Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: January 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2017-01308
`Patent 8,254,621 B2
`_______________
`
`
`
`Before KRISTEN L. DROESCH, BRYAN F. MOORE, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: January 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2017-01308
`Patent 8,254,621 B2
`_______________
`
`
`
`Before KRISTEN L. DROESCH, BRYAN F. MOORE, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2017-01308
`Patent 8,254,621 B2
`
`
`BACKGROUND
`I.
`On February 28, 2017, Freebit, AS (“Petitioner”) filed a Petition to
`institute inter partes review of claims 1–11 of U.S. Patent No. 8,254,621 B2
`(Ex. 1001, “the ’621 patent”). Paper 1 (“Pet.”). In particular, Petitioner
`argues claims 1–11 of the ’621 patent are rendered obvious over the
`combined teachings of Sapiejewski (Ex. 1004) and Tan (Ex. 1005), alone or
`in combination with those of Howes (Ex. 1006). Pet. 4–5, 23–69. Bose
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). In its Preliminary Response, Patent Owner, contends that
`the named inventors conceived of and acted diligently actually to reduce the
`recited devices to practice before the effective date of Tan. Prelim Resp. 8–
`13; see Ex. 2001. On August 25, 2017, Petitioner submitted an e-mail
`request to file a Reply to Patent Owner’s Preliminary Response, “limited to
`[Patent Owner’s] attempt to antedate prior art reference Tan in light of a
`declaration, Ex. 2001, purporting to establish that the subject matter of the
`challenged claims was reduced to practice in May 2009.” Ex. 3001.
`Petitioner conferred with Patent Owner, and Patent Owner indicated that it
`“will not oppose [Petitioner’s] request for a pre-institution reply to [Patent
`Owner’s] preliminary response, with the understand[ing] that the reply will
`be limited to 5-10 pages of attorney arguments regarding [Patent Owner’s]
`swear-behind of Tan, as you set forth in your e-mail and discussed on our
`call yesterday (8/23).” Id. We authorized Petitioner
`to file a Reply to Patent Owner’s Preliminary Response, strictly
`limited to responding to Patent Owner’s arguments to antedate
`Tan in light of a declaration, Ex. 2001, purporting to establish
`that the subject matter of the challenged claims was reduced to
`practice in May 2009. See 37 C.F.R. §§ 42.23(b) (“A reply may
`only respond to arguments raised in the corresponding . . . patent
`
`2
`
`
`
`IPR2017-01308
`Patent 8,254,621 B2
`
`
`owner preliminary response”), 42.108(c).
`Id. On September 1, 2017, Petitioner filed its Reply. Paper 7 ((“Reply”).
`On November 8, 2017, after consideration of the entirety of the record, we
`denied institution of inter partes review of claims 1–11 of the ’621 patent.
`Paper 8, 34 (“Inst. Dec.”).
`On December 8, 2017, Petitioner filed a Request for Rehearing (Paper
`11, (“Reh’g Req.”)) of our Institution Decision, requesting reconsideration
`of our decision denying institution of inter partes review of claims 1–11 of
`the ’621 patent. Petitioner argues that “the Board overlooked or
`misapprehended that Patent Owner suppressed or concealed its invention
`and therefore did not successfully antedate Tan.” Reh’g Req. 2. In
`particular, Petitioner argues that “[e]ven assuming that Patent Owner had an
`actual reduction to practice (‘ARP’) in March 2009[1] (which Patent Owner
`does not concede), the Board overlooked or misapprehended the fact that
`Patent Owner forfeited its rights to rely on that ARP by waiting too long to
`file its patent application.” Id. at 3.2
`
`
`1 Inst. Dec. 31 (“As we noted above, although Patent Owner mentions both
`March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the
`date of actual reduction to practice, it is clear from Mr. Annunziato’s
`testimony and supporting evidence, that actual reduction to practice occurred
`by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”); see Paper 10, 1
`(Errata).
`2 We note that Petitioner presented substantially identical arguments
`regarding Patent Owner’s antedating of Tan in its Request for Rehearing
`filed in IPR2017-01307 and in IPR2017-01309. See, e.g., IPR2017-01307,
`Paper 9. Our reasons for denying rehearing here regarding the antedating of
`Tan are substantially the same as the reasons presented in IPR2017-01307
`and IPR2017-01309.
`
`3
`
`
`
`IPR2017-01308
`Patent 8,254,621 B2
`
`
`We have considered Petitioner’s Request for Rehearing, and, for the
`reasons set forth below, Petitioner’s Request is denied.
`
`II.
`
`STANDARD OF REVIEW
`
`37 C.F.R. § 42.71(d) provides that:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The 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, opposition, or a reply.
`(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756,
`48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a
`decision on petition, a panel will review the decision for an abuse of
`discretion.” An abuse of discretion occurs when a “decision was based on
`an erroneous conclusion of law or clearly erroneous factual findings, or . . . a
`clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties
`Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).
`
`III. DISCUSSION
`1. Delay in Preparing Application
`
`Petitioner argues that we overlooked or misapprehended that Patent
`Owner suppressed or concealed its invention by waiting for an unreasonably
`long period of time after the actual reduction of the invention to practice to
`file a patent application disclosing the invention. Reh’g Req. 3–4.
`“Petitioner does not challenge the Board’s determination that ‘the period of
`the delay from actual reduction to practice to the filing of the provisional
`patent application [“the critical period”] was closer to fourteen months …
`
`4
`
`
`
`IPR2017-01308
`Patent 8,254,621 B2
`
`[than to the seventeen months that Freebit argued]’” (id. at 3 (quoting Inst.
`Dec. 31–32)), and Petitioner acknowledges that “[n]either the statute, the
`rules, nor any opinion of either the Federal Circuit or the Board sets a bright-
`line rule for how long is too long” (id. at 4). Petitioner argues, however, that
`the unexcused delay was unreasonably long. In particular, Petitioner argues
`that “whether the critical period at issue was too long has been decided on a
`case-by-case basis taking into account the complexity of the invention and
`the deciding entity’s assessment of how long it should have taken reasonably
`competent counsel to draft a patent application on the invention.” Id.
`Petitioner argues that Patent Owner bore the burden of producing evidence
`of “Peeler diligence” (id. (citing Peeler v. Miller, 535 F.2d 647 (CCPA
`1976)), such that we may assess the reasonableness of the delay, but failed to
`do so here.
`Initially, we note that Petitioner did not raise these arguments
`anywhere in its Petition or its authorized Reply to Patent Owner’s
`Preliminary Response. Not only did Petitioner fail to raise the issue of
`“Peeler diligence,” but Petitioner’s Request for Rehearing does not include a
`single citation to its Petition or to its Reply. Thus, Petitioner’s Request for
`Rehearing fails to identify the place where each matter that allegedly was
`overlooked or misapprehended was previously addressed in a motion,
`opposition, or a reply. 37 C.F.R. § 42.71(d). A request for rehearing is not
`an opportunity for the requestor to present new arguments or evidence. It
`goes without saying that we could not have overlooked or misapprehended
`arguments that Petitioner did not make, and it is not an abuse of discretion
`not to consider such arguments.
`
`5
`
`
`
`IPR2017-01308
`Patent 8,254,621 B2
`
`
`2. Delay to Perfect the Invention
`
`In Lutzker v. Plet, our reviewing court agreed that “[a]n inference of
`suppression or concealment may be overcome with evidence that the reason
`for the delay was to perfect the invention.” 843 F.2d 1364, 1367 (Fed. Cir.
`1988); see Inst. Dec. 31. Nevertheless, the delay could not be excused (1) if
`“the delay is caused by working on refinements and improvements which are
`not reflected in the final patent application,” or (2) if “the activities which
`caused the delay go to commercialization of the invention.” Lutzker, 843
`F.2d at 1367. In its Reply, Petitioner focused on the length of the delay
`between the actual reduction to practice and the filing of a patent
`application. Reply 3–4. Petitioner, however, made only cursory and
`conclusory reference to Patent Owner’s activities3 between the actual
`reduction to practice and the filing of a patent application. See Reply 4
`(“Moreover, Mr. Annunziato’s testimony (¶ 6) that his team put in hundreds
`(if not thousands) of hours trying out and testing different designs for ear
`interfaces is not credible.”). Petitioner now argues that “all the alleged work
`carried out by [Patent Owner] to complete the [printed circuit board] is
`irrelevant to the suppression/concealment issue because it was not reflected
`in the final patent application, and rather, was relevant simply for
`commercialization.” Reh’g Req. 5. We continue to disagree.
`As we noted in the Decision on Institution, the challenged,
`
`3 On this record, we are persuaded that the activities of Mr. Annunziato and
`his team inure to the benefit of Patent Owner. Inst. Dec. 17–18 (“Moreover,
`Petitioner does not dispute that the actions discussed in Patent Owner’s
`declarant’s, Mr. Annunziato’s, declaration or the supporting exhibits inure to
`the benefit of the named inventors. See NFC Tech., [LLC v. Matal, 871 F.3d
`1367,] 1374 [(Fed. Cir. 2017)].”)
`
`6
`
`
`
`IPR2017-01308
`Patent 8,254,621 B2
`
`independent claims recite an electronics module and an acoustic driver
`module. Inst. Dec. 33–34 (citing Ex. 1001, 11:13–17 (claim 1), 12:13–18
`(claim 9); see also, e.g., id. at 2:5–12 (describing the electronics module as
`including a microphone and the acoustics driver as transducing acoustic
`signal to acoustic energy)). The record shows that, although the works-like
`prototype satisfied the limitations recited in the challenged claims and
`worked for its intended purpose, the need for improvement remained,
`especially with respect to both microphone performance and audio
`performance. Id. at 33 (citing, e.g., Ex. 2001 ¶ 14, Ex. D, 2–3); see Inst.
`Dec. 33 n.10. Although Petitioner did not find Mr. Annunziato’s testimony
`credible, we found “Mr. Annunziato’s testimony corroborated, credible, and,
`ultimately, convincing.” Id. at 29. Thus, in view of the record, as a whole,
`we remain persuaded that the record contains sufficient evidence supporting
`Patent Owner’s efforts to perfect the claimed invention. Id. at 32–34.
`A request for rehearing is not merely the opportunity for the requester
`to reargue positions, elaborate on previous positions, or to disagree with the
`analysis or conclusions of the panel. See Nestlé Purina Petcare Co. v. Oil-
`Dri Corp. of Amer., Case IPR2015-00737, slip op. at 8 (PTAB Feb. 9, 2017)
`(Paper 39)(“Merely disagreeing with our analysis or conclusions does not
`serve as a proper basis for a request for rehearing.”). Instead, the requester
`must identify previously-presented arguments and/or evidence that the panel
`overlooked or misapprehended or evidence of abuse of discretion by the
`panel. Petitioner fails to do so here.
`
`IV. ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`7
`
`
`
`IPR2017-01308
`Patent 8,254,621 B2
`
`For PETITIONER:
`
`W. Todd Baker
`Tia D. Fenton
`John F. Presper
`OBLON LP
`cpdocketbaker@oblon.com
`cpdocketfenton@oblon.com
`cpdocketpresper@oblon.com
`
`For PATENT OWNER:
`
`W. Karl Renner
`David Holt
`Andrew R. Kopsidas
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`Holt2@fr.com
`kopsidas@fr.com
`
`
`8
`
`
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