Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 62
`Entered: August 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00861
`Patent 7,627,708 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
`
`
`
`
`
`ORDER
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. §§ 42.5, 42.71
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 62
`Entered: August 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00861
`Patent 7,627,708 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
`
`
`
`
`
`ORDER
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. §§ 42.5, 42.71
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`
`I.
`
`INTRODUCTION
`
`We entered a Decision on Institution in this matter on August 29,
`
`2017. Paper 14 (“Dec.” or “Decision”). In that Decision, we instituted a
`
`review for some claims/grounds and denied a review on other
`
`claims/grounds. On April 24, 2018, the Supreme Court held that a decision
`
`to institute under 35 U.S.C. § 314 may not institute on less than all claims
`
`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661,
`
`at *10 (U.S. Apr. 24, 2018). In response to the SAS decision, on May 3,
`
`2018, we entered an order modifying our Decision to institute trial on all
`
`claims and all grounds. Paper 38 (“SAS order”).
`
`Our rules require a party to file a request for rehearing “[w]ithin 14
`
`days of entry of a non-final decision or a decision to institute a trial as to at
`
`least one ground of unpatentability asserted in the petition.” 37 C.F.R.
`
`§ 42.71(d)(1). On May 21, 2018, Microchip Technology Inc. (“Patent
`
`Owner”) filed a Request for Rehearing of our SAS order. Paper 44 (“Req.”
`
`or “Request”).
`
`At the request of the Board, the parties filed additional briefing
`
`directed to timeliness of the Request and directed to the substantive basis for
`
`Patent Owner’s Request (allegedly in excess of our statutory authority).
`
`Petitioner filed its Opposition to Patent Owner’s Request for Rehearing on
`
`July 13, 2018 (Paper 58, “Opp.” or “Opposition”) and Patent Owner filed its
`
`Reply in Support of Request for Rehearing on July 27, 2018 (Paper 61,
`
`“Reply”).
`
`
`
`
`
`2
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`
`II. DISCUSSION
`
`A.
`
`Statutory Authority
`
`The thrust of Patent Owner’s argument is that our Decision on
`
`Institution exceeded our statutory authority to consider the Petition after the
`
`Supreme Court’s SAS decision. Specifically, Patent Owner argues, 35
`
`U.S.C. § 312(a) precludes us from considering a Petition that fails to comply
`
`with rules promulgated by the Director (such as 42.6 and 42.104). Req. 2–4.
`
`The cited statute reads, in pertinent part:
`
`(a) REQUIREMENTS OF PETITION.—A petition filed
`under section 311 may be considered only if—
`
`. . .
`
`(4) the petition provides such other information as the
`Director may require by regulation
`
`35 U.S.C. § 312(a) (emphasis added). According to Patent Owner, this
`
`statutory subsection requires that, to be considered by the Board, a Petition
`
`must comply with rules promulgated by the Director. Req. 2 (“a Petition
`
`that does not provide the information required by regulation may not be
`
`considered”).
`
`Petitioner contends, and we agree, that “Patent Owner’s every-claim-
`
`every-ground regulatory compliance theory turns SAS on its head.” Opp. 1.
`
`Patent Owner’s argument is contrary to both 35 U.S.C. § 314(a) and SAS,
`
`which both make clear that a reasonable likelihood of success as to one
`
`ground for one claim is sufficient to institute. Id. at 5–7; 35 U.S.C. § 314(a)
`
`(“The Director may not authorize an inter partes review to be instituted
`
`unless . . . there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition” (emphasis
`
`added)). The Supreme Court states:
`
`
`
`3
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`
`Section 314(a) does not require the Director to evaluate every
`claim individually. Instead, it simply requires him to decide
`whether the petitioner is likely to succeed on “at least 1” claim.
`Once that single claim threshold is satisfied, it doesn't matter
`whether the petitioner is likely to prevail on any additional
`claims; the Director need not even consider any other claim
`before instituting review. Rather than contemplate claim-by-
`claim institution, then, the language anticipates a regime where
`a reasonable prospect of success on a single claim justifies
`review of all.
`
`SAS, 138 S. Ct. at 1356. Moreover, the Board may exercise its authority
`
`under 37 C.F.R. § 42.5(b) to waive or suspend regulations and Patent Owner
`
`has not articulated a persuasive reason why that authority may not be used in
`
`situations such as this to consider the meritorious grounds in a Petition.
`
`Reply 9. Indeed, as Petitioner correctly points out, not being able to use our
`
`authority under § 42.5(b) would lead to absurd results in which non-
`
`compliance with regulatory requirements for things such as page size, fonts,
`
`and margins would preclude us from considering a Petition. Opp. 8–9. Our
`
`Decision on Institution, in view of the SAS decision’s change in our
`
`proceedings, may be reasonably understood to include an implied waiver of
`
`any rule allegedly violated by the Petition.
`
`For the foregoing reasons, we are not persuaded that we exceeded our
`
`statutory authority under § 312(a)(4) by issuing our original Decision on
`
`Institution or by issuing our SAS order instituting on all claims and grounds,
`
`including those which we deemed non-compliant with 37 C.F.R. § 104(b)(4)
`
`and 37 C.F.R. § 42.6(a)(3) in our Decision on Institution.
`
`
`
`4
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`
`
`
`B.
`
`Timeliness of Request Relative to Our SAS Order
`
`Patent Owner’s Request asserts it is directed to rehearing of our SAS
`
`order that modifies our Decision on Institution. Req. 1. To the extent our
`
`SAS order is a “non-final decision” as referenced in 37 C.F.R. § 42.71, and
`
`to the extent Patent Owner’s Request is directed at the SAS order, a request
`
`for rehearing under our rules must be filed “[w]ithin 14 days of the entry” of
`
`our SAS order. The filing date of Patent Owner’s Request (May 21, 2018) is
`
`more than 14 days after entry of our SAS order (May 3, 2018). Thus, Patent
`
`Owner’s Request ordinarily would not be timely filed under our rules.
`
`However, Patent Owner contacted the Board by e-mail on May 18,
`
`2018 indicating it had experienced a technical problem in attempting to file
`
`the Request on May 17, 2018 and, therefore, sought permission to file its
`
`motion late. The e-mail message indicated that the parties had conferred and
`
`that Petitioner did not object to the late filing of the Request.
`
`Staff at the Board determined that Patent Owner had used an incorrect
`
`account in its failed attempt to electronically file its Request on May 17,
`
`2018. However, in view of Patent Owner’s assertion that Petitioner did not
`
`object to the late filing, the Board sent an email message to the parties on
`
`May 21, 2018 granting permission to belatedly file the Request on that day,
`
`thus, impliedly waiving our rules regarding the timely filing of the Request
`
`relative to the date of entry of our SAS order. See 37 C.F.R. §§ 42.5,
`
`42.71(d)(1).
`
`Accordingly, assuming Patent Owner’s Request is directed to
`
`dissatisfaction with our SAS order, the Request is timely filed relative to the
`
`date of entry of our SAS order. However, as discussed below, we find the
`
`
`
`5
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`Request is directed to our authority under 35 U.S.C. § 312(a)(4) to issue our
`
`Decision on Institution rather than to our SAS order.
`
`
`
`C.
`
`Timeliness Relative to Our Decision on Institution
`
`Although we impliedly waived the timeliness requirement of Patent
`
`Owner’s Request relative to the date of our SAS order, a question remains as
`
`to whether the Request should have been filed within 14 days after our
`
`original Decision on Institution (i.e., within 14 days of August 29, 2017).
`
`Petitioner argues the Request is untimely because it is directed to
`
`rehearing of our Decision on Institution rather than our SAS order and, thus,
`
`needed to be filed within 14 days of our Decision (i.e., within 14 days of
`
`August 29, 2017 — nearly one year ago). Opp. 2. Petitioner contends, and
`
`we agree, the Request is substantively directed to whether we had statutory
`
`authority to consider the Petition due to alleged violations of 35 U.S.C.
`
`§ 312(a) in the Petition. Id. As discussed supra, Patent Owner’s Request
`
`argues the Board did not have statutory authority to even consider the
`
`Petition because some grounds in the Petition’s did not comply with 37
`
`C.F.R. § 104(b)(4) and 37 C.F.R. § 42.6(a)(3). Req. 4–6. Petitioner further
`
`contends the alleged statutory violations of § 312(a) were present in the
`
`Petition as filed and revealed in our original Decision on Institution. Opp. 3.
`
`Patent Owner argues its Request is timely because it is directed to our
`
`SAS order rather than to our initial Decision on Institution because our SAS
`
`order was the first decision to institute trial with respect to the allegedly
`
`defective grounds of the Petition. Reply 1. Patent Owner contends,
`
`Had Patent Owner challenged the original Institution Decision
`as violating 35 U.S.C. § 312(a)(4), the Board would no doubt
`have rejected that challenge by concluding the deficient
`
`
`
`6
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`
`portions of the Petition were not considered under the Board’s
`“partial institution” practice and, therefore, § 312(a)(4) was not
`violated.
`
`Id. at 2.
`
`Based on the parties’ arguments and the facts in this case, we agree
`
`with Petitioner that Patent Owner’s Request for Rehearing is not timely
`
`filed. Substantively, the Request is directed to whether we have statutory
`
`authority (under 35 U.S.C. § 312(a)) to even consider the Petition based on
`
`findings in our Decision on Institution that certain claims/grounds did not
`
`meet the requirements of 37 C.F.R. § 104(b)(4) (specifying where each
`
`claimed element is found in the references) or 37 C.F.R. § 42.6(a)(3)
`
`(improper incorporation by reference). Req. 3–4 (citing Dec. 46, 39, 40, 42).
`
`More specifically, Patent Owner asserts that, in its view, the statute requires
`
`compliance with all such regulations. Req. 2 n.1 (“The Director’s
`
`regulations are found in 37 C.F.R. § 42.1 et seq.”).
`
`As discussed supra, we disagree with Patent Owner’s interpretation of
`
`the statute as requiring all regulations (“42.1 et seq.”) must be met for the
`
`board to consider a Petition. Regardless, even accepting Patent Owner’s
`
`statutory interpretation as correct, arguendo, Patent Owner’s dissatisfaction
`
`with a “non-final decision or decision to institute a trial” (37 C.F.R.
`
`§ 42.71(d)) arose on August 29, 2017, at the time we entered our original
`
`Decision on Institution that allegedly violated this statutory authority.
`
`Under Patent Owner’s theory, 35 U.S.C. § 312(a)(4) precludes consideration
`
`of a Petition if any ground fails to comply with our regulations. It follows
`
`that Patent Owner should have objected to our consideration of any part of
`
`the Petition, regardless of whether we instituted on the allegedly non-
`
`compliant ground.
`
`
`
`7
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`
`Patent Owner’s contention that a challenge to our Decision on
`
`Institution at the time of its entry “would have been futile” is baseless.
`
`Reply 2. Patent Owner’s unfounded speculation is inconsistent with its
`
`argument that our Decision on Institution exceeded our statutory authority
`
`by virtue of the expressed reason for denying trial as to grounds 4–6. Patent
`
`Owner’s arguments regarding our statutory authority are based on its
`
`interpretation of § 312(a) rather than any holdings of the SAS decision or any
`
`aspect of our SAS order.
`
`Patent Owner therefore could, and should, have raised its argument
`
`that 35 U.S.C. § 312(a)(4) precludes us from considering a Petition if one
`
`ground fails to comply with our regulations, after our Decision on Institution
`
`was entered on August 29, 2017. Thus, under Rule 42.71(d)(1), Patent
`
`Owner’s Request needed to be filed within 14 days after entry of our
`
`Decision on Institution on August 29, 2017—nearly one year ago. Instead,
`
`the Request was filed nearly nine months after our Decision on Institution.
`
`Accordingly, Patent Owner’s Request is not timely relative to the date of
`
`entry of our Decision on Institution.
`
`
`
`III. ORDER
`
`In view of the foregoing discussion, it is hereby:
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2017‐00861
`Patent 7,627,708 B2
`
`PETITIONER:
`
`Scott McKeown
`scott.mckeown@ropesgray.com
`
`James L. Davis, Jr.
`james.l.davis@ropesgray.com
`
`
`
`PATENT OWNER:
`
`Bruce Slayden
`bslayden@sgbfirm.com
`
`Brian Banner
`bbanner@sgbfirm.com
`
`Truman Fenton
`tfenton@sgbfirm.com
`
`Jerry Suva
`jsuva@sgbfirm.com
`
`R. Beard
`wbeard@sgbfirm.com
`
`
`
`
`
`
`
`
`
`
`
`9
`
`
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