Trials@uspto.gov
`571-272-7822
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` Paper No. 15
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`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 IPR2018-01322
`Patent 9,351,803 B2
`____________
`
`
`Before BART A. GERSTENBLITH, ROBERT A. POLLOCK and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d)
`
`
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`571-272-7822
`
`
`
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`
`
`
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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 IPR2018-01322
`Patent 9,351,803 B2
`____________
`
`
`Before BART A. GERSTENBLITH, ROBERT A. POLLOCK and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a), 325(d)
`
`
`
`
`
`
`
`
`
`
`IPR2018-01322
`Patent 9,351,803 B2
`
`
`INTRODUCTION
`I.
`Edge Endo, LLC (“Petitioner”)1 filed a Petition for an inter partes
`review of claims 1, 3–6, 10–17, 20, and 21 of U.S. Patent No. 9,351,803 B1
`(“the ’803 patent,” Ex. 1001). Paper 1 (“Pet.”). Michael Scianamblo
`(“Patent Owner”) timely filed a Preliminary Response arguing, inter alia,
`that the Board should exercise its discretion to deny the Petition under 35
`U.S.C. § 325(d). Paper 14 (“Prelim. Resp.”), 4–19.
`We have jurisdiction under 35 U.S.C. § 314. For the reasons provided
`below, we deny the Petition for an inter partes review under 35 U.S.C.
`§ 325(d).
`
`A. Related Patents and Proceedings
`According to the parties, the ’803 patent, along with co-owned,
`related patents, U.S. 8,882,504 (“the ’504 patent”) and U.S. 8,932,056 (“the
`’056 patent”), are at issue in Dentsply Sirona Inc. v. Edge Endo, LLC, Case
`No. 1:17-CV-01041 (D.N.M.). Pet. 1; Paper 12, 2–3.2 In addition to the
`present IPR involving the ’803 patent, Petitioner challenges the ’504 and
`’056 patents in IPR2018-01320 and IPR2018-01321, respectively. The three
`patents share substantially the same specification and are related as follows.
`
`
`1 Petitioner further identifies US Endodontics, LLC, Charles Goodis, Bobby
`Bennett, Edge Holdings, LLC and Guidance Endodontics, LLC as real
`parties-in-interest. Pet. 1. Petitioner further states “that Edge Endo, LLC
`and US Endodontics, LLC are owned by Edge Holdings, LLC, which is
`majority owned by Peter Brasseler Holdings, LLC, which is majority owned
`by SG Healthcare Corp., which is owned by Henry Schein, Inc.” Id.
`2 Patent Owner further notes that U.S. Patent No. 9,801,696, owned by
`Maillefer Instruments Holding S.A.R.L., is also asserted in the Dentsply
`litigation and is the subject matter of Edge Endo, LLC v. Maillefer
`Instruments Holding S.a.r.l., Case IPR2018-01349 (PTAB). Id.
`2
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`IPR2018-01322
`Patent 9,351,803 B2
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`
`The ’803 patent issued May 31, 2016, from Application No.
`14/632,920 (“the ’920 application”) filed February 26, 2015, which is a
`continuation of Application No. 14/455,636, filed August 8, 2014, which is a
`continuation of Application No. 13/804,084 (“the ’804 application”), filed
`March 14, 2013, and which issued as the ’504 patent on November 11, 2014.
`The ’804 application is a continuation of Application No. 11/402,207, filed
`April 10, 2006, and which issued as the US Patent No. 8,454,361 (“the ’361
`patent”) on June 4, 2013. The ’803, ’504,’056, and ’361 patents further
`claim the benefit of priority of U.S. Provisional Application No. 60/669,409,
`filed April 8, 2005. Records of the United States Patent and Trademark
`Office also indicate that examination of the ’803, ’504, and ’056 patents was
`conducted by the same Primary Examiner.
`
`B.
`
`The ’803 Patent
`The ’803 patent issued to Michael J. Scianamblo for “Endodontic
`Instruments with Offset Centers of Mass.” Ex. 1001, [54], [71]. In accord
`with the title, the 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.”
`Id. at Abstract. The ’803 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 1:20–21. The ’803
`patent further states that “[t]he present invention provides methods and
`apparatus for providing swaggering endodontic instruments for preparing
`[an ECS].” Id. at 3:56–58. The Specification explains “swagger” in terms
`of
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`3
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`
`a transverse mechanical wave, which can be modified, and is
`comparable to the transverse wave that can be produced along a
`stretched rope or string. If one ties the loose end of a long rope
`to a stationary point, stretches the rope out horizontally, and then
`gives the end being held a back-and-forth transverse motion, i.e.,
`provide an excitation force, F, the result is a wave pulse that
`travels along the length of the rope.
`Id. at 18, 47–56. “In one aspect, 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 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.
`
`C.
`
`Illustrative Claims
`Among the challenged claims, only claim 1 is independent
`(paragraphing added for clarity):
`1. An endodontic instrument for preparing an endodontic cavity
`space, the endodontic instrument comprising:
`a shank configured for attachment to a motor to drive the
`endodontic instrument about a first axis; and
`a body extending from the shank by a length, the body being
`solid and 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 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 and multiple sides,
`the body having a center of mass path defined by the
`centers of mass of the plurality of transverse cross-sections
`of the body, each side of the multiple sides intersecting
`two edges of the multiple edges,
`4
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` wherein at least a portion of the center of mass path
`between the tip end and the shank end spirals around the
`first axis along a length of the first axis, and
`wherein the body is configured such that when the
`endodontic instrument is driven within the endodontic
`cavity space about the first axis, at each transverse section
`of at least a portion of the length of the body, one or more
`edges of the multiple edges are out of contact with a wall
`of the endodontic cavity space.
`Ex. 1001, 38:59–39:17.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 3–4):
`Ground
`Claim(s)
`Basis
`Reference(s)
`1
`1, 3–6, 10–12, 15–17, 21
` § 102 McSpadden3
`2
`10
` § 103 McSpadden
`3
`13, 14, 20
` § 103 McSpadden and Garmin4
`4
`1, 3–6, 10–11, 16, 17, 21
` § 102
`Rouiller5,6
`5
`10
` § 103
`Rouiller
`6
`12–15, 20
` § 103
`Rouiller and Garman
`7
`1, 3–4, 10–12, 16, 17
` § 103
`Badoz7,8
`8
`5–6, 13–15, 20, 21
` § 103
`Badoz and Garmin
`In support of its patentability challenges, Petitioner relies on the
`Declaration of Gary Garman (“Garman Declaration”). Ex. 1003.
`
`
`3 McSpadden, US 2004/0023186 A1, published Feb. 5, 2004
`(“McSpadden”). Ex. 1004.
`4 Garmin, US Pat. No. 6,299,445, issued Oct. 9, 2001. Ex. 1005.
`5 Rouiller, WO 02/065938, published in French on Aug. 29, 2002. Ex. 1006.
`6 Unless otherwise indicated, we refer herein to the certified English-
`language translation of Rouiller, Ex. 1007.
`7 WO 01/19279 A1, published March 22, 2001 (“Badoz”). Ex. 1008.
`8 Unless otherwise indicated, we refer herein to the certified English
`language translation of Badoz, Ex. 1009.
`5
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`II. ANALYSIS
`
`A.
`
`Person of Ordinary Skill in the Art
`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. 9 (citing
`Ex. 1003 ¶¶ 57–58).
`
`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. 2–
`4. 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. A POSITA also would have had access
`to persons with expertise in related disciplines, such as
`machining and material sciences. These descriptions are
`approximate, and a higher level of education or skill might make
`up for less experience, and vice-versa.
`Prelim. Resp. 3.
`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).
`
`B.
`
` Claim Construction
`In this inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2016).9 Under that standard, we presume that a claim term carries its
`“ordinary and customary meaning,” which “is the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007); see also Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
`2016) (“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.”). Any special definition for a claim
`term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Limitations, however, may not be read from the specification into the
`
`
`9 The broadest reasonable interpretation (“BRI”) construction standard
`applies to inter partes reviews filed before November 13, 2018. 77 Fed.
`Reg. 48727 (Aug. 14, 2012) (codified at 37 C.F.R. § 42.100(b)), as amended
`at 81 Fed. Reg. 18766 (Apr. 1, 2016); see also 83 Fed. Reg. 51340 (Oct. 11,
`2018) (changing the standard for interpreting claims in inter partes reviews
`filed on or after November 13, 2018). Because the Petition was filed prior to
`this date, on June 29, 2018, the BRI construction standard applies. Although
`we formally apply the BRI standard here, we discern no reason our
`construction would differ under the claim construction standard used by
`Article III federal courts and the ITC, which follow Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny.
`7
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`claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)), nor may
`the Board “construe claims during [an inter partes review] so broadly that its
`constructions are unreasonable under general claim construction principles”
`(Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015),
`overruled on other grounds by Aqua Products, Inc. v. Matal, 872 F.3d 1290
`(Fed. Cir. 2017)).
`Petitioner contends that the term “asymmetrical,” as it appears in
`claim 12, should be construed as “not rotationally symmetric.” Pet. 10–11
`(citing Ex. 1003 ¶¶ 48–52). Petitioner also contends that “polygonal shape”
`should be construed as “a shape approximating a polygon with sides that are
`not necessarily linear.” Id. at 12 (citing Ex. 1003 ¶ 53).10 Patent Owner
`does not dispute these proposed constructions in its Preliminary Response.
`See Prelim. Resp. 4 n.1 (reserving right to address Petitioner’s proposed
`claim constructions should trial be instituted).
`For the purposes of this Decision denying institution under § 325(d),
`we need not construe the meaning of “asymmetrical” or “polygonal shape.”
`Nor, for purposes of this Decision, do we find need to construe expressly
`any other claim term. 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).
`
`
`10 Petitioner further suggests that the preamble of claim 1 may be limiting
`but provides no supporting reason or analysis. See, e.g., id. at 18, 38, 51.
`8
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`C.
`
`35 U.S.C. § 325(d)
`Patent Owner contends that we should exercise our discretion under
`35 U.S.C § 325(d) to deny institution for the reasons set forth in its
`Preliminary Response. Conversely, Petitioner argues that we should decline
`to exercise that discretion because “none of the grounds in this Petition
`raises ‘substantially the same’ arguments previously considered by the
`PTO.” Pet. 8–9.
`
`Scope of Discretion
`1.
`Institution of an inter partes review is discretionary. See Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining
`that under § 314(a), “the PTO is permitted, but never compelled, to institute
`an IPR proceeding”). Our discretionary determination of whether to institute
`review is guided, in part, by 35 U.S.C. § 325(d), which states, in relevant
`part:
`
`MULTIPLE PROCEEDINGS -- . . . In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, 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).
`Our discretion under § 325(d) involves a balance between several
`competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens, Case
`IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11) (“While
`petitioners may have sound reasons for raising art or arguments similar to
`those previously considered by the Office, the Board weighs petitioners’
`desires to be heard against the interests of patent owners, who seek to avoid
`harassment and enjoy quiet title to their rights.”) (citing H. Rep. No. 112-98,
`
`9
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`IPR2018-01322
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`pt. 1, at 48 (2011)). “On the one hand, there are the interests in conserving
`the resources of the Office and granting patent owners repose on issues and
`prior art that have been considered previously.” Fox Factory, Inc. v. SRAM,
`LLC, Case IPR2016-01876, slip op. 7 (PTAB Apr. 3, 2017) (Paper 8). “On
`the other hand, there are the interests of giving petitioners the opportunity to
`be heard and correcting any errors by the Office in allowing a patent—in the
`case of an inter partes review—over prior art patents and printed
`publications.” Id.
`With respect to our application of §325(d), we first note that, in
`referring to “whether . . . the same or substantially the same prior art or
`arguments previously were presented to the Office,” section 325(d) is
`phrased in the disjunctive (“or”), not the conjunctive (“and”). Accordingly,
`the plain language of the statute does not require previous presentation of the
`same art and arguments. Further, when evaluating whether to exercise
`discretion under § 325(d), the Board may consider several non-exclusive
`factors, including: (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 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.
`
`10
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`Patent 9,351,803 B2
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`Braun Melsungen AG, Case IPR2017-01586, slip op. at 17–18 (PTAB
`Dec. 15, 2017) (Paper 8) (informative) (“Becton”).
`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 35 U.S.C. § 325(d).
`
`Analysis
`2.
`Petitioner argues that the Petition is “based on critical disclosures in
`the identified prior art references, and presents arguments and supporting
`expert testimony not previously considered by the United States Patent and
`Trademark Office (‘PTO’).” Pet. 7. According to Petitioner, “[w]hile
`McSpadden was discussed during prosecution,” “key disclosures” of
`McSpadden “appear to have been overlooked.” Id. at 6–7. In particular,
`Petitioner argues that in rejecting claims as anticipated by McSpadden, or
`obvious over McSpadden in combination with other references, the
`Examiner relied on Figures 3A, 3C, 3D, 4D, 4I, 5A, 5B, and paragraphs 45,
`47, 48, 52 of McSpadden (Ex. 1004), but “did not refer to key disclosures”
`at paragraphs 49, 50–51, 53, 58, 59, 60–61, and 63–64. Pet. 7 (referencing
`id. at 18–28).11 With respect to the remaining asserted references, Petitioner
`argues, “while Garman and references related to Rouiller and Badoz were
`identified” in an Information Disclosure Statement (“IDS”), these references
`
`11 Although pages 18–28 include citations to paragraphs 49, 50–51, 53, 58,
`59, 60–61, and 63–64 of McSpadden, neither the Petition, nor the
`corresponding portion of Dr. Garman’s Declaration (Ex. 1003 ¶¶ 77–90),
`explains why this shows that the Examiner erred, nor why those paragraphs
`are not cumulative to information expressly or implicitly relied on by the
`Examiner.
`
`11
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`were not discussed during prosecution. Id. and n.3. Petitioner also points to
`“new evidence, including the declaration of Petitioner’s expert, Gary
`Garman, which confirm the unpatentability of the challenged claims.” Id. at
`7–8.
`
`Patent Owner argues that “[t]he Petition does not present any new art,
`and Petitioner’s arguments for its lead reference, McSpadden, were
`considered and ultimately rejected by the Examiner.” Prelim. Resp. 1.
`Patent Owner further argues that “[t]he Petition also fails to provide any new
`facts or evidence that would necessitate reconsideration of these references
`and does not provide any explanation for why other references, which were
`also before the Examiner, are not cumulative of those already extensively
`considered.” Id. Patent Owner advances its arguments largely according to
`the six factors identified in Becton, which we consider in turn. See id. at 4–
`14.
`
`The Similarities and Material Differences Between
`a)
`the Asserted Art and the Prior Art Involved During
`Examination
`Patent Owner argues that at least the content of each of McSpadden,
`Rouiller, and Badoz12 was considered by the Examiner during prosecution.
`Prelim. Resp. 6–7.13 McSpadden itself formed the basis of rejections
`
`
`12 Patent Owner indicates that FR 2,798,277 (Ex. 2010) is the parent of
`Badoz and was cited and considered during prosecution of the ’803 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. 6, n.2.
`13 Although we need not address the entirety of Patent Owner’s evidence,
`Patent Owner further contends that Rouiller, Badoz, or their equivalents
`were additionally addressed during the prosecution of various patents
`12
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`applied during prosecution of the ’803 patent, moreover, the “Related
`McSpadden Reference[14] formed the basis of rejections applied during
`prosecution of [the related ’504 patent.]” Id. at 7 (citing Ex. 1002, 159–61,
`164; Ex. 2003, 100–01, 171–73, 176). And although Patent Owner admits
`that the Examiner did not apply Rouiller, per se, during prosecution, Patent
`Owner argues the same disclosure in Exhibit 2001 (“the Related Rouiller
`Reference”) was “extensively considered” by the Examiner during
`prosecution of the ’803 and ’504 patents. Id. at 7 n.5, 11 (citing Ex. 2003,
`170–71, 175–76). Similarly, with respect to Badoz, Patent Owner points out
`that both the parent of Badoz, FR 2,798,277 (Ex. 2010), and a continuation-
`in-part of Badoz, US 2004/0185414 (Ex. 2011) (“the Related Badoz
`Reference”), were cited and considered during prosecution of the ’803
`patent. Id. at 6 n.2 (citing Ex. 1002, 172–74); id. at 8. Patent Owner further
`points out that Garman, relied on by Petitioner to address certain dependent
`claims, was also before the Examiner during the prosecution of the ’803
`patent. Id. at 7; see Ex. 1001, 2.
`In view of the above, we find that Petitioner asserts the same or
`substantially the same prior art as was applied or before the Examiner during
`prosecution of the ’803 patent. This evidence weighs in favor of denying
`institution.
`
`
`“which relate to the ’803 patent via priority claims,” including the ’056 and
`’361 patents. Prelim Resp. 5 (citations omitted).
`14 McSpadden, US 2006/0228668, published Oct. 12, 2006.
`13
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`The Cumulative Nature of the Asserted Art and the Prior
`b)
`Art Evaluated During Examination
`Patent Owner notes the Related Badoz Reference “was considered by
`the Examiner during prosecution of the ’803 patent.” Prelim. Resp. 8–9.
`Considering the Examiner’s treatment of the IDS disclosing the Related
`Badoz Reference, Patent Owner reasonably infers that the Examiner “set [it]
`aside as merely cumulative.” Id. (citing Ex. 1002, 172). Considering the
`relationship between Badoz and the Related Badoz Reference, this evidence
`weighs in favor of denying institution.
`
`The Extent to which the Asserted Art was Evaluated
`c)
`During Examination
`Patent Owner points out that the Examiner applied both McSpadden
`and the Related Rouiller Reference in anticipation and obviousness
`rejections during prosecution of the ’803 and ’504 patents. Prelim. Resp.
`10–11 (citing Ex. 1002, 159–61, 164; Ex. 2003, 100–01, 170–73, 175–76).
`This evidence, in combination with that discussed in Sections II(C)(a)–(b),
`above, weighs heavily in favor of denying institution.
`
`The Extent of the Overlap Between the Arguments Made
`d)
`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 McSpadden and the
`Related Rouiller Reference during prosecution. Prelim. Resp. 12–14. As to
`McSpadden, Patent Owner argues persuasively that both the Petition and the
`Examiner premised their challenges on the embodiment shown in
`Figures 3A–D. Id. at 16–17 (citing Pet. 18–28; Ex. 1002, 159–61, 164).
`Patent Owner further argues that although neither Rouiller reference was
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`asserted during the ’803 patent prosecution, Petitioner’s reliance on Figure 4
`of Rouiller in this IPR is similar to the Examiner’s citation to Figure 4 of the
`Related Rouiller Reference during prosecution of the related ’504 patent. Id.
`at 13 (citing Pet. 38–43; Ex. 2003, 170–71, 175–76). This evidence also
`weighs in favor of denying institution.
`
`e) 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 McSpadden or
`the Related Rouiller Reference. Prelim. Resp. 14–19. With respect to the
`rejections over McSpadden in the ’803 patent, Patent Owner states:
`Petitioner acknowledges
`that
`the Examiner applied
`the
`embodiment shown in Figures 3A and 3D—the very same
`embodiment upon which Petitioner’s challenge is based. Petition
`at 7. The Examiner withdrew this rejection due to her finding
`that this embodiment winds side-to-side, rather than spiraling
`around the axis of rotation. See Ex. 1002 at 184. The Petition
`does not acknowledge—much less attempt to distinguish—the
`Examiner’s factual finding.
`Id. at 14–17 (citations omitted); see also id. at 17–19 (similar argument with
`respect to rejections over the Related McSpadden Reference during
`prosecution of the ’504 patent) (citations omitted).
`As noted above, in the introduction to Section II(C)(2) and
`footnote 10, Petitioner argues that the Examiner overlooked “key
`disclosures” of McSpadden, yet fails to address, let alone explain
`sufficiently, why the allegedly overlooked portions of McSpadden
`demonstrate Examiner error. And with respect to Rouiller, we agree with
`Patent Owner’s assessment that “the Petition does not address the
`Examiner’s factual findings in the overlapping examination of the ’504
`
`15
`
`
`
`IPR2018-01322
`Patent 9,351,803 B2
`
`patent. Nor does it argue that those factual findings can be distinguished
`from the similar claims of the ’803 patent.” Id. at 18–19.
`On the record before us, we do not find 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-
`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
`“shown no reason sufficient to reevaluate [the asserted prior art] with respect
`to any of the challenged claims”). This evidence clearly weighs in favor of
`denying institution.
`
`The Extent to which Additional Evidence and Facts
`f)
`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 ’803 and related patents,” whereas, “Petitioner’s expert
`declaration “merely interprets the same references that were already
`interpreted and properly set aside by the Examiner.” Prelim. Resp. 19.
`Although we acknowledge that Petitioner’s view of McSpadden may
`differ from that of the Examiner, on this record, we do not find that inclusion
`of a declaration reflecting an opinion that the Examiner “overlooked”
`something in the same or substantially the same reference—particularly
`where the same or substantially the same reference was applied or
`considered multiple times—warrants a consideration of the challenges as
`raised by Petitioner. In sum, this element does not weigh in favor of
`instituting inter partes review.
`
`16
`
`
`
`IPR2018-01322
`Patent 9,351,803 B2
`
`
`III. CONCLUSION
`Patent Owner reasonably points out that the same or substantially the
`same art or arguments asserted by Petitioner were expressly applied or
`considered by the Examiner during the prosecution of the ’803 and related
`’504 patent. Neither the Petition, nor Petitioner’s expert, persuade us that
`the Examiner overlooked some salient portion of any of those references
`sufficient to warrant trial. Upon considering the non-exclusive Becton
`factors, we are persuaded that adjudicating a dispute over the same or
`substantially the same references that were applied or considered by the
`Examiner, is an inefficient use of Board or party resources. Accordingly, we
`exercise our discretion under 35 U.S.C. § 325(d) and decline to institute
`inter partes review of the challenged claims.
`
` ORDER
`IV.
`In consideration of the foregoing, it is hereby ORDERED that the
`Petition is denied and no inter partes review is instituted.
`
`
`
`
`
`17
`
`
`
`IPR2018-01322
`Patent 9,351,803 B2
`
`For PETITIONER:
`Jeffrey S. Ginsberg, Lead Counsel
`jginsberg@pbwt.com
`Abhishek Bapna, Back-Up Counsel
`abapna@pbwt.com
`
`
`For PATENT OWNER:
`Joseph A. Hynds, Lead Counsel
`jhynds@rfem.com
`Steven Lieberman, Back-up Counsel
`slieberman@rfem.com
`Rachel M. Echols, Back-up Counsel
`rechols@rfem.com
`Eric D. Blatt, Back-up Counsel
`eblatt@rfem.com
`
`
`
`18
`
`
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