`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 21
` Entered: December 19, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`____________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`
`On November 30, 2017, we entered a decision instituting trial on
`claims 1–4, 15–29, 31, and 32 of U.S. Patent No. 7,608,436 B2 (“the ‘’436
`patent). Paper 18 (“Decision” or “Dec.”). On December 14, 2017,
`Petitioner filed a Request for Rehearing of our Decision to the extent that we
`instituted trial on claim 4 of the ’436 patent. Paper 20 (“Req. Reh’g”).
`Petitioner correctly observes that, concurrently with our Decision, we
`entered a separate decision in Case IPR2017-01507 (“IPR1507”), which
`denied institution of patent claims that state or incorporate a limitation that is
`similar to a limitation of claim 4 of the ’436 patent, requiring a “slowly
`digestible” composition. Req. Reh’g 3 (citing IPR1507, Paper 21).
`Petitioner argues that “it is clear . . . that the Board overlooked the
`digestibility limitation in Claim 4 of the ’436 patent” given that “no
`reference to digestibility is contained in the Decision. Id. at 3–4.
`We did not overlook the digestibility limitation in claim 4. Nor did
`we overlook the decision that we entered concurrently in IPR1507. On the
`contrary, having determined that Petitioner met the threshold for review of
`claim 1 of the ’436 patent (Dec. 10), we ordered (as permitted by our
`authorizing statute) “that trial shall proceed on all other claims challenged as
`anticipated” or obvious over Shah (Ex. 1008). Id. at 10 (citing 35 U.S.C.
`§ 314(a)), 11 (for obviousness grounds based on Shah).
`We specifically included those other claims in the trial “without
`reaching any preliminary findings or conclusions on the merits.” Id. at 10.
`We pointed out that doing so serves our mission of securing the just, speedy,
`and efficient resolution of the parties’ dispute. Id. (citing 37 C.F.R.
`§§ 42.1(b), 42. 108). That action was not inconsistent with any finding in
`
`2
`
`
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`the decision declining to institute trial in IPR1507. Nor does it establish that
`we overlooked or misapprehended any matter in the Decision entered in this
`proceeding.
`We are not persuaded that we erred by including the patentability of
`claim 4 as an issue in the trial. On that point, Petitioner directs us to no
`persuasive reason why we should exclude claim 4 or otherwise disturb the
`application of any estoppels that may result, should a final written decision
`be entered in this proceeding. See 35 U.S.C. § 315(e) (estoppel provision);
`see generally Req. Reh’g.
`Petitioner also points out a clerical error in the Decision (Req.
`Reh’g 13), which we correct in a Conduct of the Proceeding Order filed
`concurrently herewith.
`
`It is:
`ORDERED that Petitioner’s Request for Rehearing (Paper 20) is
`denied.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`PETITIONER:
`
`David L. Glandorf
`Joseph Evall
`Daniel J. Thomasch
`GIBSON, DUNN & CRUTCHER LLP
`dglandorf@gibsondunn.com
`jevall@gibsondunn.com
`dthomasch@gibsondunn.com
`
`
`PATENT OWNER:
`
`Paul H. Berghoff
`James V. Suggs
`S. Richard Carden
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`Berghoff@mbhb.com
`Suggs@mbhb.com
`Carden@mbhb.com
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
