throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: March 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Petitioner,
`
`v.
`
`RESMED LIMITED,
`Patent Owner.
`_______________
`
`Case IPR2017-02003
`Patent 8,944,061 B2
`_______________
`
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
`I. INTRODUCTION
`A. Background
`Fisher & Paykel Healthcare Limited (“Petitioner”) filed a Petition
`(Paper 1, “present Petition” or “Pet.”) requesting an inter partes review of
`claims 17, 18, 20–23, 26–30, 32, 33, 35–38, 41–46, and 48–91 (“challenged
`claims”) of U.S. Patent No. 8,944,061 B2 (Ex. 1301, “the ’061 patent”).
`ResMed Limited (“Patent Owner”) filed a Preliminary Response to the
`Petition (Paper 7, “Prelim. Resp.”).
` We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under the circumstances of
`this case, for the reasons explained below, we exercise our discretion under
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to not institute inter partes
`review of the challenged claims.
`
`
`B. Related Matters
`The parties state that the ’061 patent has been asserted in: Fisher &
`Paykel Healthcare Ltd. v. ResMed Corp., Case No. 3:16-cv-02068-DMS-
`WVG (S.D. Cal.). Pet. 11; Paper 4, 2. Petitioner previously filed three
`additional petitions requesting inter partes review of the ’061 patent. Id.
`See IPR2017-00632 (“632 IPR”), IPR2017-00634 (“634 IPR”), and
`IPR2017-00635 (“635 IPR”) discussed infra.
`
`
`C. The ’061 Patent
`The ’061 patent, titled “Cushion to Frame Assembly Mechanism,”
`issued on February 3, 2015, and claims priority from an application filed on
`January 12, 2006, and two provisional applications filed on October 14 and
`
`2
`
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`

`IPR2017-02003
`Patent 8,944,061 B2
`
`November 9, 2005, respectively. Ex. 1301, (45), (54), (60), (63). The patent
`relates to a patient interface for use in treatment of sleep disordered
`breathing such as obstructive sleep apnea, and, in particular, to an apparatus
`for securing a face-contacting portion of a patient interface, such as a
`cushion, to a frame or shell of the patient interface. Id. at 1:17–23.
`Petitioner provides the following annotated version of Figure 3 of the
`’061 patent illustrating mask assembly 210:
`
`Pet. 19; Ex. 1301, Fig. 3. Mask assembly 210 includes skeleton frame 212
`(labeled “Second Frame” in the annotated figure above), which is adapted to
`interlock removably with cushion/frame sub-assembly 230. Ex. 1301, 6:53–
`58. Cushion/frame sub-assembly 230 comprises an integrally molded frame
`
`
`
`3
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`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`and cushion. Id. at 6:59–60. The cushion/frame assembly includes opening
`218, which is surrounded by annular wall 240. Id. at 6:64–67.
`
`Petitioner’s annotated version of Figure 4 of the ’061 patent illustrates
`skeleton frame 212 engaged with cushion/frame sub-assembly 230:
`
`
`Pet. 20; Ex. 1301, Fig. 4. As shown in the annotated figure above, annular
`wall 240 of the cushion/frame sub-assembly interlocks with annular elbow
`connection seal 248 of skeleton frame 212. Ex. 1301, 7:22–25, Fig. 4. The
`annular elbow connection seal of skeleton frame 212 is adapted to engage an
`inlet conduit, e.g., an elbow. Id. at 7:15–16. Skeleton frame 212 includes
`upper support member 244 adapted to support a forehead support and lower
`headgear and clip receptacles 246 adapted to engage clips on straps of a
`headgear assembly. Id. at 7:11–14.
`
`4
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`Of the challenged claims, claims 17, 32, 51, 58, 65, 74, and 81 are
`
`independent. Each of these claims recites, inter alia, a “first frame” or
`“frame” and a “second frame” or “skeleton frame.” Claim 17 recites a
`second frame that has “an annular connection” adapted to engage an elbow
`of an inlet conduit. Claims 32 and 81 each recite a second frame that has
`“an annular opening” adapted to allow an elbow (or inlet conduit) to provide
`pressurized gas to the patient. Claim 51 recites a second frame with a lower
`portion that has “a second opening” aligned with “the first opening” in the
`first frame so that the inlet conduit fluidly communicates with a breathing
`chamber formed by the cushion and the first frame. Claim 58 recites a
`skeleton frame with “an annular hole” adapted to align with “the frame-
`opening” in the frame. Claim 65 recites that the skeleton frame and the
`frame are adapted to be releasably engageable to one another at “the
`opening” in the frame. Claim 74 recites a second frame with a lower
`member that has “a second opening” surrounded by a second cylindrical
`wall and aligned with “the first opening” in the first frame so that the first
`cylindrical wall, which surrounds the first opening, and the second
`cylindrical wall at least partially overlap when the first frame and the second
`frame are assembled.
`Claim 51 is illustrative, and is reproduced below:
`51. A mask assembly for treatment of sleep disorder
`breathing by delivering a flow of pressurized gas to a patient, the
`mask assembly comprising:
`a first frame with a first opening adapted to fluidly
`communicate an interior of the first frame with an inlet
`conduit, the first frame being made of a first material;
`a cushion with a side wall and a face contacting portion
`extending from the side wall, wherein the cushion is over-
`molded to the first frame to form a cushion/frame sub-
`
`5
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`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
`
`
`assembly and the cushion is adapted to form a seal around
`a patient’s nose and mouth, the cushion being made of a
`second material that is less rigid than the first material; and
`a second frame adapted to removably interlock with the
`cushion/frame sub-assembly, the second frame including
`an upper member configured to provide forehead support;
`lower portion with a second opening aligned with the first
`opening so that the inlet conduit fluidly communicates
`with a breathing chamber formed by the cushion and
`the first frame, and with headgear attachment structures
`on opposed lateral sides of the second opening, the
`headgear attachment structures being adapted to
`engage with headgear attachments;
`two elongate frame members that interconnect the upper
`member and lower portion; and
`an open space bounded at least in part by the two elongate
`frame members and the lower portion;
`wherein the first frame protrudes at least partially through the
`open space.
`Id. at 24:1–31.
`
`
`
`D. Procedural History
`
`1. 632 IPR
`On January 9, 2017, Petitioner filed the 632 IPR (Ex. 2301) requesting
`inter partes review of claims 17, 18, 20–23, 26–30, 32, 33, 35–38, 41–46,
`and 48–91 of the ’061 patent based on the following grounds of
`unpatentability:
`
`6
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
` References
`Berthon-Jones1 and
`Barnett2
`Berthon-Jones, Barnett,
`and Lithgow3
`Berthon-Jones, Barnett,
`Lithgow, and Burns4
`
` Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Claim(s) Challenged
`
`81–91
`17, 18, 20–23, 26–30, 32,
`33, 35–38, 41–46, 48–50,
`and 58–73
`51–57 and 74–80
`
`Ex. 2301, 15.
`On July 25, 2017, we instituted an inter partes review as to claims 81,
`84, 85, 87, 88, and 91 as obvious over Berthon-Jones and Barnett; and
`claims 17, 18, 20, 21, 23, 28–30, 32, 33, 35, 36, 38, 43–46 as obvious over
`Berthon-Jones, Barnett and Lithgow. 632 IPR, Paper 8, 25. With respect to
`claim 81, we were not persuaded by Petitioner’s argument and evidence that
`the proposed combination of Berthon-Jones and Barnett teach the “bracket
`or frame structure” claim element. Id. at 18. Nor were we persuaded “that a
`‘bracket or frame structure’ would have been a predictable option for
`incorporating Barnett’s collar 34 into Berthon-Jones’s mask.” Id. We were,
`however, persuaded by Petitioner’s alternative argument that “opening 526
`satisfies the ‘separate opening’ limitation” (id. at 19) and trial was instituted
`as to claims 81, 84, 85, 87, 88, and 91 on that basis. Id. at 19–20. As to
`claims 17, 18, 20, 21, 23, 28–30, 32, 33, 35, 36, 38, 43–46, we determined
`that Petitioner had made a sufficient showing to institute trial, but not as to
`claims 22, 26, 27, 29, 37, 41, 42, 48–50. Id. at 20–23. We were not
`
`
`1 WO 2004/041342 A1, pub. May 21, 2004 (Ex. 1317, “Berthon-Jones”).
`2 US 6,412,488 B1, iss. July 2, 2002 (Ex. 1314, “Barnett”).
`3 US 2004/0118406 A1, pub. June 24, 2004 (Ex. 1313, “Lithgow”).
`4 US 5,062,421, iss. Nov. 5, 1991 (Ex. 1315, “Burns”).
`
`7
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`persuaded that Petitioner “established a reasonable likelihood of prevailing
`on its contention that claims 58 and 65 would have been obvious over
`Berthon-Jones, Barnett, and Lithgow,” as well as dependent claims 59–64
`and 66–73. Id. at 23. For the same reasons, we were “not persuaded that
`Petitioner has established a reasonable likelihood of prevailing on its
`contention that claims 51 and 74 would have been obvious over
`Berthon-Jones, Barnett, Lithgow, and Burns” as well as dependent claims
`52–57 and 75–80. Id. at 24.
`2. 634 IPR
`On January 9, 2017, Petitioner also filed the 634 IPR (Ex. 2302)
`requesting inter partes review of claims 17, 18, 20–23, 26–30, 32, 33, 35–
`38, 41–46, 48–50, and 81–91 of the ’061 patent based on the following
`ground of unpatentability:
`
` References
`
`Lovell,5 Gunaratnam,6 and
`Gelinas7
`
` Basis
`
`§ 103(a)
`
`Claim(s) Challenged
`17, 18, 20–23, 26–30, 32,
`33, 35–38, 41–46, 48–50,
`and 81–91
`
`Id. at 10.
`Each of the challenged claims requires an opening in the second frame
`that provides access to the first frame. 634 IPR, Paper 8, 15. On July 25,
`2017, we declined to institute an inter partes review of the challenged
`claims, finding that “Petitioner has not persuaded us that a POSITA would
`
`
`5 US 6,631,718 B1, iss. Oct. 14, 2003 (Ex. 1321, “Lovell”).
`6 US 6,796,308 B2, iss. Sept. 28, 2004 (Ex. 1316, “Gunaratnam”).
`7 US 2003/0029454 Al, pub. Feb. 13, 2003 (“Gelinas”).
`
`
`8
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`

`IPR2017-02003
`Patent 8,944,061 B2
`
`have combined the teachings of Lovell, Gunaratnam, and Gelinas to achieve
`an opening in Lovell’s second frame that provides access to the first frame.”
`Id. at 16.
`3. 635 IPR
`On January 9, 2017, Petitioner likewise filed the 635 IPR (Ex. 2303)
`requesting inter partes review of claims 51–80 of the ’061 patent based on
`the following ground of unpatentability:
`
`Claim(s) Challenged
` Basis
` References
`Lovell, Gunaratnam, and Gelinas § 103(a) 51–80
`
`Id. at 10.
`On July 25, 2017, we declined to institute an inter partes review of
`the challenged claims, finding that (1) “Petitioner has not persuaded us that
`the combination of Lovell, Gunaratnam, and Gelinas teaches the ‘“frame
`member’ requirement, i.e., a second/skeleton frame having two frame
`members that interconnect the upper member and a lower portion/member”
`(635 IPR, Paper 8, 18); and (2) “Petitioner also has not persuaded us that the
`combination of Lovell, Gunaratnam, and Gelinas teaches the ‘open space’
`requirement, i.e., an open space bounded at least in part by two frame
`members and the lower portion/member” (id. at 19).
`
`
`9
`
`

`

`E. Asserted Grounds of Unpatentability in the Present Petition
`On August 25, 2017, Petitioner filed the present Petition challenging
`claims 17–18, 20–23, 26–30, 32–33, 35–38, 41–46, and 48–91 of the ’061
`patent based on the following grounds of unpatentability:
` References
` Basis
`Claim(s) Challenged
`17, 18, 20–23, 26–30, 32,
`33, 35–38, 41–45, 58–61,
`63 and 81–91
`46, 48–50, 62, 64–73
`
`IPR2017-02003
`Patent 8,944,061 B2
`
`
`Lang-I,8 Kwok,9 and
`Lithgow
`Lang-I, Kwok, Lithgow,
`and Barnett
`Lang-I, Kwok, Lithgow,
`and Burns
`Lang-I, Kwok, Lithgow,
`Burns, and Barnett
`Pet. 15.
`
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`51–53, 55, 56
`
`54, 57, 74–80
`
`II. ANALYSIS
`A. Application of our Discretion Under 35 U.S.C. § 314
`The Board has discretion not to institute an inter partes review. See
`35 U.S.C. § 314(a) (authorizing institution of an inter partes review under
`particular circumstances, but not requiring institution under any
`circumstances); 37 C.F.R. § 42.108(a) (stating “the Board may authorize the
`review to proceed”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc., 815
`F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO
`is permitted, but never compelled, to institute an IPR proceeding”).
`
`
`8 WO 03/035156 A2, pub. May 1, 2003 (German) (Ex. 1309, “Lang-I”).
`9 U.S. 6,119,693, iss. Sept. 19, 2000 (Ex. 1312, “Kwok”).
`
`10
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`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
`Recognizing that institution of inter partes review is discretionary, as
`well as its previous challenges to the ’061 patent, Petitioner argues that we
`should decline to exercise our discretion for the reasons discussed infra. Pet.
`5–10. Patent Owner disagrees, arguing that we should exercise our
`discretion under 35 U.S.C. § 314(a) to deny the present Petition. Prelim.
`Resp. 1–2 (citing Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential)10
`(hereinafter “General Plastic”)). Specifically, Patent Owner argues that this
`is the fourth petition challenging the ’061 patent, in addition to the three
`original petitions (i.e., 632 IPR, 634 IPR, and 635 IPR). Prelim. Resp. 4.
`Patent Owner contends that Petitioner “used both the Board’s decisions
`denying institution and/or Patent Owner’s responses (Patent Owner
`Preliminary Responses or Patent Owner Responses) as a roadmap to revise
`its earlier flawed arguments.” Id. at 4.
`As recognized by the parties (Pet. 6–7, Prelim. Resp. 11–12), in
`determining whether to exercise our discretion under § 314(a), we consider
`the following non-exhaustive factors:
`1. Whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`
`
`2. Whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it;
`
`
`3. Whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`
`
`10 Section II.B.4.i of General Plastic was designated precedential on October
`18, 2017.
`
`11
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;
`
`
`4. The length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition;
`
`
`5. Whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent;
`
`
`6. The finite resources of the Board; and
`
`7. The requirement under 35 U.S.C. § 316(a)(11) to issue a
`final determination not later than 1 year after the date on
`which the Director notices institution of review.
`General Plastic, slip. op. at 15–16 (citing NVIDIA Corp. v. Samsung Elec.
`Co., IPR2016-00134, slip op. 6–7 (PTAB May 4, 2016) (Paper 9)).
`In applying these factors, we consider not only the congressional
`intent that inter partes review proceedings provide an effective and efficient
`alternative to district court litigation, but also the potential for abuse of the
`review process through repeated attacks by the same petitioner with respect
`to the same patent. See Gen. Plastic, slip. op. at 16–17 (citing H.R. Rep. No.
`112-98, pt. 1, at 40 (2011)). We address each of these factors in turn, but
`note that not all the factors need to weigh against institution for us to
`exercise our discretion under § 314(a).11
`
`
`11 We refer to each factor by the General Plastic numbering scheme.
`
`12
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`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
`Factor 1: Whether the same petitioner previously
`filed a petition directed to the same claims of the
`same patent
`Here, it is undisputed that the same Petitioner in the present Petition
`previously filed the 632 IPR, 634 IPR and 635 IPR directed to the same
`claims of the same patent, i.e., the ’061 patent. Petitioner’s argument that
`Patent Owner’s preliminary response in the earlier petitions “gave no
`advantage to Petitioner” because the board “was not persuaded that the
`Petitioner’s proposed modification was a ‘predictable option’” is not
`convincing. Pet. 8. As discussed above, we determined that certain
`arguments of Petitioner were sufficient to institute trial as to a subset of
`claims in the 632 IPR.12 This factor weighs in Patent Owner’s favor.
`Factor 2: Whether at the time of filing of the first
`petition the Petitioner knew of the prior art asserted
`in the second petition or should have known of it
`As discussed in Section I. E, the present Petition utilizes five
`references in its grounds: Lang-I, Kwok, Lithgow, Burns, and Barnett. Pet.
`14. Patent Owner argues that Petitioner was aware of these references at the
`time of filing the original three petitions against the ’061 patent. Prelim.
`Resp. 14–15. Patent Owner explains that (1) Petitioner cited Lang-I to the
`Patent Office during prosecution of U.S. Patent No. 9,802,021 “more than 6
`months before the filing of the first three IPRs against the ’061 patent” (id. at
`14 (citing Ex. 2310)); (2) Lang-I’s U.S. counterpart and Kwok are cited on
`
`
`12 Oral argument in the 632 IPR is scheduled for April 23, 2018. 632 IPR
`Paper 9, 7.
`
`13
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`

`IPR2017-02003
`Patent 8,944,061 B2
`
`the face of the ’061 patent (id. (citing Ex. 1301, 5–6)); and (3) Lithgow,
`Burns, and Barnett were asserted in the 632 IPR (id. (citing Ex. 2301)).
`As to this factor, Petitioner argues that it
`did not think the new prior art (e.g., Lang-I and Kwok) was
`necessary when it filed the earlier petitions. Upon receiving the
`Board’s decisions, Petitioner gathered these additional
`references that specifically addressed the details of the
`second/separate opening. Since receiving the earlier decisions,
`Petitioner has been diligent in preparing and filing this petition
`with the new prior art within one month.
`Pet. 9.
`
`Petitioner does not state expressly that it was unaware of the newly
`cited references (e.g. Lang-I, Kwok). Pet. 9. Instead, Petitioner
`acknowledges that it utilized the Board’s decision to “gather[ed] these
`additional references that specifically addressed the details of the
`second/separate opening.” Id. We do not give significant weight to
`Petitioner’s contention that “[b]ecause the parties are engaged in district
`court litigation, it would be inefficient, from a global perspective, for the
`Board to decide issues relating to the instituted claims and for the district
`court to decide the same issues with respect to the similar, non-instituted
`claims.” Pet. 1–2. Although Petitioner filed the present Petition prior to
`General Plastic’s designation as precedential, as noted above, the
`enumerated non-exhaustive list of factors were considered in previous
`decisions by the Board. See e.g., Blue Coat Sys., Inc., v. Finjan, Inc.,
`IPR2016-01441, Paper 14 at 8–9 (PTAB Jan. 23, 2017). This weighs in
`Patent Owner’s favor because Petitioner should have been cognizant that we
`would weigh its knowledge of the prior art in the earlier proceedings, against
`the assertions it makes in the present proceeding.
`
`14
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`

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`
`Factor 3: Whether at the time of filing of the second
`petition the petitioner already received the patent
`owner’s preliminary response to the first petition or
`received the Board’s decision on whether to
`institute review in the first petition
`There is no dispute that at the time of filing the present Petition,
`Petitioner had received already our decisions in the 632 IPR, 634 IPR, and
`635 IPR. Pet. 8; Prelim. Resp. 16–18. Petitioner’s arguments and evidence
`do not persuade us that “Patent Owner is not prejudiced by this petition
`challenging the remaining claims in view of the Board’s unexpected
`conclusions.” Pet. 8. That Petitioner possessed the advantage of knowing
`the position of the Board with respect to the originally filed petitions in
`preparing the present Petition, weigh more in Patent Owner’s favor.
`Factor 4: The length of time that elapsed between
`the time the petitioner learned of the prior art
`asserted in the second petition and the filing of the
`second petition
`With regards to the time period in Factor 4, Petitioner argues that it
`“did not think the new prior art references (e.g., Lang-I and Kwok) were
`necessary when it filed the earlier petitions.” Pet. 9. Petitioner maintains
`that it has been diligent in preparing and filing the present Petition within
`one month of receiving the decisions in the earlier proceedings, and whether
`the prior art was available “is insufficient to justify the Board exercising its
`discretion.” Id. (citations omitted).
`More persuasive, however, is Patent Owner’s assertion that it is
`evident that “Petitioner knew about all references asserted in this follow-on
`Petition at least by the time it was preparing the original three petitions
`against the ’061 patent—more than 7 months prior to the filing of this
`follow-on petition.” Prelim. Resp. 18. As Patent Owner points out,
`
`15
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`

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`
`“Petitioner’s own evidence shows that it prepared the certified translation of
`Lang-I on April 12, 2017, two weeks before the earlier Preliminary
`Responses were filed in the initial IPR cases, and three months before
`receipt of the Institution Decisions.” Id. at 23 (citing Ex. 1310, 68). This
`evidence suggests that Petitioner had knowledge of and was considering the
`Lang-I reference well before receipt of the institution decision in the 632
`IPR, 634 IPR, and 635 IPR. This factor weighs heavily in Patent Owner’s
`favor.
`
`Factor 5: Whether the petitioner provides adequate
`explanation for the time elapsed between the filings
`of multiple petitions directed to the same claims of
`the same patent
`Petitioner characterizes the Boards determination in the original as
`“an unexpected outcome.” Pet. 8. Petitioner asserts that it was “surprised
`by the Board’s findings and filed a request for rehearing of the Board’s
`decision, explaining how the Board was misled by Patent Owner’s
`arguments.” Pet. 3 (citing Ex. 1307). We balance Petitioner’s “surprise”
`with Petitioner’s ability under 35 U.S.C. § 315(b) to file a petition within the
`one-year statutory period following service of a complaint filed in Federal
`court alleging infringement of the ’061 patent. Here, the Petition was filed
`within the one-year statutory period set forth in 35 U.S.C. § 315(a),
`weighing in favor of Petitioner.13
`
`
`13 Patent Owner asserted infringement of the ’061 patent on September 7,
`2016. Pet. 11 (citing Ex. 1305); see 35 U.S.C. § 315(b) (“An inter partes
`review may not be instituted if the petition requesting the proceeding is filed
`more than 1 year after the date on which the petitioner, real party in interest,
`or privy of the petitioner is served with a complaint alleging infringement of
`the patent.”).
`
`16
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`

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`
`Nonetheless, other arguments suggest that the timing of the present
`Petition was such that it allowed Petitioner to benefit from our earlier
`decisions pointing out the flaws in the earlier petitions challenging the ’061
`patent. Pet. 1–3; Prelim. Resp. 23. For example, Petitioner requested and
`received a translation of Lang-I on April 12, 2017, well before receipt of our
`decisions in the 632 IPR, 634 IPR, and 635 IPR. Prelim. Resp. 23 (citing
`Ex. 1310, 68). This evidence demonstrates that Petitioner was aware of
`Lang-I and suggests that Petitioner was making preparations to use Lang-I in
`a follow-on petition if necessary.
`We also consider Petitioner’s explanation that had it “been able to
`predict that the Board would have not accepted the simple modification of
`Berthon-Jones to retain the upper portion of the opening, Petitioner would
`have included those other prior art references in its initial petitions.” Pet. 3.
`We do not find this argument to be persuasive. As Patent Owner points out,
`“the proper inquiry is whether ‘from an objective perspective in the context
`of the applicable law and facts, Petitioner’s alleged surprise is
`reasonable.’” Prelim. Resp. 20. (citing General Plastic, IPR2016-01357 at
`20–21).
`From an objective perspective, Petitioner’s purported surprise is not
`reasonable given Petitioner’s previous knowledge of Lang-I and its
`preparatory activities in obtaining a translation of Lang-I into the English
`language. Clearly, Petitioner had Lang-I waiting in the wings in case the
`632 IPR, 634 IPR and 635 IPR petitions were not successful. Further, the
`current Petition fails to explain adequately that the positions Petitioner took
`in the 632 IPR, 634 IPR, and 635 IPR, that we rejected, were objectively
`reasonable to warrant Petitioner’s “surprise.” See Pet. 9–10.
`
`17
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
`Despite Petitioner’s confidence in the robustness of its arguments, that
`we may find such arguments insufficient to institute inter partes review
`should not be “unexpected.” As discussed above in Section I. D., we found
`some of Petitioner’s arguments directed to the proposed combination of
`Berthon-Jones and Barnett in the 632 IPR, and Petitioner’s arguments
`directed to Lovell, Gunaratnam, and Gelinas in the 634 IPR and 635 IPR, as
`not demonstrating a reasonable likelihood that the challenged claims are
`unpatentable. Petitioner filed a request for rehearing on August 8, 2017
`explaining that we misapprehended its arguments in the 632 IPR,14 but did
`not file requests for rehearing in the ‘634 IPR and ‘635 IPR. In the present
`Petition, petitioner now relies on a third set of references challenging the
`same claims of the ‘061 Patent, which is the type of serial abuse of the inter
`partes review process that 35 U.S.C. § 314 protects against.15
`Thus, on balance, our consideration of this factor weighs strongly in
`favor of non-institution.
`Factor 6: The finite resources of the Board, and
`Factor 7: The requirement under 35 U.S.C. §
`316(a)(11) to issue a final determination not later
`than 1 year after the date on which the Director
`notices institution of review
`We conclude that these factors do not weigh significantly for or
`against exercising our discretion.
`
`
`
`14 Petitioner’s request is pending.
`15 We recognize that because it is now more than one year from when Patent
`Owner asserted that Petition infringed the ’061 patent, § 315(b) shelters
`Patent Owner from additional petitions by Petitioner.
`
`18
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`
`B. Summary
`Upon weighing the above-discussed factors in view of the arguments
`and evidence of record, we determine that non-institution is appropriate in
`the circumstances of this case. In particular, Petitioner’s strategic use of our
`decisions as a roadmap to remedy deficiencies in Petitioner’s case weighs
`heavily against institution. Petitioner does not explain why it could not have
`articulated its present challenges earlier, and does not persuade us that
`institution of a trial based on this follow-on petition is appropriate in light of
`the accompanying burden to the Board and Patent Owner.
`
`
`III. CONCLUSION
`For the reasons given, we exercise our discretion to deny institution
`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to the challenged claims, and
`FURTHER ORDERED that no inter partes review is instituted.
`
`
`
`19
`
`

`

`IPR2017-02003
`Patent 8,944,061 B2
`
`PETITIONER:
`Brenton R. Babcock
`Benjamin J. Everton
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2brb@knobbe.com
`2bje@knobbe.com
`
`
`PATENT OWNER:
`Michael T. Hawkins
`Michael J. Kane
`Christopher C. Hoff
`Andrew Dommer
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`kane@fr.com
`hoff@fr.com
`dommer@fr.com
`
`20
`
`

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