Trials@uspto.gov
`571-272-7822
`
`Paper No. 20
`
` Entered: November 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INSTRUMENTATION LABORATORY COMPANY,
`Petitioner,
`
`v.
`
`HEMOSONICS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 20
`
` Entered: November 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INSTRUMENTATION LABORATORY COMPANY,
`Petitioner,
`
`v.
`
`HEMOSONICS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`
`
`I. INTRODUCTION
`
`Instrumentation Laboratory Company (“Petitioner”) filed a Petition
`
`seeking inter partes review of claims 1–20 of U.S. Patent No. 9,410,971 B2
`
`(“the ’971 patent,” Ex. 1002). Paper 2 (“Pet.”). HemoSonics LLC (“Patent
`
`Owner”) filed a Patent Owner Preliminary Response to the Petition. Paper 8
`
`(“Prelim. Resp.”). On September 1, 2017, we issued a Decision instituting
`
`inter partes review with respect to the question of whether Baugh1
`
`anticipates claims 1, 2, 6, 7, 15, and 16. Paper 14 (“Dec.”), 26. In the
`
`Decision, we also determined that Petitioner did not establish a reasonable
`
`likelihood of prevailing on its assertions that claims 3–5, 8–14, and 17–20
`
`are unpatentable as obvious under 35 U.S.C § 103. Id.
`
`Petitioner filed a Request for Rehearing of the portion of our Decision
`
`denying institution of inter partes review of claims 3–5, 8–14, and 17–20
`
`with respect to the question of whether the subject matter of these claims
`
`would have been obvious to a person of ordinary skill in the art in view of
`
`the combined teachings of Baugh and various other references. Paper 16
`
`(“Req. Reh’g”).2
`
`For the reasons that follow, Petitioner’s Request for Rehearing is
`
`denied.
`
`
`1 Baugh et al., U.S. Patent No. 6,221,672 B1, issued Apr. 24, 2001
`(“Baugh,” Ex. 1005).
`2 On September 19, 2017, counsel for Patent Owner contacted the Board via
`e-mail regarding authorization to file a response to Petitioner’s Request for
`Rehearing. In view of our decision to deny Petitioner’s Request for
`Rehearing, we consider Patent Owner’s request to be moot.
`
`
`
`2
`
`
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`
`
`II. STANDARD OF REVIEW
`
`The party challenging a decision in a request for rehearing bears the
`
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`
`A 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.” Id. Upon a request for rehearing, the
`
`decision on a petition will be reviewed for an abuse of discretion. Id. at
`
`§ 42.71(c).
`
`III. DISCUSSION
`
`a. Incorporation by Reference
`
`Petitioner contends that “the Petition sets forth evidentiary citations to
`
`the Mize Declaration in support of obviousness that should have been
`
`considered substantively, but that were overlooked in misapprehension of
`
`the rule against improper incorporation by reference.” Req. Reh’g 2. In
`
`arguing that we misapprehended the legal standard for finding improper
`
`incorporation by reference, Petitioner attempts to distinguish the facts in the
`
`present proceeding from those in prior Board decisions addressing
`
`incorporation by reference. Id. at 3–4. In that regard, Petitioner contends
`
`“the instant Petitioner’s citations to the Mize Declaration in the subject
`
`Petition are limited to specific sections of pertinent evidentiary support for
`
`respective arguments in the Petition.” Id. at 5.
`
`We are not persuaded that we misapprehended the legal standard for
`
`finding improper incorporation by reference or that we overlooked
`
`evidentiary citations that support arguments in the Petition. The rule against
`
`incorporation by reference is clear: “Arguments must not be incorporated by
`
`reference from one document into another document.” 37 C.F.R.
`
`
`
`3
`
`
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`
`§ 42.6(a)(3). In the Decision, we noted that Petitioner failed to present any
`
`arguments, discussion, or analysis regarding why a person of ordinary skill
`
`in the art would have combined the elements disclosed in the prior art in the
`
`same fashion as recited in the claims of the ’971 patent. Dec. 14. In the
`
`Request for Rehearing, Petitioner does not direct us to any location in the
`
`Petition where we overlooked or misapprehended arguments regarding
`
`reasons for combining the elements disclosed in the art. We, therefore,
`
`disagree with Petitioner’s assertion that the Mize declaration provides
`
`support for “respective arguments in the Petition,” as no such arguments—at
`
`least with respect to a reason to combine the elements disclosed in the art—
`
`appear in the Petition. Req. Reh’g 5 (emphasis added).
`
`Petitioner’s contention that the Mize Declaration contains “explicit
`
`evidence supporting a reason for combining the respective references” does
`
`not change the fact that the Petition itself contains no arguments, discussion,
`
`or analysis of whether a person of ordinary skill in the art would have had
`
`reason to combine the teachings provided by cited prior art references. Id.
`
`at 6. Thus, it is unclear exactly what in the Petition the Mize Declaration
`
`evidence allegedly supports. To the extent Petitioner seeks to have us
`
`consider the cited portions of the Mize Declaration as its arguments that a
`
`person of ordinary skill in the art would have had reason to combine the
`
`cited references, we decline to do so. Considering such information to be
`
`arguments presented in the Petition would require us to contravene our own
`
`rule on incorporation by reference, which would be improper.
`
`b. Obviousness in view of Baugh and Viola
`
`Petitioner also contends we overlooked evidence in the Petition that
`
`demonstrates claims 17–20 are unpatentable as obvious in view of the
`
`
`
`4
`
`
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`
`combined teachings of Baugh and Viola.3 Req. Reh’g 2–3, 7–9 (referring to
`
`Ground 13).
`
`According to Petitioner, the Petition includes detailed citations to
`
`Viola that support “the conclusion that Viola teaches a known technique for
`
`detecting viscoelasticity through the coagulation process in a test chamber.”
`
`Id. at 8. Petitioner further contends that evidence in the Petition “establishes
`
`that [Viola] explicitly teaches a viable and predictable technique for
`
`detecting coagulation for a test sample in a chamber. Thus, on this basis, the
`
`claim chart concludes that ‘[i]t would have therefore been obvious to
`
`interrogate each of the chambers in [Baugh] using the techniques described
`
`in [Viola].’” Id. at 8–9.
`
`We did not overlook the information provided in Petitioner’s claim
`
`charts. To the contrary, we explicitly recognized in the Decision that
`
`“Petitioner identifies certain parts of Viola that disclose limitations in
`
`claims 17–20.” Dec. 19. Ultimately, however, we determined that
`
`Petitioner failed to present evidence or arguments explaining why it would
`
`have been obvious to a person of ordinary skill in the art to use the
`
`techniques described in Viola to interrogate the chambers in Baugh, or why
`
`a person of ordinary skill in the art would have had a reasonable expectation
`
`of successfully doing so. Id. at 18–19.
`
`In the Request for Rehearing, Petitioner argues that Viola teaches a
`
`“viable and predictable technique for detecting coagulation for a test sample
`
`in a chamber,” which supports a conclusion of obviousness. Req. Reh’g 8
`
`
`3 Viola et al., A novel ultrasound-based method to evaluate hemostatic
`function of whole blood, CLINICAL CHIMICA ACTA. 411, 106–13 (2010)
`(“Viola,” Ex. 1012).
`
`
`
`5
`
`
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`
`(citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–421 (2007)).
`
`Although Petitioner points to its claim chart statement regarding the alleged
`
`obviousness of the combination of Baugh and Viola as support for this
`
`argument, Petitioner’s argument that Viola teaches a predictable technique,
`
`and its reliance on KSR regarding obviousness based on “simple substitution
`
`of one known element or technique for another [that yields] predictable
`
`results,” is entirely new. Petitioner does not direct us to any arguments or
`
`evidence regarding the predictability of Viola’s technique in the Petition,
`
`and thus is not something we could have overlooked or misapprehended.
`
`Furthermore, Petitioner’s predictability argument in the Request for
`
`Rehearing is conclusory and lacks factual support sufficient to weigh in
`
`favor of a finding of obviousness. KSR, 550 U.S. at 418 (“[R]ejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements;
`
`instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness” (internal
`
`citation omitted)).
`
`c. Conclusion
`
` For all of the foregoing reasons, we are not persuaded that we
`
`misapprehended the rule against incorporation by reference or overlooked
`
`any evidence of obviousness identified by Petitioner.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`6
`
`
`
`Case IPR2017-00855
`Patent 9,410,971 B2
`
`
`
`
`PETITIONER:
`
`Stephen Y. Chow
`schow@burnslev.com
`
`Gabriel Goldman
`ggoldman@burnslev.com
`
`
`PATENT OWNER:
`
`Gregory J. Carlin
`gcarlin@mcciplaw.com
`
`Andrew T. Meunier
`dmeunier@mcciplaw.com
`
`T. Paul Tanpitukpongse
`ptanpitukpongse@mcciplaw.com
`
`Brian Nolan
`bnolan@mayerbrown.com
`
`Ying-Zi Yang
`yyang@mayerbrown.com
`
`
`
`
`7
`
`
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