Trials@uspto.gov Paper No. 10
`571-272-7822
`
` Entered: August 3, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLYMPIA TOOLS INTERNATIONAL, INC.,
`Petitioner,
`v.
`JPW INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00388
`Patent 9,079,464 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, ULRIKE W. JENKS, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
` Entered: August 3, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLYMPIA TOOLS INTERNATIONAL, INC.,
`Petitioner,
`v.
`JPW INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00388
`Patent 9,079,464 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, ULRIKE W. JENKS, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`Case IPR2018-00388
`Patent 9,079,464 B2
`
`I. INTRODUCTION
`Olympia Tools International, Inc. (“Petitioner”) filed a Petition
`requesting an inter partes review of claims 1, 3, 5–8, 12, and 21–25 of U.S.
`Patent No. 9,079,464 (Ex. 1001, “the ’464 patent”). Paper 1 (“Pet.”). JPW
`Industries, Inc. (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 7 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we denied
`inter partes review of all claims. Paper 8 (“Dec.” or “Decision”).
`Pursuant to 37 C.F.R. § 42.71(d), Petitioner filed a Request for
`Rehearing (Paper 9, “Reh’g Req.”), seeking reconsideration of our Decision
`to deny institution based on the challenge of claim 23 as obvious over
`Cornes (Ex. 1006), or the combination of Cornes with either
`Long (Ex. 1007) or Murray (Ex. 1009). For the reasons set forth below,
`Petitioner’s Request for Rehearing is denied.
`II. STANDARD FOR RECONSIDERATION
`37 C.F.R. § 42.71(d) provides that
`[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.
`(Emphasis added.) When reconsidering a decision on institution, the Board
`reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A
`request for rehearing, however, is not an opportunity merely to disagree with
`the panel’s assessment of the arguments or weighing of the evidence.
`
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`Case IPR2018-00388
`Patent 9,079,464 B2
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`III. DECISION
`In our Decision denying institution, we determined that the Petition
`has not “sufficiently provided an articulated reason with a rational
`underpinning as to why reversing the spindle and mating threaded tubular
`member and nut in Cornes would have been obvious to a person of ordinary
`skill in the art.” Dec. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), see also
`id. at 22 (“Neither Petitioner nor its declarant, Mr. O’Banion, explains
`adequately why a skilled artisan would have had reason to redesign Cornes’s
`vise under the general theory of simple “substitution” of one known element
`for another. . . . [Merely reciting theory is not enough] there [still] needs to
`be reason why an ordinary artisan would reverse the spindle in the first
`place.”).
`Petitioner argues in its Request for Rehearing that we abused our
`discretion and that our Decision disregards KSR’s prohibition against rigid
`rules. Reh’g Req. 4, 7. Petitioner reiterates that “there is no functional
`difference between a rotating threaded spindle with a corresponding fixed
`nut and a fixed threaded spindle with a corresponding rotating nut. . . . In
`either arrangement, each component operates according to its established
`function.” Reh’g Req. 7–8. We do not disagree with Petitioner that a
`generic nut-spindle arrangement (for example a nut and bolt) allows for
`either the spindle or the nut to be held stationary while the other component
`is free to rotate.
`We, however, disagree with Petitioner’s position that identifying “a
`simple substitution of one known element for another,” here, is the end of
`the obviousness inquiry. See Reh’g Req. 4. As explained in our Decision,
`
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`Case IPR2018-00388
`Patent 9,079,464 B2
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`to arrive at the claimed invention an artisan would need to do more than
`substitute one element for another, it would also necessitate a redesign of
`Cornes’s vise that requires reversing the position of the spindle. See
`Dec. 22. We are mindful that in order to arrive at a conclusion of
`obviousness it is often necessary to look at interrelated teachings including
`“background knowledge possessed by a person having ordinary skill in the
`art, all in order to determine whether there was an apparent reason to
`combine the known elements in the fashion claimed by the patent at issue.”
`KSR, 550 U.S. at 418. Our Decision considered Mr. O’Banion’s testimony
`but we found that it was not sufficiently persuasive to explain why an artisan
`would have reversed the position of Cornes’s spindle in the first place. See
`Dec. 18 (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327,
`1352, 1354 (Fed. Cir. 2014)), see id. 22.
`Even though KSR analysis does not require precise teachings from the
`reference and allows for reliance on inferences and creative steps, “[t]o
`facilitate review, this analysis should be made explicit.” KSR, 550 U.S. at
`418 (citing Kahn, 441 F.3d at 988). As explained in Kahn, in order to
`establish that an obviousness conclusion is non-hindsight driven requires
`some “rationale, articulation, or reasoned basis to explain why the
`conclusion of obviousness is correct.” Kahn, 441 F.3d at 988; see also
`Perfect Web Techs. Inc. v. InfoUSA Inc., 587 F.3d 1324, 1330 (Fed. Cir.
`2009) (“[T]o invoke ‘common sense’ or any other basis for extrapolating
`from prior art to a conclusion of obviousness, [the factfinder] must articulate
`its reasoning with sufficient clarity for review.”); see also In re Van Os, 844
`F.3d 1359, 1361 (Fed. Cir. 2017) (“the flexibility afforded by KSR did not
`extinguish the factfinder’s obligation to provide reasoned analysis.”). As
`
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`Case IPR2018-00388
`Patent 9,079,464 B2
`
`explained in our Decision, we considered the evidence presented by
`Petitioner but found it insufficient to support a conclusion of obviousness,
`because Mr. O’Banion’s testimony did not explain adequately why the
`ordinary artisan would have made such changes. See Dec. 18 (citing Ex.
`1003 ¶¶ 189–194); see Ex. 1003 ¶ 194 (“a POSITA would find it obvious to
`modify Cornes . . . as informed by the background knowledge and
`experience of the POSITA– because the substitution of one known element
`for another to obtain predictable results is obvious.”).
`Therefore, we are not persuaded that Petitioner has shown that we
`misapprehended or overlooked argument or supporting evidence, or both,
`presented in the Petition with respect to the obviousness challenge based on
`Cornes alone or in combination with either Long or Murray, such that it
`amounted to an abuse of discretion.
`IV. ORDER
`For the reasons given, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`PETITIONER:
`B. Todd Patterson
`Jerry R. Selinger
`PATTERSON+SHERIDAN, LLP
`tpatterson@pattersonsheridan.com
`jselinger@pattersonsheridan.com
`
`PATENT OWNER:
`Imron T. Aly
`Jason G. Harp
`Thomas A. Rammer II
`
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`Case IPR2018-00388
`Patent 9,079,464 B2
`
`SCHIFF HARDIN LLP
`ialy@schiffhardin.com
`jharp@schiffhardin.com
`trammer@schiffhardin.com
`
`6
`
`
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