Trials@uspto.gov
`571-272-7822
`
` Paper 56
`Date: December 9, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VF OUTDOOR, LLC,
`Petitioner,
`
`v.
`COCONA, INC.,
`Patent Owner.
`____________
`
`IPR2018-00190
`Patent 8,945,287 B2
`
`
`
`____________
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
` Paper 56
`Date: December 9, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VF OUTDOOR, LLC,
`Petitioner,
`
`v.
`COCONA, INC.,
`Patent Owner.
`____________
`
`IPR2018-00190
`Patent 8,945,287 B2
`
`
`
`____________
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`
`INTRODUCTION
`I.
`VF Outdoor, LLC (“Petitioner”) filed a Request for Rehearing
`(Paper 51, “Request” or “Req.”) of our Final Written Decision (Paper 50,
`“Final Written Decision” or “Dec.”) in which we determined that claims 27,
`28, 30, 32, 33, and 35–37 of U.S. Patent No. 8,945,287 B2 (Ex. 1001,
`“the ’287 patent”) are unpatentable. We determined that Petitioner did not
`satisfy its burden of demonstrating, by a preponderance of the evidence, that
`claims 38 and 39 are unpatentable. Patent Owner, with Board authorization,
`filed an Opposition to Request for Rehearing (Paper 54, “Opposition to
`Request for Rehearing” or “Opp.”). Petitioner, with Board authorization,
`filed a Reply to Patent Owner’s Opposition to Request for Rehearing
`(Paper 55, “Reply”). For the reasons that follow, Petitioner’s Request for
`Rehearing is denied.
`THE REQUEST FOR REHEARING
`II.
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`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.
`Thus, a request for rehearing is not an opportunity merely to disagree
`with the Board’s assessment of the arguments or weighing of the evidence,
`or to present new arguments or evidence. Moreover, “[w]hen rehearing a
`decision on petition, a panel will review the decision for an abuse of
`discretion.” 37 C.F.R. § 42.71(c).
`Petitioner requests rehearing to address several issues with our Final
`Written Decision. Req. 1–15. First, Petitioner argues the Board overlooked
`
`
`
`2
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`the argument and evidence at Section VI.D.5 of the Petition, which
`Petitioner argues demonstrate a reasonable expectation of success that the
`combination of Dutta and Haggquist meets the claimed MVTR range: “‘As
`such, Dutta in view of Haggquist discloses the above limitation.’ (Petition,
`42 (citing Ex. 1005 at ¶¶ 171-172.)).” Req. 3–4.
`Second, Petitioner argues the Board overlooked Petitioner’s citation to
`Dr. Oelker’s Declaration in Petitioner’s Opposition to the Motion to Exclude
`(Paper 44, “Opposition”). Req. 5.
`Third, Petitioner argues good cause exists to submit additional
`evidence regarding reasonable expectation of success. Req. 14–15.
`Fourth, Petitioner argues rehearing is also appropriate on claims 38
`and 39 because the Board overlooked Petitioner’s alternate argument
`concerning encapsulation and interpreted the scope of claims 38 and 39 in an
`unexpected manner. Req. 6–13.
`In addition, in Petitioner’s Reply, Petitioner also argues that Patent
`Owner’s Opposition to Request for Rehearing exceeds the scope authorized
`by the Board in Paper 53. Reply 1–2.
`We have reviewed the papers submitted in connection with this
`Request for Rehearing and have carefully considered the arguments
`presented. For the following reasons, we are not persuaded that the Board
`abused its discretion or misapprehended or overlooked the matters asserted
`by Petitioner.
`
`
`
`3
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`
`III. DISCUSSION
`(A) Petitioner’s First Argument
`In the Request, Petitioner argues that the Board overlooked argument
`and evidence at Section VI.D.5 that Petitioner alleges demonstrate a
`reasonable expectation of success that Dutta1 and Haggquist2 would meet
`the claimed moisture vapor transmission rate (“MVTR”) range of claim 27.
`Req. 3–4. The argument and evidence to which Petitioner refers is a single
`sentence and citation in the Petition, which states: “As such, Dutta in view
`of Haggquist discloses the above limitation.” Req. 3–4 (citing Pet. 42 (citing
`Ex. 1005 ¶¶ 171–172)). The Request specifically identifies the citation to
`Dr. Oelker’s Declaration at paragraph 171. Req. 4 (citing Ex. 1005 ¶ 171).
`In its relevant part, paragraph 171 states
`Table 1 of Dutta discloses an increased WVTR (MVTR) for
`compositions with included Sephadex particles. (Ex. 1002 at
`p. 23 ll. 3-10.) Given the similarity between Sephadex particles
`disclosed in Dutta and the other active particles’ ability to trap
`water, a POSITA would understand that the active particles as
`disclosed in Haggquist would exhibit a performance in terms of
`WVTR that is similar to those disclosed in Dutta. (Id. at p. 23,
`ll. 3-10; Ex. 1004 at ¶ 30.). Therefore, a POSITA would
`understand that the combination of the Haggquist particles into
`the Dutta membrane would possess quick drying properties at
`least in part due to the active particles.
`Ex. 1005 ¶ 171.
`The Request asserts the Board overlooked paragraph 171, which
`provides evidence that the replacement of Dutta’s Sephadex particles with
`
`
`1 PCT Pub. No. WO 1995/33007 A1, published December 7, 1995 (“Dutta”)
`(Ex. 1002).
`2 U.S. Patent Pub. No. 2004/0018359 A1, published January 29, 2004
`(“Haggquist”) (Ex. 1004).
`
`
`
`4
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`Haggquist’s active particles would have reasonably been expected to result
`in a composition with the claimed MVTR range. Req. 4.
`However, in the Final Written Decision, the Board expressly
`determined that the Petition did not establish that Dutta and Haggquist
`would reasonably have been expected to have the recited MVTR range.
`Dec. 35. The Final Written Decision stated
`[c]laim 27 requires that the moisture vapor transmission rate of
`the water-proof composition comprises from about 600
`g/m2/day to about 11000 g/m2/day. Ex. 1001, 12:14–16. To
`demonstrate that the combination meets this limitation,
`Petitioner’s claim chart relies on Table 1 of Dutta. Pet. 25–26.
`The claim chart, however, does not provide any reference to
`Haggquist for this limitation, despite Petitioner’s reliance on the
`combination of Haggquist’s particles with Dutta’s composition
`for this ground.
`
`Id.
`
`We then specifically discussed Petitioner’s arguments and evidence in
`Section VI.D.5 of the Petition:
`The Petition also states: “If the activated carbon from
`Haggquist replaces the Sephadex particles in the cured
`polyurethane solution in Example 1B of Dutta, there is a
`reasonable expectation of success that the composition would
`have a MVTR within the claimed range.” Pet. 41. Petitioner
`relies on Figure 2 of the ’287 patent to show that “carbon
`particles combined with polyurethane have MVTRs that range
`from 6,356 g/m2/day to 10,385 g/m2/day.” Id. (citing Ex. 1001,
`Fig. 2). The Petition, however, provides no other support for its
`assertion that the combination of Dutta and Haggquist would
`have an MVTR within the claimed range. Petitioner’s reliance
`on the ’287 patent’s Figure 2 is unpersuasive, as it is unclear,
`absent further explanation or evidence, that the conditions
`leading to the MVTRs in Figure 2 would be applicable to the
`combination of Dutta and Haggquist proposed by Petitioner.
`
`Id.
`
`
`
`5
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`Because we expressly considered Section VI.D.5 of the Petition, we
`are not persuaded that we overlooked Petitioner’s argument and evidence. It
`is Petitioner’s burden to include a detailed explanation of the significance of
`the evidence. See 37 C.F.R. § 42.22(a)(2). As discussed in the Final
`Written Decision, Petitioner failed to do so here:
`Petitioner provides no analysis showing that Haggquist’s active
`particles, when substituted for the Sephadex particles of Dutta,
`would have reasonably been expected to result in a membrane
`having an MVTR within the claimed range. We cannot
`independently determine, from the evidence before us, what the
`expected MVTR of the combination would be, nor should
`Petitioner expect the Board to search the record and piece
`together the evidence that may support Petitioner’s arguments.
`35 U.S.C. § 312(a)(3) (a Petition is required to identify “with
`particularity[] the grounds on which the challenge to each claim
`is based, and the evidence that supports the grounds for the
`challenge.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th
`Cir. 1999) (“A brief must make all arguments accessible to the
`judges, rather than ask them to play archeologist with the
`record.”); 37 C.F.R. § 42.22(a)(2) (the “petition . . . must
`include . . . [a] full statement of the reasons for the relief
`requested”).
`Dec. 36.
`Rather than providing analysis that Dutta with Haggquist’s active
`particles would have reasonably been expected to result in the claimed
`MVTR range, the Petition merely provides a conclusory statement (i.e., “[a]s
`such, Dutta in view of Haggquist discloses the above limitation”) for which
`the Petition does not otherwise provide an argument or explanation. This
`conclusory statement in the Petition is followed by an unexplained citation
`to Dr. Oelker’s Declaration. This practice of citing the Declaration to
`support a conclusory statement in the Petition amounts to improper
`incorporation by reference. See 37 C.F.R. § 42.6(a)(3). Moreover,
`
`
`
`6
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`Dr. Oelker’s testimony in paragraph 171 is directed to the “quick drying”
`limitation of claim 36 and fails to mention the MVTR range limitation of
`claim 27. See Ex. 1005 ¶ 171. Thus, the citation’s significance with respect
`to the claimed MVTR range is not apparent, because the cited portion of Dr.
`Oelker’s testimony does not mention a range. In essence, Petitioner asks
`that we rely on the Petition for directions to Dr. Oelker’s Declaration, where
`the testimony does not address the claimed MVTR range. As we stated in
`the Final Written Decision, we decline to “search the record and piece
`together the evidence that may support Petitioner’s arguments.” Dec. 36.
`Based on the forgoing, we are not persuaded that we overlooked or
`misapprehended any matters with respect to Petitioner’s argument and
`evidence at Section VI.D.5 of the Petition. Petitioner’s disagreements with
`our conclusions as to the sufficiency of Petitioner’s argument and evidence
`is not a proper basis for a rehearing request.
`(B) Petitioner’s Second Argument
`Similarly, Petitioner argues that the Board overlooked a portion of
`Petitioner’s Opposition to the Motion to Exclude (Paper 44) citing to
`Section VI.D.5 of the Petition and Dr. Oelker’s Declaration. Req. 5 (citing
`Paper 44, 8–9).
`For the same reasons discussed above with respect to Petitioner’s first
`argument, we are not persuaded that we overlooked or misapprehended
`Petitioner’s arguments or evidence with respect to the claimed MVTR range,
`because they amount to improper incorporation by reference. We note,
`additionally, that Petitioner’s Opposition (Paper 44) failed to cite paragraph
`171 of Exhibit 1005, even though Petitioner now, in a parenthetical,
`indicates this was a typographical error. Paper 44, 8–9 (citing Ex. 1005
`¶¶ 172–172, not ¶¶ 171–172); Req. 5 (“¶¶ . . . 172-172 (sic, 171–172).)”
`7
`
`
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`(C) Petitioner’s Third Argument
`With its Request, Petitioner submits additional evidence (Ex. 1060) in
`the form of inventor Dr. Haggquist’s Declaration in an Information
`Disclosure Statement from the prosecution of the ’287 patent. Req. 14.
`Petitioner represents that the additional evidence was presented as Exhibit 7
`to Dr. Haggquist and Patent Owner’s expert Dr. Daniels during their
`depositions, which are already of record. Id. at 14–15 (citing Ex. 1046,
`29:25–30:10, 33:6–34:6; Ex. 1047, 138:18–139:8, 141:4–17).
`Petitioner argues good cause exists for the submission of additional
`evidence, “which directly refutes arguments made by Patent Owner only
`during its rebuttal time at the Oral Hearing (to which Petitioner had no
`opportunity to respond).” Req. 14–15. Petitioner identifies the following
`statement, cited in the Final Written Decision, as new argument during
`Patent Owner’s rebuttal: there is “no evidence of record to show that when
`an activated particle is substituted in Dutta … that you get to the MVTR
`ranges that are in the original tables of Exhibit 1002.” Req. 14 (citing
`Dec. 34 (citing Paper 49 (“Transcript” or “Tr.”), 59:13–15, 59:23–25)).
`The rule governing a rehearing request permits “[a] party dissatisfied
`with a decision . . . [to] file a single request for rehearing without prior
`authorization from the Board.” 37 C.F.R. § 42.71(d) (emphasis added).
`This rule does not address explicitly whether the requesting party also may
`file new evidence with its rehearing request. The Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Practice Guide”),
`however, is instructive on this matter. When discussing general procedures
`applicable to rehearing requests, the Practice Guide states that “[e]vidence
`not already of record at the time of the decision will not be admitted absent a
`showing of good cause.” Id. at 48,768 (emphasis added).
`8
`
`
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`We are not persuaded of good cause. First, during Petitioner’s
`opening portion of the Oral Hearing, we specifically questioned Petitioner
`about the combination’s MVTR, to which Petitioner replied “those MVTR
`ranges are disclosed by Dutta” and “the issue is when you switch out a
`different particle which is the same class of particles, they’re particles that
`adsorb or trap substances, they’re molecular filter particles, would there be a
`reasonable expectation of success? Our expert opined that it would be.”
`Tr. 25:15–23. Petitioner’s proposed new evidence addresses an element of
`Petitioner’s case-in-chief—whether Petitioner’s obviousness combination
`meets the MVTR limitation of claim 27. The panel’s questions about the
`MVTR limitation and Patent Owner’s responsive comments at the Oral
`Hearing are not good cause justifying submission of new evidence at the
`rehearing stage to fill a gap in Petitioner’s case-in-chief.
`Second, the evidence Petitioner seeks to submit, i.e., Dr. Haggquist’s
`testimony that “an active particle … may be replaced by any other active
`particle to obtain a substantially similar result” and that “all other active
`particles are capable of improving the transmission of vapor through the
`water-proof cured base material” does not explicitly address whether
`swapping Haggquist’s particles with Dutta’s particles would result in the
`claimed MTVR range. Req. 14–15. On the basis of the explanation
`presented in the Rehearing Request alone, we cannot properly ascertain the
`significance of this testimony as it relates to claim 27. Moreover, we view
`Petitioner’s request to introduce new evidence in its Rehearing Request as an
`attempt to supplement the arguments presented in the Petition. A request for
`rehearing is not a supplemental petition. Nor is it an opportunity to present
`new arguments or evidence that could have been presented and developed in
`the first instance in the Petition. For example, Petitioner had the opportunity
`9
`
`
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`in the Petition to present evidence regarding the MVTR of the proposed
`combination, but did not do so. It would be improper, at this stage in the
`proceeding, to allow Petitioner to introduce additional evidence, and
`explanations thereof, in an attempt to bolster its original argument in the
`Petition, which, as discussed previously, did not meet its burden of proof
`with regard to the MVTR limitation. See Dec. 36. Even if we were to allow
`Petitioner to submit its additional evidence, we are not persuaded that it
`would be sufficient to correct the deficiencies of the original Petition.
`Consequently, we are not persuaded there is good cause to allow Petitioner
`to submit Exhibit 1060, and we exercise our authority under 37 C.F.R.
`§ 42.7(a) to expunge Exhibit 1060.
`(D) Petitioner’s Fourth Argument
`For both Ground 2 (Dutta and Haggquist) and Ground 4 (Halley3 and
`Haggquist), Petitioner argues rehearing is appropriate on claims 38 and 39
`because the Board focused only on Petitioner’s substitution argument,
`overlooking its alternate encapsulation argument. Req. 6–13.
`In our Final Written Decision discussion of claims 38 and 39 as
`assertedly obvious over Halley and Haggquist, we addressed both of
`Petitioner’s theories, namely, (1) substitution of Halley’s particles with
`Haggquist’s particles, and (2) encapsulation of Halley’s particles with
`Haggquist’s encapsulants. Dec. 45, 47. Regarding Petitioner’s second,
`alternate argument, we stated:
`Petitioner has not met its burden of proof to demonstrate that
`the proposed combination retains the claim 27 MVTR
`requirement, despite (or because of) its encapsulation by the
`Haggquist composition. Petitioner provides no analysis
`
`3 PCT Pub. No. WO 2000/70975 A1, published November 30, 2000
`(“Halley”) (Ex. 1003).
`
`
`
`10
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`showing that Haggquist’s encapsulation, when effected on the
`active particles of Halley, would have reasonably been expected
`to result in a membrane having an MVTR within the claimed
`range. We cannot independently determine, from the evidence
`before us, what the expected MVTR of the combination would
`be, nor should Petitioner expect the Board to search the record
`and piece together the evidence that may support Petitioner’s
`arguments.
`Id. at 47–48.
`Thus, we expressly analyzed Petitioner’s alternate argument regarding
`encapsulation with respect to Ground 4, Halley and Haggquist, in our Final
`Written Decision. The same analysis with respect to encapsulation would
`apply equally to Ground 2.4 Id.
`Regarding Petitioner’s argument that the Board interpreted the scope
`of claim 38 (and claim 39) in a manner no party argued for or expected, we
`disagree. See Req. 13. Our statement in the Final Written Decision with
`respect to “retain[ing] the claim 27 MVTR requirement” was not a new
`interpretation of claim 38’s scope. Dec. 47. Rather, the statement, which
`explains that the proposed combination cannot teach or suggest claims 38
`and 39 because it fails to teach or suggest parent claim 27, is based on
`established legal principles of claim construction, i.e., that a dependent claim
`includes all the limitations of its parent claim(s). Id.
`
`
`4 Regarding Ground 2, we based our analysis on Petitioner’s failure to
`demonstrate the MVTR of claim 27, from which claims 38 and 39 depend.
`We did not discern that Petitioner made any persuasive argument that the
`encapsulation limitation of claims 38 and 39, when effected on the active
`particles of Dutta, would have reasonably been expected to result in a
`membrane having an MVTR within the claimed range.
`11
`
`
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`Accordingly, we are not persuaded that we overlooked or
`misapprehended Petitioner’s argument with respect to the encapsulation or
`the proper scope of claims 38 and 39.
`(E) Petitioner’s Reply to Patent Owner’s Opposition to Request for
`Rehearing
`In its Reply, Petitioner argues that Patent Owner’s Opposition to
`Request for Rehearing contains arguments exceeding the scope authorized
`by the Board in Paper 53. Reply 1–2. Petitioner argues that the
`unauthorized arguments should be disregarded and expunged. Id.
`We decline to expunge these allegedly unauthorized arguments. First,
`our Order does not explicitly limit Patent Owner’s arguments to claim
`construction with respect to Grounds 2 and 4, or to the submission and
`characterization of new evidence submitted by Petitioner. See Paper 53, 2
`(allowing Patent Owner to file “an opposition to Petitioner’s Request for
`Rehearing, to address the issues set forth therein”). Second, we did not rely
`on Patent Owner’s allegedly unauthorized arguments in determining the
`merits of Petitioner’s Request, i.e., in determining whether Petitioner
`demonstrated that the Board overlooked or misapprehended any matters in
`rendering the Final Written Decision. Third, Petitioner’s Reply responds to
`the substance of the allegedly unauthorized arguments, and, thus, Petitioner
`had notice and adequate opportunity to address these arguments. Reply 3–5.
`IV. CONCLUSION
`We have reviewed and considered the arguments in Petitioner’s
`Request and conclude that Petitioner has not carried its burden of
`demonstrating that the Board abused its discretion or misapprehended or
`overlooked any matters in rendering the Final Written Decision. 37 C.F.R.
`§ 42.71(d). Rather, Petitioner uses its Request as an opportunity to argue
`
`
`
`12
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`positions with which we disagreed in our Final Written Decision. Merely
`disagreeing with our analysis or conclusions does not serve as a proper basis
`for a request for rehearing. Thus, Petitioner’s challenge does not meet the
`standard set forth for a request for rehearing.
`V. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 37 C.F.R. § 42.7(a), Exhibit 1060 is
`expunged from the record of this proceeding; and
`FURTHER ORDERED that Petitioner’s Request for Rehearing is
`denied.
`
`
`
`
`
`
`
`
`13
`
`
`
`IPR2018-00190
`Patent 8,945,287 B2
`
`FOR PETITIONER:
`Andrew Larsen
`Kathleen Ott
`Marianne Timm-Schreiber
`MERCHANT & GOULD P.C.
`alarsen@merchantgould.com
`kott@merchantgould.com
`mtimm-schreiber@merchantgould.com
`
`FOR PATENT OWNER:
`Jason Jackson
`Jacob Song
`KUTAK ROCK LLP
`jason.jackson@kutakrock.com
`jacob.song@kutakrock.com
`
`
`
`
`
`
`
`
`14
`
`
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