Trials@uspto.gov
`571-272-7822
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`Paper No. 10
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` Entered: February 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`HUTCHINSON TECHNOLOGY INC.,
`HUTCHINSON TECHNOLOGY OPERATIONS (Thailand) CO., LTD.,
`Petitioners,
`
`v.
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`NITTO DENKO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01499
`Patent 7,923,644
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CHRISTA P. ZADO, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
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`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
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`

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`IPR2017-01499
`Patent 7,923,644
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`Petitioner requests rehearing of our Decision (Paper 8, “Dec.”)
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`denying its request to institute an inter partes review of claims 1–4 and 6 of
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`U.S. Patent 7,923,644 (“the ’644 patent”). Paper 9 (“Req. Reh’g”), 1.
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`Petitioner requests only that we reconsider our Decision not to institute an
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`inter partes review of claims 1–4 and 6 as anticipated by Pro. Id. Petitioner
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`does not challenge our Decision to deny institution of an inter partes review
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`on the other grounds asserted. See id.
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`On rehearing, the burden of showing that the Decision should be
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`modified lies with Petitioner, the party challenging the Decision. See 37
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`C.F.R. § 42.71(d). “The request must specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, an opposition, or a reply.”
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`Id. “When rehearing a decision on petition, a panel will review the decision
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`for an abuse of discretion.” See 37 C.F.R. § 42.71(c).
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`Petitioner contends we overlooked evidence cited in its Petition
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`(Paper 2; “Pet”) that Pro (Ex. 1006) discloses the third line “connected to
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`said first electrode pad” and the seventh line “connected to said third
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`electrode pad.” Req. Reh’g 2. Petitioner asserts “the Decision erroneously
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`alleges that Petitioners solely rely on Fig. 2A of Pro” as disclosing the third
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`and seventh lines are connected to first and third terminal pads and
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`overlooked specific citations to other portions of Pro that disclose these
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`elements. Id. at 2. Specifically, Petitioner argues we overlooked evidence
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`the jumper constructions disclosed in Pro facilitate the use of an interleaved
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`trace configurations and that the jumper configurations are part of the
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`transmission pathway between the terminal connector pads 40 and the head
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`connector pads 44. See id. at 3–4. Petitioner further argues that it is clear
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`from the cited teachings in Pro that Pro discloses the jumper constructions
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`2
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`IPR2017-01499
`Patent 7,923,644
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`are the transition between the interleaved section 26 and the two traces that
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`are connected to the connector pads to form the transmission pathway
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`between the terminal pads 40 and head connector pads 44. Id. at 5–6.
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`Petitioner argues that Pro, therefore, discloses that trances 122a and 122b are
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`part of the electrical connection to terminal connector pads 40 in Fig. 1 (the
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`claimed first and third electrode pads). Id. at 6. Petitioner concludes that
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`our Decision erroneously found the third and seventh line limitations were
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`not disclosed by Pro because we overlooked additional sections of Pro cited
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`in the Petition that disclose these elements. Id. at 6.
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`We are not persuaded of error in our Decision that Petitioner failed to
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`establish Pro discloses the claimed “third” and “seventh” lines connected to
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`first and third electrode pads, respectively. See Dec. 17. We disagree that
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`we overlooked any arguments presented in the Petition with respect to these
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`limitations. Petitioner’s brief analysis for these elements relied solely on its
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`assertions Pro discloses the jumper constructions shown in Figs. 2A–2B may
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`be located near the terminal connector pads 40 and therefore the
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`third/seventh lines may be seen in Fig. 2A as connected to terminal
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`connector pads 40 (constituting the first and third electrode pads
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`respectively). See Pet. 55, 57. As noted in our Decision, Petitioners’
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`assertions are not supported by the cited Figure. See Dec. 17.
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`In its rehearing request, Petitioner now newly argues that we
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`overlooked portions of Pro cited in its analysis for different limitations of
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`claim 1, that when taken together in aggregate allegedly support its assertion
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`Pro discloses the recited third and seventh lines connected to first and third
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`electrode pads, respectively. See Req. Reh’g 3–6 (citing e.g., Pet. 48–52,
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`58–59). But Petitioner’s new explanation on how these various sections of
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`Pro disclose the third and seventh line limitations was not presented in the
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`3
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`IPR2017-01499
`Patent 7,923,644
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`Petition, and, therefore, could not have been overlooked. It is not our role to
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`to cobble together cited sections of a reference to meet a specific claim
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`limitation. Rather, a petition must itself include “a detailed explanation of
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`the significance of the evidence.” 37 C.F.R. § 42.22(a)(2); see also 37
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`C.F.R. § 42.104(b)(5) (we give no weight to evidence where a party fails to
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`state its relevance). Such an explanation for the third and seventh line
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`limitations was lacking in the Petition. We decline to reconsider and reverse
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`our decision to deny institution based on the new arguments raised in the
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`rehearing request.
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`We conclude that Petitioner has not identified adequately any matter
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`that we misapprehended or overlooked, much less in a manner that
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`constitutes an abuse of discretion.
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`In view of the foregoing, it is:
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`ORDERED that Petitioner’s Request for Rehearing is denied.
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`4
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`IPR2017-01499
`Patent 7,923,644
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`PETITIONER:
`
`Jennifer Hayes
`Daniel J. Burnham
`Nixon Peabody LLP
`jenhayes@nixonpeabody.com
`dburnham@nixonpeabody.com
`
`
`PATENT OWNER:
`
`Alex V. Chachkes
`Don Daybell
`Orrick, Herrington & Sutcliffe LLP
`A34PTABDocket@orrick.com
`D2DPTABDocket@orrick.com
`
`5
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