
`in the reissue proceeding. Ex. 2001, 38–40, 272–82, 288–305. Furthermore,
`the art identified by Petitioner as “Admitted Prior Art” (Pet. 20, citing Ex.
`1001, 1:5–2:34) was identified and addressed by the Examiner in connection
`with the Examiner’s discussion of claims 11–29. Ex. 2001, 280–81 (citing
`Ex. 1001, 1:13–2:33). Although the Petition cites secondary prior art
`references—Snyder and Blandin—that were not relied upon by the
`Examiner to reject claim 9 or claims 13–29 in the reissue proceeding,
`Petitioner relies upon these references for disclosures that the Examiner
`found to have “no structural distinction” from the collective of elements
`disclosed by the prior art (Ex. 2001, 278, regarding claim 9), or for
`disclosures that the Examiner determined were supplied by other art or by
`the background knowledge of a person of ordinary skill (id. at 279–81,
`regarding claims 13–29).
`Finally, in balancing the interests of the parties to this proceeding, we
`acknowledge that Petitioner has a direct interest in pursuing the instant
`
`
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`Petition; we also acknowledge the burden and expense to Patent Owner in
`having to defend another challenge of the patent-at-issue. Conducting an
`inter partes review of the ’282 patent concurrently with the late-stage reissue
`proceeding, which has now been appealed to this same Board, would
`duplicate the efforts of Patent Owner, and could potentially result in
`inconsistencies between the proceedings. Further, considering that the
`reissue proceeding has resulted in numerous Office actions, responses, and
`the filing of an appeal, we determine that the resources of the Patent Owner
`have been and continue to be expended in that proceeding.
`Regarding the one-year time period under 35 U.S.C. § 315(b),
`Petitioner states that, because the waiver of service in the related district
`court proceeding was filed on January 8, 2016, Petitioner could not delay
`any longer to file the instant Petition. Pet. 2 n.2. Petitioner’s statement does
`not, however, persuade us against denial of the instant petition under
`§ 325(d). As noted by Petitioner (Pet. 2), Patent Owner would be required to
`surrender the ’282 patent upon issuance of a reissue patent, if any. 35
`U.S.C. § 252; 37 C.F.R. § 1.178. Petitioner has not identified any reason
`that it could not challenge such a reissued patent, if any, that issues as a
`result of the reissue proceeding.9
`
`
`9 We note that in Eizo Corp. v. Barco N.V., Case IPR2014-00358, slip op.
`at 8 (PTAB July 14, 2015) (Paper 21), the Board found Section 315(b)
`inapplicable because the Petition was not filed more than one year after
`Petitioner was served with an amended complaint alleging infringement of a
`reissued patent (the ’707 patent) that was a reissue of the ’849 patent, which
`was the subject of the original complaint. Under the particular facts of that
`case, the Board found that the claims of the ’849 patent were not
`substantially identical to the claims of the reissued ’707 patent, and
`
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`In a similar vein, Petitioner states that if the reissue application issues
`as a patent, and Patent Owner is required to surrender the ’282 patent
`pursuant to 35 U.S.C. § 252, “Petitioner would then seek to substitute or add
`the reissued patent to this Petition.” Pet. 2. We understand Petitioner’s
`request to be conditioned on the occurrence of an event that has not yet
`occurred, namely, issuance of a reissued patent. Furthermore, Petitioner
`does not provide us with any precedent or provision of the Board’s Rules
`under which we could add or substitute a reissued patent to an already-
`pending inter partes review, or how such a procedure would permit us to
`issue a final written decision within the statutorily-mandated one-year period
`from institution of trial.
`
`IV. CONCLUSION
`For the foregoing reasons, based upon the facts in this proceeding and
`in the co-pending reissue proceeding and appeal therefrom, we exercise our
`discretion under 35 U.S.C. § 325(d) and § 314(a) to deny institution of an
`inter partes review.
`
`V. ORDER
`
`It is hereby
`ORDERED that the Petition is denied as to all challenged claims of
`the ’282 patent, and no trial is instituted.
`
`
`
`
`therefore, “under Section 252, the ʼ849 patent is not the same as the ʼ707
`patent for the purposes of Section 315(b).” Id.
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`IPR2017-00633
`Patent 6,245,282 B1
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`
`PETITIONER:
`
`R. David Donoghue
`Steven E. Jedlinski
`Anthony J. Fuga
`Holland & Knight LLP
`clientteam-guardian@hklaw.com
`
`
`PATENT OWNER:
`
`Dinesh N. Melwani
`Thara L. Russell
`Bookoff McAndrews PLLC
`dmelwani@bomcip.com
`trussell@bomcip.com
`
`Robert Touslee
`Johns Manville International Inc.
`Robert.Touslee@jm.com
`
`
`
`15
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`