Trials@uspto.gov
`571.272.7822
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` Paper No. 15
`
` Entered: January 14, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDGE ENDO, LLC,
`Petitioner,
`
`v.
`
`MICHAEL SCIANAMBLO,
`Patent Owner.
`____________
`
`Case IPR2018-01320
`Patent 8,882,504 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, ROBERT A. POLLOCK, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d)
`
`
`
`
`
`571.272.7822
`
`
`
`
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` Paper No. 15
`
` Entered: January 14, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDGE ENDO, LLC,
`Petitioner,
`
`v.
`
`MICHAEL SCIANAMBLO,
`Patent Owner.
`____________
`
`Case IPR2018-01320
`Patent 8,882,504 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, ROBERT A. POLLOCK, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d)
`
`
`
`
`
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`IPR2018-01320
`Patent 8,882,504 B2
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` INTRODUCTION
`Edge Endo, LLC (“Petitioner”) filed a Petition to institute an inter
`partes review of claims 1–4, 6–11, and 14 of U.S. Patent No. 8,882,504 B2
`(Ex. 1001, the “’504 patent”). Paper 1 (“Pet.”). Michael Scianamblo
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 14
`(“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314. Based on the particular circumstances of this
`case, we exercise our discretion under 35 U.S.C. § 325(d) and do not
`institute inter partes review of the challenged claims.
`
`Related Proceedings
`A.
`Petitioner states that “[t]he '504 patent is asserted in Dentsply Sirona
`Inc., et al. v. Edge Endo, LLC, et al., No. 1:17-CV-01041 (D.N.M.) [the
`Dentsply litigation].” Pet. 1. Petitioner further states that it “has also filed
`petitions for IPR [inter partes review] of related U.S. Patent Nos. 8,932,056
`(Case No. IPR2018-01321) and 9,351,803 (Case No. IPR2018-01322),
`which are asserted in [the Dentsply litigation].” Id. Petitioner also indicates
`that Patent Owner “has a related pending patent application that might be
`affected by this proceeding: U.S. Pat. Appl. Ser. No. 15/607,066.” Id.
`Patent Owner identifies the following related matters:
`a. The Dentsply litigation, involving U.S. Patent No.
`8,882,504, and related U.S. Patent Nos. 8,932,056 and
`9,351,803. U.S. Patent No. 9,801,696, owned by Maillefer
`Instruments Holding S.A.R.L., is also asserted in that litigation
`and is the subject matter of Edge Endo, LLC v. Maillefer
`Instruments Holding S.a.r.l., Case IPR2018-01349 (PTAB);
`b. Edge Endo, LLC v. Michael Scianamblo, Case
`IPR2018-01321 (PTAB) involving related U.S. Patent No.
`8,932,056;
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`c. Edge Endo, LLC v. Michael Scianamblo, Case
`IPR2018-01322 (PTAB) involving related U.S. Patent No.
`9,351,803;
`d. U.S. Provisional Patent Application Serial Number
`60/669,409, filed on April 8, 2005 (Expired);
`e. U.S. Patent Application Serial Number 11/402,207,
`issued as U.S. Patent No. 8,454,361 on June 4, 2013;
`f. U.S. Patent Application Serial Number 14/455,636, filed
`on August 8, 2014 (Abandoned);
`g. U.S. Patent Application Serial Number 14/632,930,
`issued as U.S. Patent No. 9,351,803 on May 31, 2016;
`h. U.S. Patent Application Serial Number 15/166,770,
`issued as U.S. Patent No. 9,662,181 on May 30, 2017; and
`i. U.S. Patent Application Serial Number 15/607,066, filed
`on May 26, 2017 (Pending).
`Paper 12, 2–3.
`
`The ’504 Patent (Ex. 1001)
`B.
`The ’504 patent describes endodontic instruments that “have at least a
`section with a center of mass offset from an axis of rotation so that when the
`instrument is rotated, the section bends away from the axis of rotation.”
`Ex. 1001, Abstract.
`The ’504 patent states that “[e]ndodontic instruments can be used for
`cleaning and enlarging the endodontic cavity space (“ECS”), also known as
`the root canal system of a human tooth.” Id. at 1:17–19. The ’504 patent
`further states that “[t]he present invention provides methods and apparatus
`for providing swaggering endodontic instruments for preparing [an ECS].”
`Id. at 3:52–54. According to the ’504 patent, one aspect of the invention is
`directed to “an endodontic device having a tapered body having a tip end
`and a shank end, wherein the tip end has a diameter that is less than a
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`diameter of the shank end and the body has an axis of rotation extending
`from the tip end to the shank end.” Id. at 3:55–59.
`Prosecution History of the ’504 Patent
`C.
`1. The ’207 Application
`U.S. Application No. 11/402,207 (“’207 Application”) was filed on
`April 10, 2006, and issued as U.S. Patent No. 8,454,361 (“’361 patent”) on
`June 4, 2013. Ex. 1001, 1; Ex. 2005, 1. The ’207 Application is the parent
`of U.S. Application No. 13/794,629 (“’629 Application”), that matured into
`U.S. Patent No. 8,932,056 B2 (“’056 patent”), and U.S. Application No.
`13/804,084 (“’084 Application”), that matured into the ’504 patent. See
`Ex. 1002 (file history of the ’504 patent); Ex. 2007 (file history of the ’056
`patent). The ’207 Application, the ’629 Application, and the ’084
`Application were examined by the same Examiner. Id.; see also Ex. 2005
`(file history of the ’361 patent).
`During prosecution of the ’207 Application, the Examiner issued
`rejections on February 26, 2009, of several claims as anticipated by
`McSpadden,1 that included a discussion of Figures 3A–3D thereof, and other
`claims as obvious based on U.S. Patent No. 5,897,316 issued to Buchanan
`and McSpadden (“Feb. ’09 OA”). Ex. 2005, 307–11. Patent Owner
`responded to the Feb. ’09 OA on June 26, 2009, and specifically addressed
`the anticipation and obviousness rejections based on McSpadden, including
`a discussion of Figures 3A and 3C of McSpadden. Id. at 272–75.
`On February 19, 2009, the Examiner considered certain references
`cited in an Information Disclosure Statement (“IDS”). Id. at 315–17. That
`
`1 McSpadden, US 2004/0023186 A1, published Feb. 5, 2004
`(“McSpadden”). Ex. 1004.
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`IDS indicated consideration of document number “FR 2 798 277 – A1/ WO
`01/19279 A1.”2 Id. at 316.
`In an Office Action dated October 6, 2009, the Examiner rejected
`several claims as obvious over McSpadden, including reference to
`Figures 3A, 3C, and Fig. 4F, and paragraphs 36, 45, 60, 62, 63, and 66 of
`McSpadden (“Oct. ’09 OA”). Id. at 250–51. Patent Owner responded to the
`Oct. ’09 OA on February 8, 2010, again discussing McSpadden, including
`Figures 3A and 3C and paragraphs 36, 37, 44 and 52 thereof. Id. at 236–38.
`On February 19, 2010, the Examiner rejected certain claims as
`anticipated by the Related Rouiller Reference3 and as obvious over the
`Related Rouiller Reference in view of U.S. Patent No. 5,882,198 issued to
`Taylor et al. (“Feb. ’10 OA”). Id. at 218–20. On June 13, 2010, Patent
`Owner responded to the Examiner’s rejection and discussed the Related
`Rouiller Reference. Ex. 2005, 199–200. Patent Owner also specifically
`discussed the Related Rouiller Reference with the Examiner during an
`interview on June 29, 2010. Id. at 182.
`
`
`2 WO 01/19279 A1, published Mar. 22, 2001 (“Badoz”). Ex. 1008. Badoz
`is in French and the IDS indicates that it was accompanied by a translation.
`Ex. 2005, 316. FR 2 798 277 is the French priority application to Badoz.
`See Ex. 1008; Ex. 2010. US 2004/0185414 A1, published Sept. 23, 2004,
`was also noted as considered on the IDS (Ex. 2005, 315), and is a
`continuation-in-part that claims foreign priority to FR 2 798 277. Ex. 2011.
`3 US Patent Publication No. 2004/0131993 A1, published July 8, 2004
`(“Related Rouiller Reference”). Ex. 1018. The Related Rouiller Reference
`is the U.S. Application corresponding to PCT Publication No. WO
`02/065938 A1, published Aug. 29, 2002 (“Rouiller”). Ex. 1007; see also
`Pet. 10 n.7.
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`2. The ’084 Application
`The ’084 Application was filed as a continuation of the
`’207 Application on March 14, 2013. Ex. 1001, 1. On November 4, 2013,
`the Examiner entered an office action that included rejections of pending
`claim 1 as anticipated by the Related McSpadden Reference4 and the
`Related Rouiller Reference, and a nonstatutory double patenting rejection
`over claims of the ’361 patent and the ’629 Application that matured into the
`’056 patent. Ex. 1002, 143–150. On March 3, 2014, Patent Owner
`submitted a reply to the November 4, 2013, Office Action that included new
`claims 30–32, and a discussion of the Related McSpadden Reference and the
`Related Rouiller Reference. Id. at 168, 170–72.
`On April 14, 2014, Patent Owner submitted a Supplemental
`Amendment. Id. at 189–96. The Examiner issued an office action on
`June 12, 2014, that included a further discussion of the Related McSpadden
`Reference (including Figures 3A–3C) and a reassertion of the prior double
`patenting rejections over claims of the ’361 patent and the ’629 Application.
`Id. at 215–18. The Examiner also entered into the record an IDS indicating
`that on June 6, 2014, the Examiner considered documents that included
`McSpadden, Rouiller, Garman,5 FR 2 798 277 and 2004/0185414, Feb. ’09
`OA, Oct. ’09 OA, and Feb. ’10 OA. Id. at 226–28.
`
`
`4 US 2006/0228668 A1, published Oct. 12, 2006 (“Related McSpadden
`Reference”). Ex. 1017. The Related McSpadden Reference is a
`continuation-in-part of, and in substantial part includes the disclosures of,
`McSpadden. Pet. 7 n.5.
`5 Garman, U.S. Patent No. 6,299,445 B1, issued Oct. 9, 2001 (“Garman”).
`Ex. 1005.
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`Patent Owner submitted further amendments on July 3, 2014 (id. at
`230–38), and July 16, 2014 (id. at 247–55), and Terminal Disclaimers of the
`’084 Application over (1) the ’629 Application and (2) the ’361 patent. Id.
`at 256; 258. The ’084 Application issued as the ’504 patent on
`November 11, 2014. Ex. 1001, 1.
`
`Illustrative Claim
`D.
`Petitioner challenges claims 1–4, 6–11, and 14 of the ’504 patent.
`Claim 1 is reproduced below:
`1. An endodontic instrument for preparing an endodontic
`cavity space, the instrument comprising:
`a shank configured for attachment to a motor to rotate the
`endodontic instrument about an axis of rotation; and
`a body extending from the shank by a length, the body having a
`tip end and a shank end and a working surface between the
`shank end and the tip end, the working surface including
`multiple cutting edges, at least a portion of the body with
`the working surface being tapered such that the tip end has
`a diameter that is less than a diameter of the shank end, the
`body comprising a plurality of transverse cross-sections,
`each transverse cross section of the body having a center
`of mass, the body having a center of mass path that is
`defined by the centers of mass of all transverse cross-
`sections of the body, wherein the center of mass path of
`the body rotates around the axis of rotation such that the
`working surface of
`the body swaggers when
`the
`instrument is rotated about the axis of rotation at a speed
`appropriate for preparing the endodontic cavity space,
`wherein the swagger results in, along an entire length of
`the working surface, one or more cutting edges of the
`multiple cutting edges being out of contact with a wall of
`the endodontic cavity space, wherein a number of sides of
`the plurality of transverse cross-sections is constant, and
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`wherein the plurality of transverse cross-sections are
`defined by a polygonal shape that rotates about the axis of
`rotation from the shank end to the tip end.
`Ex. 1001, 39:6–33.
`
`Of the challenged claims, claim 1 is the only independent claim, and
`claims 2–4, 6–11, and 14 depend directly or indirectly from claim 1. Id. at
`39:34–40:17.
`
`The Asserted Grounds of Unpatentability
`E.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 based on the following grounds. Pet. 3–4.
`
`Reference[s]
`McSpadden
`
`Claims challenged
`1–4, 7–9, 14
`
`Basis
`§ 102
`
`McSpadden and Garman
`
`§ 103
`
`Rouiller
`
`Rouiller
`
`Rouiller and Garman
`
`Badoz
`
`Badoz and Garman
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`6, 10, 11
`
`1, 4, 7–9, 14
`
`1, 4, 7–9, 14
`
`2–3, 6, 10, 11
`
`1, 4, 7–9, 14
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`2–3, 6, 10, 11
`
`
`Petitioner also relies on the Declaration of Gary Garman (“Garman
`Declaration”). Ex. 1003.
`Patent Owner relies on the Declaration of John T. McSpadden, DDS.
`Ex. 2001.
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` ANALYSIS
`Person of Ordinary Skill in the Art
`A.
`The parties dispute the level of ordinary skill in the art. Petitioner
`contends that “[a] person of ordinary skill in the art as of April 2005
`(a ‘POSITA’) would have had at least a Bachelor's degree in mechanical
`engineering or a related field, and at least two years of work experience in
`the design and/or operation of endodontic instruments.” Pet. 11 (citing
`Ex. 1003 ¶¶ 54–55).
`
`Patent Owner asserts that Petitioner’s definition is “unnecessarily
`limited and would exclude a person with a different technical background
`but the requisite experience testing, evaluating, or designing rotary
`endodontic instruments, such as a dentist or endodontist.” Prelim. Resp. 3–
`6. According to Patent Owner,
`a POSITA would have (i) had a doctoral degree in dental surgery
`(DDS), at least 2-3 years of experience performing endodontic
`procedures using rotary endodontic instruments, and at least 2-3
`years of experience testing, evaluating, or designing rotary
`endodontic instruments; (ii) had a bachelor’s, master’s, or Ph.D.
`degree in mechanical engineering or a related field, and at least
`2-3 years of practical experience testing, evaluating, or designing
`rotary endodontic instruments; or (iii) had at least 4-5 years of
`practical experience in mechanical design, including at least 2-3
`years of experience testing, evaluating, or designing rotary
`endodontic instruments. Ex. 2001 at ¶34. A POSITA also would
`have had access to persons with expertise in related disciplines,
`such as machining and material sciences. Id. These descriptions
`are approximate, and a higher level of education or skill might
`make up for less experience, and vice-versa. Id.
`Prelim. Resp. 5–6.
`For purposes of this Decision, and based on the current record, we
`need not decide between the parties’ proposed definitions because under
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`either proposal, we reach the same determination to deny institution under
`§ 325(d).6
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`Claim Construction
`B.
`For petitions filed before November 13, 2018, the Board interprets
`claim terms in an unexpired patent according to the broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (affirming applicability of broadest reasonable construction
`standard to inter partes review proceedings). “Under a broadest reasonable
`interpretation, words of the claim must be given their plain meaning, unless
`such meaning is inconsistent with the specification and prosecution history.”
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). Any
`special definitions for claim terms must be set forth with reasonable clarity,
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`Petitioner contends that the term “swagger” should be construed as
`“wave-like movement,” and that the term “swaggers” should be construed as
`“moves in a wave-like manner.” Pet. 12–13 (citing Ex. 1003 ¶¶ 48–49).
`Petitioner also contends that “polygonal shape” should be construed as “a
`shape approximating a polygon with sides that are not necessarily linear.”
`Id. at 13–14 (citing Ex. 1003 ¶ 50).
`Patent Owner disputes Petitioner’s proposed constructions. Prelim.
`Resp. 6–9 (citing Ex. 2001 ¶¶ 43–44). Patent Owner contends that
`“swagger” should be construed as “deflection which occurs during use of the
`
`6 Patent Owner’s alternative (ii) appears to be substantially identical to
`Petitioner’s proposed level of ordinary skill in the art.
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`instrument,” and that “swaggers” should be construed as “deflects during
`use.” Id. at 8. Patent Owner contends that the parties agreed in the Dentsply
`litigation to construe the term “a polygonal shape” to mean “a shape
`approximating a polygon and having linear or non-linear sides,” and urges
`us to adopt that construction “to the extent that the Board determines that
`this term requires construction.” Id. at 8–9.
`We determine, for purposes of this Decision, that we need not
`construe any of the disputed terms because our decision would be the same
`regardless of which construction we adopted. We also determine, for
`purposes of this Decision, that we need not expressly construe any
`undisputed terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to
`be construed and only to the extent necessary to resolve the controversy).
`35 U.S.C. § 325(d)
`C.
`When evaluating whether to exercise our discretion when the same or
`substantially the same prior art or arguments were previously presented to
`the Office under § 325(d), the Board has weighed several non-exclusive
`factors, including, for example: (1) the similarities and material differences
`between the asserted art and the prior art involved during examination;
`(2) the cumulative nature of the asserted art and the prior art evaluated
`during examination; (3) the extent to which the asserted art was evaluated
`during examination, including whether the prior art was the basis for
`rejection; (4) 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; (5) whether Petitioner has pointed
`out sufficiently how the Examiner erred in its evaluation of the asserted prior
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`art; and (6) the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or arguments. Becton,
`Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, slip op.
`at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative) (“Becton”).
`Section 325(d) is phrased in the disjunctive (“or”), not the conjunctive
`(“and”), when it refers to “whether . . . the same or substantially the same
`prior art or arguments previously were presented to the Office.” 35 U.S.C.
`§325(d) (emphasis added). Thus, Section 325(d) does not require previous
`presentation of the same art and arguments. Id.
`After considering the Becton factors, we are persuaded that the
`Petition presents the same or substantially the same prior art or arguments
`that previously were presented to the Office, and exercise our discretion to
`deny institution under § 325(d).
`Petitioner’s Arguments Regarding Section 325(d)
`Petitioner argues that the Petition is “based on critical disclosures in
`[McSpadden, Rouiller, Garman and Badoz], and presents arguments and
`supporting expert testimony not previously considered by the United States
`Patent and Trademark Office (‘PTO’).” Pet. 6–7.
`Petitioner states that, although “neither McSpadden nor Rouiller was
`discussed during prosecution of the application that resulted in the issuance
`of the ’504 patent, . . . references related to McSpadden and Rouiller were
`discussed,” but “key disclosures in these references appear to have been
`overlooked.” Id. at 6. Petitioner also argues that, although “Garman and a
`reference related to Badoz were identified, they were not discussed during
`prosecution.” Id. at 6–7.
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`Petitioner further addresses the Related McSpadden Reference by
`pointing to a non-final rejection (Nov. 4, 2013) in the ’084 Application in
`which certain claims were rejected as anticipated, and one claim was
`rejected as obvious, by the Related McSpadden Reference. Id. at 7.
`Petitioner states that the Examiner referenced Figures 3A and 3C and
`paragraphs 46–49 of the Related McSpadden Reference, but that in response
`“Patent Owner ignored the clear teachings of this reference, including
`Figures 3A and C . . . showing a wave-like offset from the axis of rotation
`along the entire length of working portion.” Id. at 8. Petitioner further
`argues that “Patent Owner’s cumulative amendments . . . do not distinguish
`claim 1 of the ’504 patent over the [R]elated McSpadden [R]eference,” and
`that “in addition to not appreciating the relevance of Figures 3A and 3C, the
`examiner did not cite or refer to key disclosures from the [R]elated
`McSpadden [R]eference that correspond to those of McSpadden upon which
`Petitioner relies in this Petition, e.g., Ex. 1004, ¶¶53, 58-63.” Id. at 9.
`
`Petitioner also argues that “[a] key disclosure in Rouiller was also
`overlooked during prosecution.” Id. In particular, in the non-final action
`referenced above, the Related Rouiller Reference was cited for anticipation
`of certain claims, and for obviousness of another claim in combination with
`two other references. Id. at 9–10. But, according to Petitioner, the
`Examiner “did not cite or refer to a key passage in the [R]elated Rouiller
`[R]eference (paragraph 30), which also appears in Rouiller (Ex. 1007, 7:11-
`17) and upon which Petitioner relies herein.” Id. at 10.
`Accordingly, Petitioner contends that the Board should decline to
`exercise its discretion under § 325(d) because “none of the grounds in this
`Petition raises ‘substantially the same’ arguments previously considered by
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`the PTO. The unpatentability arguments presented in this Petition are based
`on disclosures in the identified references and/or combinations that have
`never been addressed by the PTO.” Id. at 10–11. Petitioner also points to
`“new evidence, including the declaration of Gary Garman, which confirm
`the unpatentability of the challenged claims.” Id. at 10.
`Patent Owner’s Arguments Regarding Section 325(d)
`
`Patent Owner argues that the PTO “considered the same references
`and arguments cited in the Petition, including during the prosecution of the
`’504 patent and related patent applications presenting common issues, and
`ultimately deemed those applications allowable.” Prelim. Resp. 10. Patent
`Owner further argues that “McSpadden, Rouiller, Badoz, or references
`containing substantially identical disclosure thereto, were applied or
`considered by the examiner during prosecution of . . . [the ’361 patent
`. . . [and] the ’056 patent] . . . each of which relates to the ’504 patent via
`priority claims.” Id.
`
`Patent Owner advances its arguments to correspond to the six factors
`identified in Becton.
`1. The Similarities and Material Differences Between the Asserted Art
`and the Prior Art Involved During Examination
`Patent Owner argues that the content of each of McSpadden, Rouiller,
`and Badoz7 was considered by the Examiner during prosecution, that
`“references substantially the same as McSpadden and Rouiller formed the
`
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`7 Patent Owner notes that FR 2,798,277 (Ex. 2010), the parent of Badoz, was
`cited and considered during prosecution of the ’504 patent, and that US
`2004/0185414 (Ex. 2011) is a continuation-in-part of Badoz and was also
`cited and considered during prosecution of the ’504 patent. Prelim. Resp. 12
`n.3.
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`basis of rejections applied by the Examiner,” and that Garman was also
`before the Examiner. Prelim. Resp. 12 & n.3.
`Patent Owner argues that the Related McSpadden Reference and the
`Related Rouiller Reference were applied by the Examiner in anticipation and
`obviousness rejections during prosecution of the ’504 patent, and that “[t]he
`disclosures relied upon by the Examiner in those rejections are also found in
`McSpadden and Rouiller.” Id. at 13. Patent Owner points to Petitioner’s
`acknowledgment that Figures 3A and 3C from McSpadden “correspond to”
`the same Figures 3A and 3C in the Related McSpadden Reference. Id.
`(citing Pet. 8). Patent Owner also points to Petitioner’s reliance on “Figure 4
`and Paragraph 30 from Rouiller, which are also contained in the [Related
`Rouiller Reference].” Id. (citing Ex. 1018, Fig. 4). Thus, according to
`Patent Owner, “the McSpadden and Rouiller references cited in the Petition
`contain no relevant additional content beyond that which was disclosed in
`the related references that formed the basis of the Examiner’s rejections.”
`Id.
`2. The Cumulative Nature of the Asserted Art and the Prior Art
`Evaluated During Examination
`Patent Owner argues that Badoz is the parent to U.S. Published
`Application No. 2004/0185414 (the “Related Badoz Reference,” Ex. 2011),
`“which was considered by the Examiner during prosecution of the
`’504 patent, as well as during prosecution of . . . [the ’361 patent . . . [and]
`the ’056 patent].” Prelim. Resp. 14. According to Patent Owner, the
`Related Badoz Reference was listed in an IDS considered by the Examiner
`and “correctly set aside as merely cumulative.” Id. (citing Ex. 1002, 226).
`
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`3. The Extent to which the Asserted Art was Evaluated During
`Examination
`Patent Owner argues that the Related McSpadden Reference and the
`Related Rouiller Reference were separately applied in anticipation
`rejections, and in obviousness rejections as part of combinations, during
`prosecution of the ’504 patent. Prelim. Resp. 16 (citing Ex. 1002, 143–46,
`148–49).
`4. 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
`Patent Owner argues that there is substantial overlap between
`Petitioner’s arguments and those made with respect to the Related
`McSpadden Reference and the Related Rouiller Reference during
`prosecution. Prelim. Resp. 16–18.
`As to McSpadden, Patent Owner argues that both Petitioner and the
`Examiner (with respect to the Related McSpadden Reference) premised their
`challenges on the embodiment shown in Figures 3A–D. Id. at 16–17 (citing
`Pet. 20–30; Ex. 1002, 144–45, 216). Patent Owner argues that the overlap
`for Rouiller is similar, pointing to Petitioner’s reliance on Figure 4 of
`Rouiller and the Examiner’s citation to Figure 4 of the Related Rouiller
`Reference during prosecution of the ’504 patent. Id. at 17–18.
`5. Whether Petitioner has Pointed Out Sufficiently How the Examiner
`Erred in the Evaluation of the Asserted Prior Art
`Patent Owner argues that Petitioner failed to meet its burden of
`showing sufficiently how the Examiner erred in considering the Related
`McSpadden Reference and the Related Rouiller Reference. Prelim. Resp.
`18–26.
`
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`6. The Extent to which Additional Evidence and Facts Presented in the
`Petition Warrant Reconsideration of the Prior Art or Arguments
`Patent Owner argues that “Petitioner rehashes the same arguments
`that were considered, and ultimately rejected, by the Examiner during
`prosecution of the ’504 patent and related patents.” Prelim. Resp. 26. Patent
`Owner further argues that Petitioner’s expert declaration “merely interprets
`the same references that were already interpreted and properly set aside by
`the Examiner.” Id.
`
`
`
`Analysis
`We make the following findings based on the record discussed above:
`Both the ’056 patent and the ’504 patent are continuations of
`1.
`the ’207 Application, which is the application that matured into the
`’361 patent, and the corresponding applications of the ’056 patent, the
`’504 patent, and the ’361 patent were examined by the same Examiner. We
`find that the respective prosecutions of the related ’361 patent, the ’504
`patent, and the ’056 patent are pertinent for consideration of whether to
`exercise our discretion to deny institution under section 325(d). See
`Microsoft Corp. v. Koninklijke Philips N.V., Case IPR2018–00279, slip op.
`at 9–19 (Paper 11) (PTAB June 8, 2018).
`The applications for both the ’056 patent and the ’504 patent
`2.
`were examined contemporaneously. The ’056 patent was filed on March 11,
`2013, and issued January 13, 2015. See Ex. 2007. The ’504 patent was filed
`on March 14, 2013 (three days after the ’056 patent was filed), and issued
`November 11, 2014 (approximately two months before the issuance of the
`’056 patent). Ex. 1001, 1.
`
`We address the Becton factors set forth above with respect to each of
`Petitioner’s challenges.
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`Challenges Based on McSpadden
`
`Petitioner advances challenges based on McSpadden, including
`anticipation, obviousness, and obviousness over McSpadden in view of
`Garman. Pet. 3, 19–37.
`
`Factors 1–3
`
`McSpadden was applied by the Examiner during prosecution of the
`parent ’027 Application, and those office actions (Feb. ’09 OA and Oct. ’09
`OA) were cited and considered during prosecution of the ’504 patent.
`Ex. 2005, 307–11, 250–51; Ex. 1002, 226. Patent Owner also addressed
`McSpadden in responses to those office actions. Ex. 2005, 272–75, 236–38.
`McSpadden was also cited by the Examiner on February 10, 2014, during
`prosecution of the related ’056 patent, to which Patent Owner responded on
`May 5, 2014, a window which overlaps with same Examiner’s application
`of, and Patent Owner’s response to, the Related McSpadden Reference
`during prosecution of the ’504 patent. See Ex. 2007, 67–101; Ex. 1002,
`143–220. The Related McSpadden Reference was applied during the
`prosecution of the ’504 patent, to which Patent Owner responded, and
`Petitioner acknowledges that the Related McSpadden Reference “in
`substantial part includes the disclosures of . . . McSpadden.” Pet. 7 n.5.
`
`Garman was also cited in an IDS and considered by the Examiner
`during prosecution of the ’504 patent. Ex. 1002, 227. Here, Petitioner relies
`on Garman in combination with McSpadden and only as to certain
`dependent claims. Pet. 3.
`We thus find that the same or substantially the same prior art as
`McSpadden was applied and considered by the Examiner during the
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`prosecution of the ’504 patent, the ’056 patent, and the parent
`’207 Application.
`
`Factor 4
`
`Petitioner relies on the same prior art (McSpadden, ’207 Application)
`or substantially the same prior art (the Related McSpadden Reference,
`’084 Application) that was applied by the Examiner. In addition, we find
`that Petitioner’s reliance on McSpadden is based, in significant part, on
`citations to Figures 3A–3D of McSpadden (Pet. 19–37), and the Examiner’s
`anticipation and obviousness rejections were based on McSpadden (Feb. ’09
`OA, referencing Figs. 3A–3D) and on the Related McSpadden Reference
`(Ex. 1002, 144–46, 216, referencing Figs. 3A–3C).
`
`Factor 5
`
`Petitioner contends that “key disclosures [in the Related McSpadden
`Reference] appear to have been overlooked.” Pet. 6. According to
`Petitioner, the Examiner rejected certain claims as anticipated by the Related
`McSpadden Reference. Id. at 7. Petitioner further contends that, although
`the Examiner referenced Figures 3A and 3C of the Related McSpadden
`Reference, the Examiner did not cite or refer to “key disclosures from the
`[R]elated McSpadden [R]eference that correspond to those of McSpadden
`upon which Petitioner relies in this Petition.” Id. at 9. We, however, do not
`find this to constitute a sufficient explanation of how the Examiner erred.
`Rather, it confirms that the Examiner was aware of and cited the Related
`McSpadden Reference, including with respect to Figures 3A and 3C thereof.
`
`Accordingly, we do not find on this record that Petitioner has shown
`sufficiently how the Examiner erred in evaluating the asserted prior art. See
`Juniper Networks, Inc. v. Mobile Telecomm'ns Techs., LLC, Case IPR2017-
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`00642, slip op. at 13 (Paper 24) (PTAB July 27, 2017) (finding that “the
`Examiner was aware of the contents of [the asserted prior art] in material
`respects applicable to [the challenged claims]” and that the Board was
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