`Trials@uspto.gov
`571-272-7822
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`
`Paper: 88
`Date: March 16, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PRISUA ENGINEERING CORP.,
`Patent Owner.
`____________
`
`IPR2017-01188
`Patent 8,650,591 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, STACEY G. WHITE, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`of Final Written Decision on Remand
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01188
`Patent 8,650,591 B2
`
`
`
`
`I.
`
`INTRODUCTION
`
`On January 14, 2021, we entered a Final Written Decision on Remand
`
`pursuant to 35 U.S.C. § 318(a). Paper 86 (“Final Dec.”). Therein, we
`
`concluded that Samsung Electronics America, Inc. (“Petitioner”) had shown
`
`by a preponderance of the evidence that claims 1–4 and 8 of U.S. Patent No.
`
`8,650,591 B2 (Ex. 1001, “the ’591 patent”) owned by Prisua Engineering
`
`Corp. (“Patent Owner”) were unpatentable.
`
`Patent Owner requests reconsideration of the Final Written Decision
`
`on Remand on the basis that we overlooked or misapprehended that this
`
`proceeding was unconstitutional. Paper 87 (“PO Reh’g Req.”). For reasons
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`that follow, we do not modify our Final Written Decision, and we maintain
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`our conclusion that Petitioner has shown by a preponderance of the evidence
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`that claims 1–4 and 8 of the ’591 patent are unpatentable.
`
`II.
`
`STANDARD OF REVIEW
`
`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an opposition, or a
`
`reply. Id. When reconsidering a decision on institution, we review the
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
`
`interpretation of law, if a factual finding is not supported by substantial
`
`evidence, or if the decision represents an unreasonable judgment in weighing
`
`2
`
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`IPR2017-01188
`Patent 8,650,591 B2
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`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).
`
`III. ANALYSIS
`
`Patent Owner raises for the first time in its Rehearing Request two
`
`constitutional challenges. First, Patent Owner asserts Administrative Patent
`
`Judges remain unconstitutionally appointed, citing Arthrex, Inc. v. Smith &
`
`Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert. granted sub nom. United
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`States v. Arthrex, Inc., 141 S. Ct. 549 (Oct. 13, 2020). PO Reh’g Req. 2–7.
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`Second, Patent Owner asserts “the Director’s decision to delegate the power
`
`to institute IPRs to the Board, as was done in this case, was administrative
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`overreach, a violation of Congress’s mandate, and resulted in the violation of
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`Patent Owner’s right to Due Process guaranteed by the Constitution.” Id. at
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`7–15.
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`Patent Owner made different arguments regarding unconstitutionality
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`in the Preliminary Response (Paper 21) and Corrected Patent Owner
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`Response (Paper 26). In particular, in its Corrected Patent Owner Response,
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`Patent Owner argued “[a]s the petitioner in Oil States argues, inter partes
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`review conflicts with the Supreme Court’s cases upholding the constitutional
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`guarantees of a jury and an Article III court for patent invalidation.” Paper
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`26 (citing Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC,
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`No. 16-712 (U.S. Nov. 23, 2016); see Order, Oil States Energy Servs., LLC
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`v. Greene’s Energy Group, LLC, No. 16-712 (U.S. June 12, 2017).
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`After consideration of the arguments and evidence presented by both
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`parties, on October 18, 2018, we issued a Final Written Decision and held
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`3
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`IPR2017-01188
`Patent 8,650,591 B2
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`that Petitioner had demonstrated by a preponderance of the evidence that
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`claim 11 of the ’591 patent was unpatentable, but Petitioner had failed to
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`demonstrate by a preponderance of the evidence that claims 1–4 and 8 of the
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`’591 patent were unpatentable. Paper 72. The Federal Circuit issued an
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`opinion, affirming our determination with respect to claim 11, vacating our
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`determination with respect to claims 1–4 and 8, and remanding for further
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`proceedings. Samsung Elecs. Am., Inc. v. Prisua Eng’r Corp., 948 F.3d
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`1342, 1355, 1359 (Fed. Cir. 2020).
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`We held a conference call with the parties on May 13, 2020 to discuss
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`procedures on remand. See, e.g., Paper 80. Patent Owner did not request
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`briefing to assert its constitutionality challenges during that call or at any
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`time following the Federal Circuit’s decision to remand for further
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`proceedings. Id.; see also Ex. 1032 (“Transcript of Conference Call
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`Conducted May 13, 2020”). Patent Owner filed a Motion to Terminate for
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`two different reasons, i.e., the stage of parallel district court litigation and
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`the inability to construe the claims warranted termination. Paper 83. Patent
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`Owner also did not assert any constitutionality challenges in its Motion to
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`Terminate. Id.
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`Based on the full record in this proceeding, Patent Owner has not
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`argued previously the constitutionality challenges it presents for the first
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`time in its Rehearing Request. Indeed, in its Rehearing Request, Patent
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`Owner does not point us to where its arguments were made previously. See
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`generally PO Reh’g Req. We cannot have misapprehended or overlooked
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`arguments or evidence that were not presented previously. For this reason
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`alone, we deny Patent Owner’s request for reconsideration.
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`4
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`IPR2017-01188
`Patent 8,650,591 B2
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`
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`Furthermore, the Federal Circuit’s decision in Arthrex addressed the
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`first challenge. See 941 F.3d at 1337. As Patent Owner acknowledges (PO
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`Reh’g Req. 11–12), the second challenge also has been addressed. See
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`Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028–1033
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`(Fed. Cir. 2016). Accordingly, we decline to consider Patent Owner’s
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`constitutional challenges any further.
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner has not shown that we
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`misapprehended or overlooked Patent Owner’s arguments or evidence with
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`respect to its constitutional challenges. For reasons given, we do not modify
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`our Final Written Decision and we maintain our conclusion that Petitioner
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`has shown by a preponderance of the evidence that claims 1–4 and 8 of the
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`’591 patent are unpatentable.
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`V. ORDER
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`In consideration of the foregoing, it is hereby
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`ORDERED that Patent Owner’s Request for Rehearing is denied.
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`5
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`IPR2017-01188
`Patent 8,650,591 B2
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`For PETITIONER:
`
`Heath Briggs
`Patrick McCarthy
`Barry Schindler
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`mccarthyp@gtlaw.com
`schindlerb@gtlaw.com
`
`
`For PATENT OWNER:
`
`Bryan Wilson
`Thomas Landry
`Adam Underwood
`John Carey
`CAREY RODRIGUEZ MILIAN GONYA, LLP
`bwilson@careyrodriguez.com
`tlandry@careyrodriguez.com
`aunderwood@careyrodriguez.com
`jcarey@careyrodriguez.com
`
`
`
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`6
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