Trials@uspto.gov
`571.272.7822
`
` Paper No. 46
` Filed: June 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)1
`____________
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`571.272.7822
`
` Paper No. 46
` Filed: June 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00778 (Patent 8,062,302 B2)
`Case IPR2017-00779 (Patent 8,062,302 B2)
`Case IPR2017-00780 (Patent 8,062,302 B2)1
`____________
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`
`IPR2017-00778 (Patent 8,062,302 B2)
`IPR2017-00779 (Patent 8,062,302 B2)
`IPR2017-00780 (Patent 8,062,302 B2)
`
`
`I. INTRODUCTION
`
`In each of these proceedings, on August 7, 2017, we issued a Decision
`
`on Institution instituting an inter partes review as to claims 1–3, 5–8, 11, 20,
`
`21, 24, 25, 28–37, 39–43, 47, and 95–125 of U.S. Patent No. 8,062,302 B2
`
`(Ex. 10012, “the ’302 patent”). Paper 7 (“Dec.”). In our Decision on
`
`Institution, we determined that Petitioner had established a reasonable
`
`likelihood of prevailing in its challenge of claims 1–3, 5–8, 11, 20, 21, 24,
`
`25, 28–37, 39–43, 47, and 95–125 under 35 U.S.C. § 103(a) as unpatentable
`
`over Radermacher, Alexander, and Woolson. Dec. 40. We did not institute
`
`an inter partes review as to claims 13, 18, and 38, under 35 U.S.C. § 103(a),
`
`as unpatentable over Radermacher, Alexander, Woolson, and Kenna; claims
`
`1–3, 5–8, 11, 13, 18, 20, 21, 24, 25, 28, 29, 34–38, and 47 as unpatentable
`
`over Radermacher, Fell, Woolson, and Kenna; claims 9, 10, and 12 as
`
`unpatentable over Radermacher, Alexander, and Woolson; claims 14–17 and
`
`19 as unpatentable over Radermacher, Alexander, Woolson, Kenna, and
`
`Hofmann; claims 9, 10, 12, 14–17, 19, 30–33, and 39–43 as unpatentable
`
`over Radermacher, Fell, Woolson, Kenna, and Hofmann; and claims 95–125
`
`as unpatentable over Radermacher, Fell, and Woolson. Id. at 21–24, 26–32,
`
`39.
`
`On April 27, 2018, the panel entered, for each of these proceedings,
`
`an Order that modified the Decision on Institution to include review of all
`
`challenged claims and all grounds presented in the Petition, in accordance
`
`
`2 As the pertinent papers in all three proceedings are the same or
`substantially similar, we refer herein to the papers filed in IPR2017-00778
`for convenience.
`
`
`
`
`2
`
`
`
`IPR2017-00778 (Patent 8,062,302 B2)
`IPR2017-00779 (Patent 8,062,302 B2)
`IPR2017-00780 (Patent 8,062,302 B2)
`
`with the U.S. Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S.
`
`Ct. 1348 (2018). Paper 36. On May 18, 2018, after a conference call held
`
`between the panel and counsel for the parties, the panel entered, for each of
`
`these proceedings, a subsequent Order that authorized the parties to conduct
`
`supplemental activity (including a Supplemental Patent Owner Response
`
`and a Supplemental Reply) with respect to the newly added challenges.
`
`Paper 39. On May 24, 2018, following another conference call between the
`
`panel and counsel for the parties, the panel entered, for each of these
`
`proceedings, an additional Order that altered the schedule and some
`
`parameters for the supplemental activity. Paper 40.
`
`On June 1, 2018, Patent Owner requested rehearing, in each of these
`
`proceedings, of our Orders of May 18, 2018, and May 24, 2018.3 Paper 43
`
`(“Rehearing Request” or “Reh. Req.”). Petitioner requested, via email,
`
`authorization to file a response to Patent Owner’s Rehearing Requests. This
`
`request is denied because additional briefing on this issue is not necessary.
`
`For the reasons set forth below, Patent Owner’s Rehearing Request is
`
`denied.
`
`II. STANDARD OF REVIEW
`
`A party requesting rehearing bears the burden of showing the decision
`
`should be modified. 37 C.F.R. § 42.71(d). In particular, “[t]he 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, an opposition, or a reply.” Id. When considering a request for
`
`
`3 For convenience, we will adopt Patent Owner’s convention and refer to
`these two Orders as the “Additional Briefing Orders.” See Reh. Req. 1.
`
`
`
`
`3
`
`
`
`IPR2017-00778 (Patent 8,062,302 B2)
`IPR2017-00779 (Patent 8,062,302 B2)
`IPR2017-00780 (Patent 8,062,302 B2)
`
`rehearing of a decision on petition (i.e., a decision on whether to institute
`
`trial), the Board reviews its decision for an abuse of discretion. 37 C.F.R.
`
`§ 42.71(c). An abuse of discretion may arise if the decision is based on an
`
`erroneous interpretation of law, if a factual finding is not supported by
`
`substantial evidence, or if an unreasonable judgment is made in weighing
`
`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
`
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`III. ANALYSIS
`
`Patent Owner’s Rehearing Request largely relies on its assertion that
`
`the Additional Briefing Orders misinterpret the SAS decision, causing the
`
`Board to abuse its discretion by:
`
`(1) instituting grounds that the Board already found fail
`the statutory requirements, thereby giving Petitioner a
`third opportunity to argue in favor of grounds the Board
`has already twice rejected as deficient in violation of 37
`C.F.R. § 42.23(b); (2) untimely instituting review in
`violation of 35 U.S.C. § 314(b); and (3) instituting
`redundant grounds not required by SAS.
`
`Reh. Req. 1; see also id. at 5 (making similar argument that the Board
`
`improperly instituted grounds that were previously not instituted).
`
`Although Patent Owner ostensibly requests rehearing of the
`
`Additional Briefing Orders, each of the actions by the Board that Patent
`
`Owner asserts to be abuses of discretion relate to our post-SAS decision to
`
`modify our Decision on Institution to institute on all of the claims and
`
`grounds presented in the Petition. This decision, however, was made in our
`
`Order of April 27, 2018, and not in either of the Additional Briefing Orders.
`
`
`
`
`4
`
`
`
`IPR2017-00778 (Patent 8,062,302 B2)
`IPR2017-00779 (Patent 8,062,302 B2)
`IPR2017-00780 (Patent 8,062,302 B2)
`
`Should Patent Owner have wished to file a request for rehearing of our
`
`Order of April 27, 2018, Patent Owner must have filed such a request within
`
`14 days of the entry of that Order. 37 C.F.R. § 42.71(d)(1). Accordingly,
`
`the due date for any request for rehearing of our Order of April 27, 2018,
`
`was May 11, 2018. As no extension of time was requested or granted,
`
`Patent Owner’s Rehearing Request filed on June 1, 2018, to the extent it
`
`seeks review of our decision to modify our Decision on Institution to
`
`institute on all of the claims and grounds presented in the Petition, is
`
`untimely.
`
`In addition to disputing our April 27, 2018 decision to modify our
`
`Decision on Institution, Patent Owner argues that “the Board compounded
`
`its abuse of discretion by granting Petitioner a ‘Supplemental Reply’ that
`
`permits Petitioner to ‘respond to preliminary findings made by the Board in
`
`the Decision on Institution,’ without citing any authority allowing for this
`
`significant departure from its own regulatory requirements.” Reh. Req. 11
`
`(citing Paper 39, 5). Patent Owner contends the Supplemental Reply
`
`violates 37 C.F.R. § 42.23(b). Id. at 12.
`
`As a first point, Patent Owner asserts that “[r]equests for rehearing are
`
`reviewed for abuse of discretion.” Id. at 5 (citing 37 C.F.R. § 42.71(c)). As
`
`noted above, however, § 42.71(c) provides that the abuse of discretion
`
`standard applies when rehearing a decision on whether to institute trial. The
`
`Additional Briefing Orders are not decisions on institution. Thus, to the
`
`extent that Patent Owner seeks review of the Additional Briefing Orders,
`
`Patent Owner’s Rehearing Request is subject to 37 C.F.R. § 42.71(d), but
`
`not § 42.71(c). Patent Owner’s Rehearing Request, however, does not
`
`
`
`
`5
`
`
`
`IPR2017-00778 (Patent 8,062,302 B2)
`IPR2017-00779 (Patent 8,062,302 B2)
`IPR2017-00780 (Patent 8,062,302 B2)
`
`identify any matter that the Board misapprehended or overlooked pursuant
`
`to § 42.71(d). As such, Patent Owner’s Rehearing Request is inappropriate,
`
`because rehearing requests are not an opportunity to make further briefing
`
`before the Board.
`
`Nonetheless, we disagree that the Board abused its discretion by
`
`authorizing Petitioner to submit a Supplemental Reply that permits
`
`Petitioner to respond to preliminary findings made in our Decision on
`
`Institution. Although 37 C.F.R. § 42.23(b) normally limits a petitioner’s
`
`reply to responding to arguments made in a patent owner response, the
`
`circumstances created by the SAS decision justify our authorization of an
`
`expanded Supplemental Reply (as well as the other supplemental activity,
`
`including the Supplemental Patent Owner Response) in these proceedings.
`
`This determination is consistent with the Board’s authority to determine a
`
`proper course of conduct in a proceeding for any situation not specifically
`
`covered by the rules governing inter partes review, and to waive or suspend
`
`requirements of the rules. See 37 C.F.R. § 42.5 (a), (b).
`
`Lastly, with respect to Patent Owner’s assertion that “Petitioner
`
`cannot now cure the deficiencies in its petition,” and Petitioner “cannot now
`
`use its [Supplemental Reply] to fill in the significant evidentiary gaps
`
`identified, twice, by the Board” (Reh. Req. 12), we note that neither
`
`Additional Briefing Order authorizes such actions. Indeed, both Additional
`
`Briefing Orders expressly indicate that the Supplemental Reply “is limited to
`
`the existing record in the proceeding” and “may not raise new arguments or
`
`new evidence.” Paper 39, 7; Paper 40, 7.
`
`
`
`
`
`
`6
`
`
`
`IPR2017-00778 (Patent 8,062,302 B2)
`IPR2017-00779 (Patent 8,062,302 B2)
`IPR2017-00780 (Patent 8,062,302 B2)
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s Rehearing Request, in each of these
`
`proceedings, is denied.
`
`
`
`
`7
`
`
`
`IPR2017-00778 (Patent 8,062,302 B2)
`IPR2017-00779 (Patent 8,062,302 B2)
`IPR2017-00780 (Patent 8,062,302 B2)
`
`
`
`PETITIONER:
`
`Christy Lea
`2cgl@knobbe.com
`
`Joseph Re
`2jrr@knobbe.com
`
`Colin Heideman
`2cbh@knobbe.com
`
`Benjamin Anger
`2bba@knobbe.com
`
`
`PATENT OWNER:
`
`Sanya Sukduang
`Sanya.sukduang@finnegnan.com
`
`Timothy McAnulty
`Timothy.mcanulty@finnegan.com
`
`Daniel Klodowski
`Daniel.klodowski@finnegan.com
`
`Kassandra Officer
`Kassandra.officer@finnegan.com
`
`
`
`
`
`
`
`
`
`8
`
`
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