Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 10
`Entered: February 4, 2019
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BEDRA, INC., BERKENHOFF GMBH,
`and POWERWAY GROUP CO. LTD.,
`Petitioner,
`
`v.
`
`SEONG, KI CHUL,
`Patent Owner.
`
`
`Case IPR2018-00666
`Patent 6,306,523 B1
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`

`

`IPR2018-00666
`Patent 6,306,523 B1
`
`
`INTRODUCTION
`Berkenhoff GmbH, Bedra, Inc., and Powerway Group Co., Ltd.
`(collectively, “Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting an
`inter partes review of claims 1–18 of U.S. Patent No. 6,306,523 B1
`(Ex. 1001, “the ’523 patent”). Seong, Ki Chul1 (“Patent Owner”) filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”). Petitioner did not request
`authorization to file a reply to the Preliminary Response. We denied the
`Petition and did not institute inter partes review. Paper 8 (“Dec.” or
`“Institution Decision”). Petitioner now requests rehearing of our decision
`denying the Petition. Paper 9 (“Req.”).
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our]
`decision for an abuse of discretion.” Id. § 42.71(c). In addition, we may not
`consider an argument made in a request for rehearing unless the request
`“specifically identif[ies] . . . the place where [that argument] was previously
`addressed in a motion, an opposition, or a reply.” Id. § 42.71(d).
`After considering the Request for Rehearing, we determine that
`Petitioner has not demonstrated that we abused our discretion in denying
`institution. Accordingly, we deny the Request for Rehearing.
`
`ANALYSIS
`Petitioner argues that we misapprehended the evidence presented
`regarding the proper interpretation of Figure 2a2 of a Korean application to
`which the challenged patent claims priority. Req. 7–15 (citing Ex. 1013,
`
`
`1 Variously spelled “Sung, Ki Chul” and “Ki Chul Song.” Prelim. Resp. 1;
`Paper 5, 3.
`
`2
`
`

`

`IPR2018-00666
`Patent 6,306,523 B1
`
`Fig. 2a2). Specifically, Petitioner argues that, contrary to our finding in the
`Institution Decision, Figure 2a2 of the Korean application does not disclose
`the “cracks through a coating layer and an alloy layer” that are recited in the
`challenged claims. Id. at 7–14. In addition, Petitioner argues that, even if it
`could be argued that Figure 2a2 does disclose such cracks, there is, at
`minimum, a genuine question of material fact that should be resolved in
`Petitioner’s favor. Id. at 14–15 (citing 37 C.F.R. § 42.108(b)).
`Petitioner has not previously addressed, in its trial arguments, any of
`the arguments it raises in its Rehearing Request. Although the Preliminary
`Response discusses Figure 2a2 extensively, Prelim. Resp. 3, 23–27, the
`Petition only cites Figure 2a2 in passing, without discussing it at all. Pet. 19.
`Even Petitioner’s declarant, Dr. Tomalin, only cites Figure 2a2 twice in his
`entire declaration, and in neither of those places does he discuss Figure 2a2
`in any detail.2 Ex. 1004 ¶¶ 51–52. Petitioner could have requested
`authorization to file a reply to respond to Patent Owner’s arguments about
`Figure 2a2 in the Preliminary Response but did not do so. Because
`Petitioner has not previously raised any of its arguments, we are not
`permitted to consider its arguments now.3 37 C.F.R. § 42.71(d).
`
`
`2 Even if Dr. Tomalin did discuss Figure 2a2 more extensively in his
`declaration, Petitioner could not rely on discussion that appeared there but
`not in the Petition. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be
`incorporated from one document into another document.”).
`3 We do not mean to suggest that there are never any circumstances under
`which a party may raise an argument for the first time in a rehearing request.
`For example, waiver of the requirements of 37 C.F.R. § 42.71(d) may be
`appropriate when a party shows good cause for such a waiver. Here,
`however, Petitioner does not argue, much less persuade us, that waiver of
`those requirements is warranted. Req. 1–15 (posing new arguments
`
`3
`
`

`

`IPR2018-00666
`Patent 6,306,523 B1
`
`
`Ignoring the violation of § 42.71(d) and considering Petitioner’s new
`arguments, we still are not persuaded that those arguments show that we
`abused our discretion in determining that the Korean application disclosed
`cracks in the alloy layer and the coating layer. Even if Petitioner is correct
`that Figure 2a2 shows no cracks or does not show cracks clearly enough, our
`Institution Decision cited other evidence that Petitioner does not dispute.
`First, as Petitioner admits, the Korean application discloses that its
`“coating layer” has cracks “uniformly formed” within it. Pet. 19 (citing
`Ex. 1013, 6–7). Petitioner interprets this disclosure of cracks in the “coating
`layer” as limited to the outermost layer of the Korean application’s wire,
`rather than also in any underlying alloy layer. Id. But, as Petitioner admits,
`the “coating layer” described in the Korean application is not merely the
`outermost layer, but is instead made up of “three parts”: “beta brass, a mixed
`portion of beta and gamma brass, and zinc on the surface.” Id. at 18–19. If
`cracks are “uniformly formed” within the “coating layer,” then they are
`present in all three of these parts, including the “beta brass” and “mixed . . .
`beta and gamma brass” layers, each of which is an alloy. See Dec. 8.
`Second, the alloy layer immediately underlying the zinc layer in the
`Korean application is made up of a mixture of beta brass and gamma brass.
`As Dr. Tomalin admits, gamma brass “crack[s] under cold drawing,” and
`beta brass may crack. Ex. 1004 ¶ 29 (citing Ex. 1007 ¶¶ 7, 8, 12, 18). The
`drawing process disclosed in the Korean application is cold drawing, as
`Dr. Tomalin admits. Ex. 1004 ¶ 55; Ex. 1013, 7. Thus, the likely result of
`carrying out the drawing process of the Korean application on the wire
`
`regarding Figure 2a2 but not arguing that the failure to make these
`arguments previously should be excused).
`
`4
`
`

`

`IPR2018-00666
`Patent 6,306,523 B1
`
`disclosed in the Korean application is that the layer made up of a
`combination of beta and gamma brass will crack.
`Given the evidence that the uppermost alloy layer of the Korean
`application is likely to crack when drawn, and given that the wire of the
`Korean application has cracks uniformly throughout its zinc and alloy layers,
`even if we were to accept that Figure 2a2 of the Korean application does not
`adequately show cracks in the alloy layer and the coating layer, we are not
`persuaded that it was an abuse of discretion for us to determine that the
`Korean application disclosed such cracks.
`We also are not persuaded by Petitioner’s argument that there is a
`genuine issue of material fact due to the competing testimony of the parties’
`declarants. Req. 14–15. As discussed above and in our Institution Decision,
`we do not find support in the evidentiary record for Dr. Tomalin’s opinions.
`Despite testifying both that the “coating layer” of the Korean application
`includes “beta brass,” “beta/gamma brass,” and “zinc” layers, and that the
`“coating layer” contains uniform cracks, Dr. Tomalin also testifies that the
`cracks described in the Korean application are limited to the outermost zinc
`layer. Ex. 1004 ¶¶ 51–52, 56. This testimony is internally inconsistent, so it
`cannot create a genuine dispute of material fact.
`Thus, we are not permitted to consider any of the arguments Petitioner
`makes in its Request for Rehearing. 37 C.F.R. § 42.71(d). Even ignoring
`that problem and considering those arguments, we are not persuaded that we
`abused our discretion in deciding not to institute inter partes review.
`
`CONCLUSION
`Upon consideration of the Request for Rehearing, the Petition, the
`Preliminary Response, and the evidence before us, we determine that
`
`5
`
`

`

`IPR2018-00666
`Patent 6,306,523 B1
`
`Petitioner has not established that we abused our discretion in failing to
`institute inter partes review. Accordingly, we deny the Request for
`Rehearing.
`
`
`ORDER
`
`It is hereby
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`6
`
`

`

`IPR2018-00666
`Patent 6,306,523 B1
`
`PETITIONER:
`Reginald J. Hill
`Benjamin J. Bradford
`Ian M. Moodie
`JENNER & BLOCK LLP
`rhill@jenner.com
`bbradford@jenner.com
`imoodie@jenner.com
`
`
`
`
`PATENT OWNER:
`John K. Park
`PARK LAW FIRM
`park@parklaw.com
`
`
`
`
`
`
`7
`
`