Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 10
`Entered: December 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`____________
`
`Case IPR2018-00785
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 10
`Entered: December 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`____________
`
`Case IPR2018-00785
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`
`I. INTRODUCTION
`On March 13, 2018, exocad GmbH and exocad America, Inc.
`(“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes
`review of claims 1–30 of U.S. Patent No. 9,336,336 B2 (“the ’336 patent”).
`On July 8, 2018, 3Shape A/S (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). In our Decision dated October 3,
`2018, (Paper 8, “Decision” or “Dec.”), we declined to institute inter partes
`review because we were not persuaded that “Petitioner has shown that the
`challenged claims should be reviewed in view of the same or substantially
`the same prior art or arguments having been previously presented to the
`Office.” Dec. 21 (citing 35 U.S.C. § 325(d)). On November 2, 2018,
`Petitioner filed a Request for Rehearing (Paper 9, “Request” or “Req.”).
`We have considered Petitioner’s Request for Rehearing, and, for the reasons
`set forth below, Petitioner’s Request is denied.
`II. STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” A request for
`rehearing is not an opportunity merely to disagree with the panel’s
`assessment of the arguments or weighing of the evidence, or to present new
`arguments or evidence. “The burden of showing a decision should be
`modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d).
`Further, “[t]he 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.” Id.
`
`
`2
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`
` III. ANALYSIS
`In determining whether to institute inter partes review, a petition may
`be denied unless we determine that the information presented in the petition
`and any response “shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). Our discretionary determination of
`whether to institute review is guided by 35 U.S.C. § 325(d), which states, in
`relevant part “[i]n determining whether to institute or order a proceeding . . .
`the Director may take into account whether, and reject the petition or request
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.” 35 U.S.C. § 325(d).
`In the Request, Petitioner argues that, “[i]n declining to institute a
`trial, under 35 U.S.C. § 325(d), the Decision (Paper 8) relies on the premise
`that the Examiner already considered Applicants’ argument.” Req. 1, 5–7.
`This is inaccurate. In our Decision, we determined that “the Office already
`considered Malfliet extensively during the prosecution of the challenged
`claims.” Dec. 12. Importantly, we determined that “Petitioner has not
`articulated sufficient reasoning for us to question the Examiner’s previous
`consideration of Malfliet.”1 Id. We accordingly “decline[d] to consider
`grounds based upon Malfliet again.” Id. Our Decision, therefore, was not
`premised solely on whether the Examiner had already considered
`Applicants’ arguments, as Petitioner argues, but rather was based on
`Petitioner’s failure to explain sufficiently on the preliminary record why we
`
`
`1 International Publication Number WO 2008/128700 A1 to Malfliet et al.,
`published October 30, 2008 (Ex. 1006, “Malfliet”)
`3
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`should institute an inter partes review when, as Petitioner did not dispute,
`the Examiner had considered Malfliet during prosecution. Id. at 9–10 (citing
`Ex. 1004, 834–835). Indeed, in the Petition, Petitioner acknowledged that,
`“[d]uring prosecution, the Examiner rejected all claims based on Malfliet.”
`Pet. 3 (citing Ex. 1004 at 825–834).
`Moreover, in reviewing the prosecution history of the ’336 patent, we
`considered Petitioner’s arguments that Patent Owner may have
`misrepresented or mischaracterized Malfliet’s teachings during prosecution.
`Decision 12; see Req. 7–9. The prosecution history does not indicate that
`the Examiner relied on Patent Owner’s potentially inaccurate statements in
`making the findings about the teachings of Malfliet. Ex. 1004 at 825–834.
`Petitioner disagrees with our assessment of the prosecution history
`and asserts that “as a practical matter, even where an Examiner has reviewed
`a reference in its entirety and made general statements about having done so,
`it is unrealistic to assume that the Examiner considered every line of a prior
`art reference with an eye toward every claim limitation.” Req. 6. In this
`regard, Petitioner seeks to have us disregard the explicit statements made by
`the Examiner. We decline to do so, especially because Petitioner has not
`explained persuasively why in the particular circumstances here we must
`ignore or question the Examiner’s express statements that he has reviewed
`and considered Malfliet in its entirety.
`Additionally, Petitioner raises the Becton factors for the first time in
`the Request and then only discusses factors (d) and (e). Req. 4–5 (citing
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`slip op. 17–18 (PTAB Dec. 15, 2017) (Paper 8) (Informative) (“the Becton
`
`4
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`factors”2); cf. Pet. 67. Petitioner contends “the challenge based on
`anticipation by Malfliet . . . should not have been rejected based on § 325(d)
`because at least two of the factors . . . – (d) and (e) – weigh strongly against
`such a rejection.” In contrast, the whole of Petitioner’s arguments regarding
`section 325(d) in the Petition are provided below:
`The Examiner never considered “substantially the same …
`arguments” under § 325(d), because the Examiner did not
`consider the portion of Malfliet addressing use of a 2D face
`image, as discussed above, nor obviousness based on Malfliet
`combined with any other references. See, e.g., Chimei Innolux
`Corp. v. Semiconductor Energy Lab. Co., IPR2013-00068, Paper
`7, at 8 (Apr. 24, 2013) (instituting IPR was not improper where
`the Examiner had considered the two prior art references but did
`not consider substantially the same argument presented in the
`IPR). The Examiner did not consider Kopelman, even though its
`parent application was cited during prosecution, and neither
`Wiedmann nor Sachdeva were disclosed or considered during
`prosecution.
`Pet. 67.
`
`2 The Becton factors are the following:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton at 17–18.
`
`5
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`
`Putting aside Petitioner’s failure to “identify specifically . . . the place
`where each matter was addressed previously” (37 C.F.R. § 42.71(d)), we are
`not persuaded that Petitioner’s present assessment of the Becton factors
`establishes an abuse of discretion, even accepting all of Petitioner’s
`arguments as to factors (d) and (e). Regarding these factors, in addition to
`arguing that “[t]he Examiner likely missed” relevant portions of Malfliet
`because Patent Owner may have misrepresented or mischaracterized
`Malfiet’s teaching during prosecution (Req. 2, 7–9; see infra), Petitioner
`argues Patent Owner’s Preliminary Response “presents a new and different
`argument to attempt to distinguish Malfliet, which now centers mainly
`around the word ‘embed.’” Pet. 9; see Pet. 3, 9–11. Petitioner argues “[t]he
`Examiner never considered the meaning of the word ‘embed,’” “the
`Examiner [was not] asked to do so by the Applicants during the
`prosecution,” and an inter partes review would consider an entirely different
`argument. Id. at 10.
`This is not an argument Petitioner raised in the Petition. Pet. 67.
`Thus we could not have misapprehended or overlooked it. Moreover,
`Petitioner did not “seek leave to file a reply to the preliminary response” to
`thereby compare and contrast the Applicants’ argument during prosecution
`to Patent Owner’s current argument. 37 C.F.R. § 42.108(c). Accordingly,
`although Petitioner may disagree with our exercise of discretion based on
`our review of the prosecution history, the parties’ briefing, and the evidence
`presented, we are not persuaded that our Decision misapprehended or
`overlooked Petitioner’s argument.
`
`6
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`
`Petitioner’s Rehearing Request does not address Becton factors (a),
`(b), and (c). See generally Request. These factors weigh fully toward
`denying the Petition because the identical reference, Malfliet, was involved
`in examination and is the basis of the Petition. Ex. 1004, 825–834; Pet. 12–
`17. This fact is undisputed and Malfliet’s involvement in the prosecution of
`the ’336 patent is extensively discussed in our Decision. Dec. 9–11; Ex.
`1004, 825–834; see Decision 9–11. Factor (f) also weighs in favor of
`denying the Petition because Petitioner introduced no new facts or evidence
`that would warrant reconsideration of the prior art or arguments. See Pet.
`67. Accordingly, the four Becton factors that Petitioner does not address in
`the Request weigh in favor of our exercising our discretion to deny the
`Petition.
`Thus, we are not persuaded that we overlooked or misapprehended
`Petitioner’s arguments presented in the Petition. See Pet. 67.
`
`In its Rehearing Request, Petitioner further relies on our claim
`construction of terms at issue in related Case IPR2018-000788 in which we
`instituted inter partes review for the ’336 patent. Req. 2, 10–11. Petitioner
`asserts that the “Examiner did not have this claim construction or argument
`when the application was allowed.” Id. Petitioner could have raised claim
`construction arguments in the Petition in this case in relation to section
`325(d) but instead made only a general statement that the Examiner did not
`consider the same arguments presented in the Petition. See Pet. 67 (quoted
`infra). We considered Petitioner’s arguments that the Examiner did not have
`the same or substantially the same arguments based on Malfliet during
`prosecution. Dec. 8–12. In consideration of the entire prosecution record
`
`7
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`and the submitted arguments and evidence by the parties, we determined that
`Petitioner did not articulate sufficient reasoning for us to question the
`Examiner’s previous consideration of Malfliet, especially because the
`Examiner explicitly states that he reviewed the entire reference. Id. at 12.
`Even if Petitioner had included claim construction arguments with respect to
`325(d), the fact would remain that the Examiner considered Malfliet in its
`entirety. Thus, Petitioner’s Rehearing Request does not persuade us that we
`overlooked or misapprehended any arguments regarding Malfliet that were
`presented in the Petition.
`Petitioner also presents numerous arguments in support of the premise
`that “[t]he Examiner also did not consider obviousness based on combining
`Malfliet with Kopelman.[3]” Req. 12–14. Petitioner relies on “the same
`reasons” for the challenges based on the combination of Malfliet and
`Wiedmann,4 and the challenges based on Lehman,5 Seeger,6 and
`MacDougald.7 Id. at 14.
`
`
`3 U.S. Patent No. 6,845,175 B2 to Kopelman et al., issued January 18, 2005
`(Ex. 1008, “Kopelman”).
`4 Wiedmann, Oliver, “According to the Laws of Harmony . . . to find the
`right tooth shape with the assistance of the computer,” Digital Dental
`News, 2nd Volume, April 2008 (Ex. 1007, “Wiedmann”).
`5 Lehmann, Thomas M., et al., “Survey: Interpolation Methods in Medical
`Image Processing,” IEEE Transactions on Medical Imaging, Vol. 18,
`No. 11, November 1999 (Ex. 1010, “Lehmann”).
`6 U.S. Patent Publication No. 2002/0075389 A1 to Seeger, published June
`20, 2002, (Ex. 1011, “Seeger”).
`7 U.S. Patent No. 6,568,936 B2 to MacDougald, issued May 27, 2003 (Ex.
`1009, “MacDougald”).
`
`8
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`
`Specifically, Petitioner contends that, during prosecution, both the
`Examiner and the Applicants treated the Examiner’s rejection over Malfliet
`essentially as an anticipation rejection. Id. at 12–13 (citing Ex. 1004, 825–
`26, 854–56). Petitioner argues that “[t]he Examiner cited only Malfliet for
`every limitation and failed to cite any other prior art reference, including
`[Kopelman]” and that the Examiner “did not find that any element was not
`disclosed by Malfliet or explain any particular standard practice in the art
`that was not also disclosed by Malfliet.” Id. at 12. Petitioner contends that
`the Applicants “did not argue that the Examiner was incorrect about any
`particular element being standard practice in the art or that it was incorrect
`for the Examiner to have found that using such known elements for their
`intended purpose was obvious.” Id. (citing Ex. 1004, 854–56). Petitioner
`further contends that the Applicants “did not argue that any element was not
`disclosed in any of the prior art references in the foreign search report,” nor
`“that there was no reason to combine any of the references.” Id. Petitioner
`also argues that the Examiner never considered Petitioner’s argument that
`“substituting a 2D face image for the 3D face model in [Malfliet]” would
`have been obvious. Id. at 13–14.
`These arguments miss the point we made in our Decision. See Dec.
`13–15 (“Petitioner’s challenges based on Malfliet and Kopelman amount to
`challenges based on substantially the same prior art previously presented to
`the Office.”). Even if the Examiner had issued only an anticipation rejection
`over Malfliet, the Examiner nevertheless explicitly stated that he had
`considered obviousness over Malfliet, “standard practices in the art,” and the
`subject matter of Kopelman as we explained. Ex. 1004, 825; see Decision
`
`9
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`13–14. Thus, we disagree with Petitioner that whether the Examiner
`considered the same art “should not be the relevant inquiry.” Req. 12.
`Moreover, Petitioner does not identify—and we do not find—where
`Petitioner had raised these issues in the preliminary record prior to the
`Request. See id. at 11–14; see also Pet. 67 and 37 C.F.R. § 42.71(d).
`Petitioner also does not address the specific determinations in our Decision
`that were based on the preliminary record. See Req. 12–14; Dec. 11–14. In
`our Decision, we explained that “Petitioner does not direct us to differences
`between the content of the reference cited in the foreign search report (i.e.,
`Kopelman’s ‘parent application’) and Kopelman, even though Petitioner
`acknowledges the relationship.” Dec. 14 (citing Pet. 67).
`Accordingly, after considering our original Decision with respect to
`these challenges and the arguments Petitioner now raises regarding them, we
`determine that the Request fails to explain sufficiently why on the
`preliminary record we should have instituted an inter partes review.
`Petitioner’s arguments are being presented for the first time in the Request,
`and we are not persuaded of anything we misapprehended or overlooked in
`denying review regarding the challenges over combinations that include
`Kopelman, Wiedmann, Lehman, Seeger, and MacDougald.
`IV. CONCLUSION
`For the reasons above, we conclude that Petitioner has not met its
`burden of showing an abuse of discretion, or that we misapprehended or
`overlooked any of Petitioner’s arguments, either in our determination that
`the Petition raises the same or substantially the same prior art or arguments
`as those previously presented to the Office or in our exercise of discretion
`
`10
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`not to institute inter partes review of the ’336 patent pursuant to our
`authority arising under 35 U.S.C. §§ 314 and 325(d).
`
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner's Request for Rehearing is denied.
`
`
`
`
`11
`
`
`
`IPR2018-00785
`Patent 9,336,336 B2
`
`PETITIONER:
`FOLEY & LARDNER LLP
`Matthew B. Lowrie
`Christopher J. McKenna
`mlowrie@foley.com
`cmckenna@foley.com
`
`
`PATENT OWNER:
`BUCHANAN INGERSOLL & ROONEY PC
`Todd R. Walters, Esq.
`Roger H. Lee, Esq.
`todd.walters@bipc.com
`roger.lee@bipc.com
`
`
`
`12
`
`
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