throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 15
`Entered: February 21, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONITOR TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`CENTRAK, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00740
`Patent 9,622,030 B1
`____________
`
`Before JUSTIN T. ARBES, PATRICK M. BOUCHER, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`I. INTRODUCTION
`
`Petitioner Sonitor Technologies, Inc. (“Sonitor”) filed a Request for
`
`Rehearing (Paper 9, “Req. Reh’g”) of the Decision Denying Institution of
`
`Inter Partes Review of claims 1–14 and 21–33 of U.S. Patent No. 9,622,030
`
`B1 (Ex. 1001, “the ’030 patent”) pursuant to 37 C.F.R. § 42.71(d). Paper 8
`
`(“Dec.”). The Request for Rehearing contends that we (1) “improperly
`
`credited [Patent Owner Centrak, Inc.’s (‘Centrak’)] uncorroborated attorney
`
`argument over Sonitor’s arguments supported by expert testimony”; and (2)
`
`“relie[d] on Patent Owner Centrak’s arguments in this proceeding that are
`
`inconsistent with and contrary to Centrak’s arguments to the Federal Circuit
`
`on a related patent.” Req. Reh’g 1.
`
`As we explain below, we have considered the arguments presented by
`
`Sonitor in its Request for Rehearing, but we discern no reason to modify the
`
`Decision Denying Institution. As a result, we deny Sonitor’s Request for
`
`Rehearing.1
`
`II. STANDARD OF REVIEW
`
`In relevant part, the rules regarding requests for rehearing in an inter
`
`partes review provide:
`
`(d) Rehearing. 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.
`
`
`
`1 Sonitor also filed a request for Precedential Opinion Panel (POP) review,
`which was denied. See Papers 10, 12; Ex. 3002. Accordingly, the Request
`for Rehearing has been decided by the original panel.
`
`
`
`2
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`37 C.F.R. § 42.71(d) (2018). To be entitled to relief, the party seeking
`
`rehearing of a decision on institution must demonstrate that the Board
`
`abused its discretion. 37 C.F.R. § 42.71(c) (2018). A decision based on an
`
`erroneous interpretation of law, a factual finding that is not supported by
`
`substantial evidence, or an unreasonable judgment in weighing relevant
`
`factors may represent an abuse of discretion. Star Fruits S.N.C. v. United
`
`States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); In re Gartside, 203 F.3d 1305,
`
`1315–16 (Fed. Cir. 2000).
`
`III. ANALYSIS
`
`A. We did not improperly credit Centrak’s uncorroborated
`attorney argument
`
`Sonitor contends that we misapprehended the teachings of Welles
`
`(Ex. 1006) (Req. Reh’g 3–7) and improperly credited Centrak’s
`
`uncorroborated attorney argument to resolve a factual dispute (id. at 7–9).
`
`We do not agree.
`
`To the contrary, Sonitor appears to misapprehend the Decision
`
`because, rather than resolving a factual dispute in Centrak’s favor, the
`
`Decision concludes Sonitor failed to show persuasively that there was a
`
`reasonable likelihood it would prevail in establishing the facts necessary to
`
`support an unpatentability determination of the challenged claims in view of
`
`Corrado (Ex. 1005) and Welles. Although we agreed with Centrak’s
`
`argument “that Sonitor’s basis for combining Corrado and Welles in the
`
`manner claimed relies on a critical unfounded factual assertion about what
`
`Welles teaches” (Dec. 14), we did not reach that conclusion by weighing
`
`Centrak’s argument against Sonitor’s alleged facts. Instead, we carefully
`
`evaluated Sonitor’s contentions, independent of any factual representations
`
`Centrak may have made, and determined, based on the record before us, that
`
`
`
`3
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`Sonitor’s support for the facts alleged was deficient. See Dec. 14–19. Put
`
`another way, we did not improperly credit Centrak’s uncorroborated
`
`attorney argument over Sonitor’s allegedly supported arguments; we made a
`
`determination that Sonitor did not establish a reasonable likelihood of
`
`success because Sonitor’s arguments did not have persuasive evidentiary
`
`support in the record before us.
`
`In particular, a necessary factual underpinning to Sonitor’s
`
`obviousness contention was that column 8, lines 5–9, of Welles taught
`
`synchronizing the transmitters such that they transmit signals at different
`
`times. Pet. 17 (citing Ex. 1006, 8:5–11; Ex. 1003 ¶ 51); see Req. Reh’g
`
`3–7. We are mindful that, when evaluating claims for obviousness, “the
`
`prior art as a whole must be considered.” In re Hedges, 783 F.2d 1038,
`
`1041 (Fed. Cir. 1986); see also In re Merck & Co., Inc., 800 F.2d 1091,
`
`1097 (Fed. Cir. 1986) (explaining that a reference “must be read, not in
`
`isolation, but for what it fairly teaches in combination with the prior art as
`
`a whole”). “It is impermissible within the framework of section 103 to
`
`pick and choose [teachings] from any one reference . . . to the exclusion
`
`of other parts necessary to the full appreciation of what such reference
`
`fairly suggests to one of ordinary skill in the art.” Hedges, 783 F.2d at
`
`1041 (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)). We
`
`considered the above portion from Welles in context, as we must, and
`
`determined it did not support Sonitor’s contention that Welles discloses
`
`transmitting signals from the ultrasonic transmitters at different times. See
`
`Dec. 15–18.
`
`Although Sonitor may not agree with our determination, this is not
`
`sufficient to demonstrate that we misapprehended the teachings of Welles.
`
`
`
`4
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`Sonitor argues that we erred by conflating two different embodiments. Req.
`
`Reh’g 3–7. We disagree. The paragraph preceding column 8, lines 5–9,
`
`teaches “[a]nother method of locating tags or telemetry devices” and
`
`describes a triangulation method that sends signals simultaneously and
`
`measures the differences in the arrival time to calculate the location of a tag.
`
`Ex. 1006, 7:40–65 (emphasis added). Column 8, lines 5–9, relates to
`
`“[o]ther location mechanisms” that may be used with this triangulation
`
`method to improve the accuracy of the tag location calculations. See id. at
`
`7:66–8:16. In addition to the reasons provided in the Decision (Dec. 15–18),
`
`this understanding is further confirmed by the subsequent paragraph, which
`
`states,
`
`In order for the technique just described to provide optimal
`results it is necessary that the locating receiver 260 know the
`timing of the ultrasound pattern transmitted from each room
`transmitter. The accuracy with which this must be known is
`about 1 millisecond in order to calculate the tag position within
`one foot. While synchronization using radio transmissions from
`the locating receiver can be used to create timing assurance,
`several other methods of synchronization such as other wireless
`communication (infrared and other spectral frequencies) and
`wired communications can be used, including those discussed
`below.
`
`Id. at 8:17–27 (emphasis added). Our understanding of “the technique just
`
`described” relates to using the “other location mechanism” with the
`
`triangulation method. Sonitor’s argument that column 8, lines 5–9, should
`
`be understood more generally, therefore, is not persuasive because it is
`
`inconsistent with the teachings of Welles.
`
`Moreover, as noted in the Decision, Sonitor’s declarant, Gary Michael
`
`Gaukler, Ph.D., does not provide additional information sufficient to explain
`
`why the disputed passage would have been understood by a skilled artisan in
`
`
`
`5
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`the manner Sonitor alleges. Dec. 15 n. 5. Such conclusory testimony carries
`
`little, if any, probative and/or evidentiary value. See, e.g., 37 C.F.R. §
`
`42.65(a) (“Expert testimony that does not disclose the underlying facts . . .
`
`on which the opinion is based is entitled to little or no weight.”). Dr.
`
`Gaukler states the same thing that Sonitor argues in the Petition (compare
`
`Pet. 17 with Ex. 1003 ¶¶ 51–52) and both fail to explain why a skilled
`
`artisan would have understood column 8, lines 5–9, of Welles to teach
`
`synchronizing the transmitters such that they transmit signals at different
`
`times; both simply state this as a conclusion. Therefore, Sonitor’s reliance
`
`on Dr. Gaulker’s declaration as proof of its argument on this point is
`
`misplaced. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
`
`1378 (Fed. Cir. 2017) (“we must disregard the testimony of an expert that is
`
`plainly inconsistent with the record”).
`
` In view of the foregoing, we discern no reason to modify the
`
`Decision Denying Institution.
`
`B. Centrak’s arguments to the Federal Circuit on a related
`patent are not properly before us
`
`Sonitor argues that Centrak made admissions in Centrak, Inc. v.
`
`Sonitor Technologies, Inc., Appeal No. 17-2510 (related to parent U.S.
`
`Patent No. 8,604,909), that allegedly “cut to the heart of whether the same
`
`features in the claims of the ’030 patent would have been obvious to a
`
`[person of ordinary skill in the art] in view of the applied prior art.” Req.
`
`Reh’g 10–11 (citing Centrak’s Reply Brief). However, the briefs
`
`submitted in the above appeal, and, in particular, Centrak’s Reply Brief,
`
`are not part of the record in this proceeding.
`
`The regulation governing a rehearing request asserts: “The request
`
`must specifically identify all matters the party believes the Board
`
`
`
`6
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed in a motion, an opposition, or a reply.” Id. The
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012)
`
`(“Practice Guide”) explains 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).
`
`Here, Sonitor has not established “good cause” for us to consider
`
`Centrak’s Reply Brief. Sonitor does not contend Centrak’s Reply Brief
`
`was not available before we issued our Decision in this matter. Sonitor
`
`asserts instead that it “did not earlier present these contrary admissions by
`
`Centrak because the ‘timing’ and ‘synchronization’ features of the claims
`
`were not the focal point of the proceeding until the Board’s institution
`
`decision adopted Centrak’s factually implausible interpretation of Welles.”
`
`Req. Reh’g 12. Sonitor, however, could have sought to supplement the
`
`record and provide additional briefing immediately after receiving Centrak’s
`
`Preliminary Response, but it chose not to do so. See 37 C.F.R. § 42.108(c)
`
`(“A petitioner may seek leave to file a reply to the preliminary response . . . .
`
`Any such request must make a showing of good cause.”). Because Sonitor
`
`fails to provide a reasonable explanation for why it did not present Centrak’s
`
`Reply Brief sooner, and fails to otherwise justify persuasively why we
`
`should consider the Reply Brief arguments made by Centrak in a different
`
`case to address a different issue (i.e., written description and/or enablement),
`
`we do not find “good cause” exists for us to allow it to become part of this
`
`record now. Therefore, Sonitor’s arguments based on Centrak’s Reply
`
`Brief are not entitled to consideration.
`
`
`
`
`
`7
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`IV. CONCLUSION
`
`For the foregoing reasons, Sonitor has not demonstrated that we
`
`abused our discretion by not instituting an inter partes review of the claims
`
`challenged in the ’030 patent.
`
`
`
`Accordingly, it is
`
`V. ORDER
`
`ORDERED that Sonitor’s Request for Rehearing is denied.
`
`
`
`
`
`
`
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`
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`
`
`8
`
`

`

`IPR2018-00740
`Patent 9,622,030 B1
`
`PETITIONER:
`
`Nirav Desai
`Steven W. Peters
`Jason D. Eisenberg
`Peter H. Dykstra
`STERNE, KESSLER, GOLDSTEIN & FOX
`ndesai-PTAB@skgf.com
`speters-PTAB@skgf.com
`jasone-ptab@sternekessler.com
`pdykstra-ptab@sternekessler.co
`PTAB@skgf.com
`
`
`
`
`PATENT OWNER:
`
`Jeffrey I. Kaplan
`KAPLAN BREYER SCHWARTZ, LLP
`jkaplan@kbsiplaw.com
`
`Joseph Bain
`SHUTTS & BOWEN LLP
`jbain@shutts.com
`
`
`
`
`
`9
`
`

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