Trials@uspto.gov
`571-272-7822
`
` Paper No. 11
`Entered: March 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLEXITALLIC INVESTMENTS, INC.,
`Petitioner,
`
`v.
`
`ERIKS N.V.,
`Patent Owner.
`____________
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`____________
`
`Before JOSIAH C. COCKS, PATRICK R. SCANLON, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
` Paper No. 11
`Entered: March 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLEXITALLIC INVESTMENTS, INC.,
`Petitioner,
`
`v.
`
`ERIKS N.V.,
`Patent Owner.
`____________
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`____________
`
`Before JOSIAH C. COCKS, PATRICK R. SCANLON, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`
`
`INTRODUCTION
`I.
`Flexitallic Investments, Inc. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1–5 of U.S. Patent No. 9,388,924 B2 (“the
`’924 patent”). The Petition alleged that claims 1–5 were unpatentable as
`obvious in view of U.S. Patent Application No. 2011/0156352 (“Bond I”),
`U.S. Patent No. 9,551,422 (“Bond II”) (collectively, the “Bond
`References”), and the knowledge that would have been possessed by one of
`ordinary skill in the art. Pet. 7–8. Eriks N.V. (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”).
`On February 2, 2018, we issued a Decision Denying Institution of
`Inter Partes Review. Paper 9 (“Decision” or “Dec.”).
`Petitioner now requests rehearing of our Decision. Paper 10
`(“Rehearing Request” or “Reh. Req.”). For the reasons set forth below,
`Petitioner’s Request is denied.
`
`II. ANALYSIS
`
`A. Legal Standard
`The applicable requirements for a request for rehearing are set forth in
`37 C.F.R. § 42.71(d), which provides:
`A party dissatisfied with a decision may file a single 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, an opposition, or a reply.
`We review our Decision under an abuse of discretion standard. 37 C.F.R.
`§ 42.71(c).
`
`
`
`
`2
`
`
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`
`
`B. The Decision Denying Institution
`In the Decision, we found that Petitioner had failed to make an
`adequate showing that the Bond References disclose, teach, or suggest all
`limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we
`determined:
`Petitioner has not made an adequate showing that the Bond
`References disclose (expressly or inherently), teach, or suggest,
`“an intermediate stress gas/liquid sealing zone between the core
`inner surface and the flange inner surface” of the type required
`by claims 1, 4, and 5.
`Dec. 17. With respect to claims 2 and 3, we determined:
`Petitioner has not made an adequate showing that the Bond
`References disclose (expressly or inherently), teach, or suggest
`the step of “selecting a deformable pillow material and a
`deformable pillow thickness such [that] upon compression of the
`gasket . . . the gasket intermediate portion exhibits a stress level
`sufficient to preclude gas and liquid flowing through the pipe
`from passing radially outward beyond the gasket intermediate
`portion,” as required by claims 2 and 3.
`Dec. 18.
`
`C. Petitioner’s Arguments on Rehearing
`Petitioner now argues that rehearing is appropriate because our
`Decision “improperly disregarded Dr. Green’s testimony” regarding the
`teachings of the Bond References, and contained “numerous
`misapprehensions of Petitioner’s arguments and evidence.” Reh. Req. 1–2.
`As explained below, however, the Petitioner’s Rehearing Request does not
`identify any testimony that we improperly disregarded, or any substantive
`arguments or evidence that we misapprehended or overlooked.
`
`3
`
`
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`
`
`1. Petitioner’s Argument that the Decision Improperly
`Disregarded Dr. Green’s Testimony
`Petitioner asserts that the Board “afforded no weight to unrebutted
`testimony from a person of ordinary skill in the art [(i.e., Dr. Green)] who
`testified Bond actually discloses the flange and intermediate sealing zone” of
`claims 1, 4, and 5, “and the gasket intermediate portion” of claims 2 and 3.
`Reh. Req. 3–4.
`Petitioner begins by using a specific embodiment from the
`specification of the ’924 patent to illustrate the challenged claims, arguing
`that the “intermediate sealing zone” of claims 1, 4, and 5, and the
`“intermediate portion” of claims 2 and 3, correspond to “intermediate zone
`B”—the portion of a disclosed gasket “defined by the flange that extends
`from the core into the pillow material.” Reh. Req. 4 (citing Ex. 1012 ¶¶ 30–
`32, 38–39).
`Petitioner next describes a specific claim construction argument that
`purportedly was set forth in the Petition and Green Declaration:
`The Petition and the Green Declaration further explain that the
`“flange” recited in limitation 1.3 extends radially inward along
`the entire circumferential inner surface of the core. If it did not,
`it would not form the intermediate zone.
`Reh. Req. 5 (emphasis added). Before continuing, we note that by
`Petitioner’s own logic, the Bond References do not teach or suggest an
`“intermediate zone” unless they teach or suggest a flange that extends
`radially inward “along the entire circumferential inner surface of the core.”
`Finally, Petitioner reasons that because limitation 1.3 purportedly
`requires a “flange” that extends radially inward “along the entire
`circumferential inner surface of the core,” Dr. Green’s testimony that the
`
`4
`
`
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`
`Bond references disclose a “flange” should have been interpreted by the
`Board as testimony that Bond discloses a flange that extends radially inward
`“along the entire circumferential inner surface of the core.” See id. (citing
`Ex. 1012 ¶¶ 98–99). This line of reasoning fails for several reasons.
`First and foremost, Petitioner does not provide any citation to the
`Petition or Dr. Green’s Declaration to demonstrate that it previously argued
`that limitation 1.3 requires a “flange” that “extends radially inward along the
`entire circumferential inner surface of the core.” See Reh. Req. 5. We could
`not have misapprehended or overlooked an argument that Petitioner failed to
`make. 37 C.F.R. 42.71(d). We also note that claim limitation 1.3 does not
`recite a flange that extends “along the entire circumferential surface of the
`core” (see Ex. 1001, 8:60–62), and that the claim construction portion of the
`Petition did not argue that limitation 1.3 should be construed to require a
`flange that extends radially inward “along the entire circumferential surface
`of the core” (see Pet. 14–20).
`In addition, Petitioner fails to identify any testimony from Dr. Green
`that the Bond References teach or suggest a flange that extends radially
`inward “along the entire circumferential inner surface of the core” of the
`type Petitioner now seemingly concedes is necessary for those references to
`teach or suggest an “intermediate zone.” See Reh. Req. 5. Though Dr.
`Green testifies regarding a single-projection embodiment in which the
`projection “extend[s] radially inward from the core inner surface,” Dr. Green
`never testifies that the single projection of this embodiment extends radially
`inward “along the entire circumferential inner surface of the core.” See Ex.
`1012 ¶¶ 97–99.
`
`5
`
`
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`Case IPR2017-01968
`Patent 9,388,924 B2
`
`
`Our Decision did not overlook or misapprehend Dr. Green’s
`testimony. To the contrary, we considered and analyzed Dr. Green’s
`testimony, and determined that Dr. Green’s opinions were not adequately
`supported by the evidence of record. See Dec. 16–17 (analyzing the portions
`of the Bond References cited by Dr. Green, and rejecting Dr. Green’s
`assertion that these portions of the Bond References disclose, teach or
`suggest a flange that extends radially inward “along the entire
`circumferential inner surface of the core.”) Petitioner’s argument that we
`improperly disregarded Dr. Green’s testimony thus has no merit.
`
`2. Petitioner’s Argument that the Decision Misapprehended or
`Overlooked Portions of Petitioner’s Evidence
`The Rehearing Request also does not demonstrate that the Board
`misapprehended Dr. Green’s Figure 4c. See Reh. Req. 7–10. Petitioner now
`asserts that we misapprehended the fact that Figure 4c depicted a “single-
`projection embodiment” that is “disclosed” but “not illustrated” in Bond in
`which the single projection “extend[s] radially inward from the core inner
`surface.” Id. at 7–8. Petitioner, however, fails to cite to any portion of the
`Petition or Green Declaration in which Dr. Green described Figure 4c in this
`manner. This deficiency is fatal. See 37 C.F.R. 42.71(d). Moreover, Dr.
`Green’s own testimony contradicts Petitioner’s argument. Dr. Green
`explained in his Declaration that “Fig. 4c is an annotated version of a portion
`of Fig. 4 of Bond II.” Ex. 1012 ¶ 110. Figure 4 of Bond II depicts an
`embodiment “having two projections,” not one. Ex. 1004, 8:37–38
`(emphasis added). Dr. Green never testified that Figure 4c depicts a one-
`projection embodiment with a projection extending along the entire
`
`6
`
`
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`
`circumferential inner surface of the core. Indeed, we explicitly found that
`the Bond References do not disclose such an embodiment. See Dec. 16–17.
`In addition, the Rehearing Request does not demonstrate that we
`erroneously relied on Patent Owner’s purported mischaracterizations of
`Petitioner’s argument. Reh. Req. 10–12. A petition for inter partes review
`“must specify where each element of the claim is found in the prior art
`patents or printed publications relied upon.” 37 C.F.R. 42.104(b)(4). In our
`Decision, we analyzed the Bond References and determined that Petitioner
`failed to make an adequate showing that these references disclosed, taught,
`or suggested all limitations of any challenged claim. In other words, we
`denied institution because Petitioner failed to meet its burden under 37
`C.F.R. § 42.104(b)(4). The Rehearing Request does not demonstrate that we
`misapprehended or overlooked any material arguments or evidence that
`Petitioner actually presented in the papers in rendering our Decision.
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing (Paper 10) is
`denied.
`
`
`7
`
`
`
`Case IPR2017-01968
`Patent 9,388,924 B2
`
`For PETITIONER:
`
`Clay Holloway
`cholloway@kilpatricktownsend.com
`
`Jennifer Blackburn
`jblackburn@kilpatricktownsend.com
`
`
`
`For PATENT OWNER:
`
`Noland Cheung
`ippatent@cohenlaw.com
`
`Michael Dukes
`mdukes@cohenlaw.com
`
`
`
`8
`
`
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