Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 21
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`Entered: July 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00082
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`
`
`
`I.
`
`INTRODUCTION
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`SPEX Technologies, Inc. (“Patent Owner”) requests rehearing (Paper
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`15, “Request” or “Req. Reh’g.”) of our Decision on Institution (Paper 11,
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`“Decision”) granting inter partes review of claims 1, 2, 6, 7, 11, 12, 23–25,
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`38, and 39 (the “challenged claims”) of U.S. Patent No. 6,088,802 (Ex.
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`1001, “the ’802 patent”). More specifically, Patent Owner argues that “the
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`Tel: 571-272-7822
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` Paper 21
`
`Entered: July 10, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00082
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`I.
`
`INTRODUCTION
`
`SPEX Technologies, Inc. (“Patent Owner”) requests rehearing (Paper
`
`15, “Request” or “Req. Reh’g.”) of our Decision on Institution (Paper 11,
`
`“Decision”) granting inter partes review of claims 1, 2, 6, 7, 11, 12, 23–25,
`
`38, and 39 (the “challenged claims”) of U.S. Patent No. 6,088,802 (Ex.
`
`1001, “the ’802 patent”). More specifically, Patent Owner argues that “the
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`
`
`IPR2018-00082
`Patent 6,088,802
`
`
`Board should have exercised its discretion to deny institution.”
`
`Req. Reh’g. 2. For the reasons below, the request is denied.
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`
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`II.
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`LEGAL STANDARD
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`When rehearing a decision whether to institute inter partes review, we
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`review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). An
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`abuse of discretion occurs when a “decision [i]s based on an erroneous
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`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
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`judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d
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`1565, 1567 (Fed. Cir. 1988). In accordance with our rules, in a request for
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`rehearing, “[t]he burden of showing a decision should be modified lies with
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`the party challenging the decision,” and “[t]he request must specifically
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`identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed” in
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`the record. 37 C.F.R. § 42.71(d).
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`
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`III. DISCUSSION
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`As a preliminary matter, we note that Patent Owner has failed to
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`specifically identify in its Request any matter Patent Owner believes to have
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`been misapprehended or overlooked in our Decision. On that basis alone,
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`we could deny the Request. See 37 C.F.R. § 42.71(d). Regardless, we
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`consider Patent Owner’s argument that our Decision not to exercise our
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`discretion to deny the Petition in its entirety constitutes an abuse of
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`discretion under 37 C.F.R. § 42.71(c). See Req. Reh’g. 1. For at least the
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`following reasons, we disagree.
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`2
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`
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`IPR2018-00082
`Patent 6,088,802
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`Patent Owner apparently argues that we abused our discretion when
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`we granted inter partes review on all of the challenged claims despite
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`finding a reasonable likelihood of success for only claims 38 and 39. Req.
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`Reh’g. 1–2. In accordance with 35 U.S.C. § 314(a), we may institute a
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`review only if we are persuaded the Petition has shown a reasonable
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`likelihood of prevailing with respect to at least one challenged claim—a
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`finding made in our Decision regarding both claims 38 and 39. Decision 38.
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`Our Decision also notes our compliance with the Supreme Court’s decision
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`in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), as requiring us to
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`grant the Petition as to all of the challenged claims or deny the Petition as to
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`all challenged claims. See Decision 42. In accordance with our discretion,
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`we instituted as to all claims and all grounds. Id. at 42–43. Thus, we are not
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`persuaded that our Decision was based on an erroneous factual finding or an
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`erroneous conclusion of law.
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`Failing to demonstrate any erroneous findings of fact or erroneous
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`conclusion of law, the Patent Owner can prevail here only by showing that
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`our Decision was based on a “clear error of judgment.” See PPG, 840 F.2d
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`at 1567. To that end, Patent Owner argues “this IPR [is] a waste of time and
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`judicial resources,” contending “[i]t is clear that Petitioner would not have
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`challenged claims 38 and 39 if it filed its petition today” because “Patent
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`Owner no longer asserts claims 38 and 39 in the district court case.” Req.
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`Reh’g. 2. Even if we accept as true Patent Owner’s speculation as to
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`Petitioner’s desires and motivations, Petitioner has made no motion or
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`statement or suggestion to us consistent with Patent Owner’s argument. If
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`Patent Owner correctly represents the state of mind of Petitioner, the parties
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`3
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`
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`IPR2018-00082
`Patent 6,088,802
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`may request authorization to file an individual or joint request to terminate
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`or for judgment under 37 C.F.R. §§ 42.72–42.74.
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`Lastly, Patent Owner argues, based on advice in a Chat with the Chief
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`on SAS webinar, “the Board could revisit an institution decision and exercise
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`its discretion to deny institution where the Petitioner failed to meet its
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`burden of showing a reasonable likelihood on a majority of claims.” Req.
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`Reh’g. 3 (emphasis added). Patent Owner is correct that the Board could
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`(may or may not) exercise its discretion to deny a petition in its entirety even
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`when one or more challenges present a reasonable likelihood of prevailing.
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`Here, we chose not to exercise that discretion.
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`We are not persuaded our Decision represents any abuse of our
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`discretion but, instead, merely represents a discretionary decision to institute
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`a trial with which Patent Owner disagrees.
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`IV. CONCLUSION
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`Having considered Patent Owner’s Request for Rehearing in its
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`entirety, for the reasons discussed above, we are not persuaded that our
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`Decision misunderstood or overlooked Patent Owner’s arguments presented
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`in Patent Owner’s Preliminary Response or that our Decision to institute on
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`all claims and grounds amounted to an abuse of discretion.
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`4
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`
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`IPR2018-00082
`Patent 6,088,802
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`V. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Patent Owner’s Request for Rehearing is denied.
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`PETITIONER:
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`Brian Buroker
`bburoker@gibsondunn.com
`
`Blair Silver
`bsilver@gibsondunn.com
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`PATENT OWNER:
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`
`Vincent Rubino
`vrubino@brownrudnick.com
`
`Enrique Iturralde
`eiturralde@brownrudnick.com
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`
`
`
`5
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