Trials@uspto.gov
`571-272-7822
`
`Paper No. 29
`Entered: August 7, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRIT ENERGY SOLUTIONS, LLC,
`Petitioner,
`
`v.
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`____________
`
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`571-272-7822
`
`Paper No. 29
`Entered: August 7, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRIT ENERGY SOLUTIONS, LLC,
`Petitioner,
`
`v.
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00768
`Patent 8,585,341 B1
`____________
`
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2017-00768
`Patent 8,585,341 B1
`
`
`I.
`
`
`
`
`INTRODUCTION
`a. Background
`Grit Energy Solutions, LLC (“Petitioner”), filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–7 of U.S. Patent No.
`8,585,341 B1 (Ex. 1001, “the ’341 patent”) under two grounds (Grounds 1
`and 2). Pet. 6. We issued a Decision to Institute an inter partes review of
`all challenged claims (claims 1–7) under both of these grounds. Paper 8, 29.
`We entered our Final Written Decision on June 13, 2018, Paper 27
`(“Final Written Decision” or “Final Dec.”), in which we concluded that
`Petitioner failed to establish by a preponderance of evidence that any of the
`challenged claims are unpatentable. Final Dec. 27. Petitioner filed a timely
`Request for Rehearing in which it asks that we modify the Final Written
`Decision to find all challenged claims unpatentable. Paper 28, 1 (“Reh’g
`Req.,” “Request,” or “Request for Rehearing”).
`For the reasons that follow, we deny the Request for Rehearing.
`
`
`b. Standard for Reconsideration
`The party filing a request for rehearing of a final written decision has
`the burden of showing a decision should be modified, and the request for
`rehearing must specifically identify all matters the party believes the Board
`misapprehended or overlooked and the place where each matter was
`previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore,
`Petitioner bears the burden of establishing that we misapprehended or
`overlooked the matters that it requests that we review.
`
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`IPR2017-00768
`Patent 8,585,341 B1
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`II. ANALYSIS
`In its Request, Petitioner argues that the Board overlooked or
`misapprehended several items. See Reh’g Req. 1–2. We address each of
`these items separately, below.
`
`a. The Board Overlooked Petitioner’s Section IX.A.5.(c) Position
`As set forth in our Final Written Decision, we determined that
`Petitioner’s challenge was unpersuasive because, inter alia, Constantin does
`not teach, disclose, or suggest its orifice as being attached to its lower shutter
`blade and actuator. See Final Dec. 17–22; see also id. at 21 (“Petitioner has
`not shown that Constantin teaches, discloses, or suggests its orifice as being
`attached to its actuator, as Petitioner asserts”).
`Petitioner argues that we overlooked the Petition’s “Section
`IX.A.5.(c) Position . . . [that] does not require that Constantin disclose a stud
`on upper shutter blade 9 and an orifice on lower shutter blade 8.” Reh’g
`Req. 1, 4 (emphasis added).
`We disagree. To the contrary, we find that Petitioner’s “Section
`IX.A.5.(c) Position” relies on Constantin for disclosing a stud on upper
`shutter blade 9 and an orifice on lower shutter blade 8.
`Petitioner’s “Section IX.A.5.(c) Position” is presented on a single
`page of the Petition and is titled “Replacing the catch and projection of ES’s
`FIG. 10 with a stud and orifice like Constantin’s.” Pet. 55 (citing Ex. 1015
`¶¶ 76, 98, 99) (emphasis added). We find nothing in the Section IX.A.5.(c)
`analysis (Pet. 55) or the cited testimony (Ex. 1015 ¶¶ 76, 98, 99) to support
`Petitioner’s argument that this position does not require that Constantin
`disclose an orifice on lower shutter blade, which itself is attached to the
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`IPR2017-00768
`Patent 8,585,341 B1
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`actuator. See Reh’g Req. 1, 4. Instead, we find just the opposite. Although
`the Rehearing Request cites to Dr. Wooley’s testimony in paragraphs 98 and
`99 (see id. at 2–5), the Rehearing Request fails to address Dr. Wooley’s
`testimony in paragraph 76, which Petitioner relies on in its “Section
`IX.A.5.(c) Position.” See Pet. 55 (citing in relevant part Ex. 1015 ¶ 76). In
`this paragraph, Dr. Wooley testifies that “it would have been obvious to
`modify Eng Soon to invert its receptacle and pin . . . as taught by Constantin
`below . . . [and that] Constantin discloses a pin (stud 15) that extends from
`the lower side of a gate and a receptacle (orifice 16) on an actuator.”
`Ex. 1015 ¶ 76 (emphasis added). Indeed, by entitling the section “Replacing
`[Eng Soon’s] catch and projection . . . with a stud and orifice like
`Constantin’s” and relying on Dr. Wooley’s testimony that “Constantin
`discloses a . . . receptacle (orifice 16) on an actuator,” Petitioner’s
`Rehearing Request argument contradicts the Petition and Dr. Wooley’s
`direct testimony. (emphasis added).
`Moreover, if Petitioner intended for its “Section IX.A.5.(c) Position”
`to not rely on Constantin for disclosing an orifice attached to the lower
`shutter blade/actuator, Petitioner should have explained as much in its
`original Petition. Otherwise, the Petition lacks the particularity and
`specificity required by 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b).
`Accordingly, Petitioner’s argument that we overlooked its “Section
`IX.A.5.(c) Position” is unavailing.
`
`
`b. The Board Erred in its Analysis
`Under this heading, Petitioner presents several arguments, including
`that we misapprehended and overlooked arguments and evidence: (1) “to
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`IPR2017-00768
`Patent 8,585,341 B1
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`conclude that a POSITA would interpret Constantin’s claim 5 as limited by
`the legally non-limiting reference numerals included in parentheses in that
`claim”; and (2) “supporting Petitioner’s position that transposing [Eng
`Soon’s] pin and receptacle, as disclosed by Constantin, would have been
`obvious.” Reh’g Req. 1–2. We address each of Petitioner’s arguments
`separately, below.
`
`Constantin’s Claim 5
`i.
`In the Petition, Petitioner asserted that “Constantin’s claim 5 discloses
`orifice 16 attached to the actuator device.” Pet. 49. Claim 5 recites:
`5) Device according to any one of the preceding claims,
`characterized in that the means for mechanical connection of the
`shutters are constituted by at least one stud (15) provided on one
`of the shutter blades (8) that lodges in a corresponding orifice
`(16) of the blade of the other shutter.
`Ex. 1004, 7.
`Upon reviewing Constantin in its entirety, including claim 5, and the
`parties’ competing testimony, we disagreed with Petitioner, credited the
`testimony of Patent Owner’s expert (Mr. Smith), and found that Constantin
`does not disclose its orifice 16 attached to actuator device 4. See Final
`Dec. 17–21 (citing in relevant part Ex. 2040 ¶¶ 65–66, 68). Rather, we
`found that Constantin discloses one embodiment, in which its stud 15 is
`attached to lower shutter blade 8 and actuator 4 (see id.), illustrated in
`Constantin’s Figure 3, reproduced below:
`
`5
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`IPR2017-00768
`Patent 8,585,341 B1
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`As shown above in Constantin’s Figure 3, and as also consistently
`described by claim 5, actuator 4 is connected to lower shutter blade 8 and
`stud 15, whereas upper shutter blade 9 is attached to orifice 16. Ex. 1004, 5.
`In its Request, Petitioner argues that we misapprehended claim 5 by
`construing its parenthetical reference numerals as limiting (Reh’g Req. 5)
`and that a “‘POSITA should be not be free [sic] to interpret a disclosure in a
`manner that contravenes’ the established practice reflected in [French law
`and the MPEP]” (id. at 6 (citing Pet. Reply 15)).
`Petitioner’s argument misses the point; even if we assume that under
`French patent law and U.S. Patent Law claim 5 is interpreted as Petitioner
`proposes, and that the reference numerals within the parentheticals are not
`limiting, Petitioner’s argument conflates claim 5’s interpretation with
`what claim 5 discloses. In other words, simply because claim 5 may be
`interpreted broadly to cover a wide array of embodiments, this is not to say
`that claim 5 itself discloses that same wide array of embodiments.
`For example, imagine a hypothetical claim that recites in its entirety,
`“A cycle comprising a wheel.” Under U.S. Patent Law, a proper
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`IPR2017-00768
`Patent 8,585,341 B1
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`interpretation of the claim might cover a unicycle, a bicycle, and a tricycle.
`Although this hypothetical claim might be interpreted broadly to cover
`tricycles, the claim itself does not disclose a tricycle, as Petitioner would
`have us believe. See also Paper 26, 13:4–14:11 (discussing the same during
`oral argument).
`Accordingly, Petitioner’s argument that we misapprehended the
`language of claim 5 is not persuasive.
`
`Constantin’s Page 3 and Dr. Wooley’s Paragraph 94
`ii.
`Petitioner also argues that we “overlooked and [did] not address
`Dr. Wooley’s explanation in paragraph 94 . . . that the second paragraph on
`Constantin page 3 supports Petitioner’s reading of claim 5.” Reh’g Req. 8.
`Petitioner asserts that we “discussed with specificity only the third paragraph
`on Constantin page 3, which Petitioner never relied on.” Id. at 8–9 (citing
`Final Dec. 20–21).
`We disagree. To the contrary, we considered the second paragraph of
`Constantin’s page 3 as well as paragraph 94 of Dr. Wooley’s declaration.
`In particular, our Final Written Decision explicitly recites the first three
`paragraphs of Constantin’s page 3 (Final Dec. 20), and we found that
`“there is nothing in this description to support Petitioner’s argument that
`Constantin’s claim 5 describes or suggests a receptacle (for engaging a stud
`on the opposite shutter blade) attached to the actuator device” (id. at 20–21)
`(emphasis added). Although the second paragraph states that “the shutters
`are provided with means ensuring their mechanical connection when the
`orifices [2, 6] are placed facing each other,” there is no mention of orifice 16
`or actuator 4, let alone any disclosure that orifice 16 is attached to actuator 4.
`
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`IPR2017-00768
`Patent 8,585,341 B1
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`See Ex. 1004, 3. We also cited Dr. Wooley’s paragraph 94 in our Final
`Written Decision (Final Dec. 21) and weighed it against Mr. Smith’s
`competing testimony (id. (citing Ex. 2040 ¶¶ 65–66, 68)) before ultimately
`crediting Mr. Smith’s testimony over Dr. Wooley’s (id.). In particular,
`after weighing the evidence, including the second paragraph of page 3 of
`Constantin and paragraph 94 of Dr. Wooley’s testimony (see id. at 20–21),
`we found that “Petitioner has not shown that Constantin teaches, discloses,
`or suggests its orifice as being attached to its actuator” (id. at 21).
`Accordingly, Petitioner’s argument that we overlooked Dr. Wooley’s
`testimony at paragraph 94 of his declaration and the second paragraph on
`Constantin’s page 3 is unavailing.
`
`Transposing Eng Soon’s Pin and Receptacle
`iii.
`Petitioner argues that the Petition sets forth two rationales (the “First
`Rationale” and the “Second Rationale”) as to why it would have been
`obvious to swap the positions of Eng Soon’s pin and receptacle as allegedly
`disclosed by Constantin:
`(1) ES’s pin and receptacle perform the same function to
`achieve the same result, regardless of their position, a POSITA
`would have been able to make the swap, and the modification
`would have yielded a predictable result (Pet. at paragraph
`beginning “First” and spanning pages 53–54, and referred to
`below as the “First Rationale”); and
`(2) ES’s receptacle is more complicated than its pin, and
`placing the receptacle on the actuator of the support structure
`would reduce the costs of the supply containers.
`Reh’g Req. 11 (citations omitted). Petitioner argues that “the Board
`indicated its only issue with the First Rationale was that it depended on
`
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`IPR2017-00768
`Patent 8,585,341 B1
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`Constantin for disclosing a receptacle attached to an actuator.” Id. at 12
`(citing Final Dec. 22–23) (emphasis added).
`Petitioner mischaracterizes our Final Written Decision, in which
`we found that “for at least the following two reasons, we disagree[d] with
`Petitioner’s argument that transposing Eng Soon’s pin and receptacle would
`have been a simple substitution to achieve predictable results.” Final
`Dec. 22 (citations omitted) (emphasis added). In other words, even if we
`found that Constantin discloses an orifice or receptacle attached to its
`actuator—which we do not—we also found that transposing Eng Soon’s pin
`and receptacle as proposed by Petitioner would result in a more expensive
`system, and we disagreed with Petitioner’s assertion that modifying Eng
`Soon would have been a mere simple substitution. See Final Dec. 24 (“we
`agree with Mr. Smith that a POSITA would not modify Eng Soon to ‘reduce
`cost,’ as Petitioner proposes . . ., when doing so would increase the overall
`cost of the mobile containers”) (citing Ex. 2040 ¶ 76).
`Moreover, even if we treat Petitioner’s First Rationale as separate
`from its Second Rationale—thereby ignoring the Second Rationale when
`considering the First Rationale—when considered alone, Petitioner’s First
`Rationale fails to explain adequately why a POSITA would have transposed
`Eng Soon’s pin and receptacle. See Pet. 53–54. It is not enough to state that
`“[Eng Soon’s] pin and receptacle perform the same function to achieve the
`same result, regardless of their position, [and that] a POSITA would have
`been able to make the swap.” Reh’g Req. 11; see also Pet. 53–54 (“A
`POSITA reading Constantin would understand that there is no functional
`difference between these configurations”). In other words, it is not enough
`to argue that a POSITA could modify Eng Soon in a manner that meets the
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`IPR2017-00768
`Patent 8,585,341 B1
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`claims, without adequately explaining why a POSITA would make the
`modifications. See Personal Web Techs. LLC v. Apple, Inc., 848 F.3d 987,
`993–94 (Fed. Cir. 2017) (finding that a skilled artisan would have
`understood that prior art could be combined insufficient; “it does not imply a
`motivation to pick out those two references and combine them to arrive at
`the claimed invention”). Indeed, we found that the proposed modification
`would result in a more expensive system. See Final Dec. 24.
`Accordingly, Petitioner’s argument that we misapprehended or
`overlooked its First Rationale is not persuasive.
`
`c. The Board Overlooked Petitioner’s G1Constantin-Based Challenges
`Petitioner argues that we “overlooked and did not address any of
`Petitioner’s G1Constantin-based challenges, in contravention . . . of the
`Board’s policy.” Reh’g Req. 13–15 (citing in relevant part SAS Institute Inc.
`v. Iancu, 138 S. Ct. 1348 (2018)). Petitioner argues that its “G1Constantin-
`based challenges” were “explained in footnote 5 on page 20 of the Petition.”
`Id. at 13. Footnote 5 of the Petition provides:
`The combination of ES + Constantin is presented as one
`ground because while ES can be characterized as a primary
`reference and Constantin a secondary reference in some aspects
`of the analysis below, and vice-versa in other aspects, such a
`primary-secondary distinction does not give rise to separate
`grounds. See IPR2014-00351, Paper 21 at 2 (P.T.A.B. July 22,
`2014) and decisions cited therein. Should the Board disagree,
`G1ES and G1Constantin (described below) are two grounds, and
`Ground 2 two grounds (G1ES + Olson; and G1Constantin +
`Olson), for a total of four grounds.
`Pet. 20, n.5 (emphasis added).
`
`10
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`IPR2017-00768
`Patent 8,585,341 B1
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`As explained in our Final Written Decision, we instituted review “of
`all challenged claims (claims 1–7) under all grounds, namely, Grounds 1
`and 2.” Final Dec. 2. Indeed, the Petition sets forth only two grounds;
`Ground 1 challenging claims 1–3 and 5, and Ground 2 challenging claims 4,
`6, and 7. Pet. 6 (Statutory Grounds of Challenge). In our Final Written
`Decision, we determined that Petitioner failed to meet its burden that any of
`the challenged claims are unpatentable. Final Dec. 2–3. In particular, we
`found that Constantin does not disclose an orifice attached to an actuator and
`concluded that a POSITA would not have modified Eng Soon as Petitioner
`proposed. See id. at 17–25. We find nothing in Petitioner’s “G1Constantin-
`based challenges” that cures these fatal defects.
`Moreover, Petitioner’s statement in footnote 5 that certain “aspects”
`of Eng Soon and Constantin can somehow be “vice-versa” swapped with
`other “aspects” fails to rise to the specificity and particularity required under
`35 U.S.C § 312(a)(3) and 37 C.F.R. § 42.104(b). The function of the Board
`is not to comb through the cited art in order to determine the strongest
`combination of references to meet the claims, thereby overcoming whatever
`deficiencies may exist in the Petition. See generally LG Elecs., Inc. v.
`Rosetta-Wireless Corp., Case IPR2016-01516 (PTAB Apr. 3, 2017)
`(Paper 25).
`Accordingly, Petitioner’s argument that we overlooked certain
`grounds in the Petition is unavailing.
`
`
`III. ORDER
`For the reasons given, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`11
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`IPR2017-00768
`Patent 8,585,341 B1
`
`PETITIONER:
`
`Mark Garrett
`mark.garrett@nortonrosefulbright.com
`
`Jeremy Albright
`jeremy.albright@nortonrosefulbright.com
`
`Charles Walker
`charles.walker@nortonrosefulbright.com
`
`Jeffrey Kitchen
`jeff.kitchen@nortonrosefulbright.com
`
`
`
`PATENT OWNER:
`Gianni Cutri
`gianni.cutri@kirkland.com
`
`Adam Kaufmann
`adam.kaufmann@kirkland.com
`
`Kyle Kantarek
`kyle.kantarek@kirkland.com
`
`Eugene Goryunov
`egoryunov@kirkland.com
`
`12
`
`
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