`
`Trials@uspto.gov Paper No. 26
`571.272.7822
`Entered: September 26, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOSO NORTH AMERICA, INC. and MOSO INTERNATIONAL B.V.,
`Petitioners,
`
`v.
`
`DASSO INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`IPR2019-00184
`Patent 8,709,578 B2
`____________
`
`
`
`Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
`Patent Judge, WESLEY B. DERRICK and JEFFREY W. ABRAHAM,
`Administrative Patent Judges.
`
`DERRICK, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
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`IPR2019-00184
`Patent 8,709,578 B2
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`
`I. INTRODUCTION
`Moso North America, Inc. and Moso International B.V. (collectively,
`“Petitioner”) filed a Petition (Paper 18, “Pet.”) to institute an inter partes
`review of claims 1–15 of U.S. Patent No. 8,709,578 B2 (“the ’578 patent”).
`Dasso International, Inc., (“Patent Owner”) filed a Preliminary Response.
`Paper 22 (“Prelim. Resp.”). Having considered the Petition, the Preliminary
`Response, and the evidence of record, and applying the standard set forth in
`35 U.S.C. § 314(a), which requires that Petitioner demonstrates a reasonable
`likelihood that it would prevail with respect to at least one challenged claim,
`we did not institute an inter partes review. Paper 23 (“Decision” or “Dec.”).
`Petitioner filed a Request for Rehearing (Paper 24, “Req.”), requesting
`reconsideration of the Decision denying institution of an inter partes
`review.1 Petitioner contends that we misapprehended or overlooked its
`arguments regarding the construction of the “slots limitation” (id. at 2–6),
`Li’s disclosure of the “slots limitation” (id. at 7–11), and Fujiwara’s
`disclosure of the “slots limitation” (id. at 11–13).
`We have considered Petitioner’s Request for Rehearing, and, for the
`reasons set forth below, Petitioner’s Request is denied.
`
`II. STANDARD OF REVIEW
`When rehearing a decision on institution, we do not review the merits
`of the decision de novo, but instead review the decision for an abuse of
`discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a
`“decision was based on an erroneous conclusion of law or clearly erroneous
`
`
`1 We excused Petitioner’s failure to timely file its Request for Rehearing by
`the original deadline of June 12, 2019, and extended the date for filing to
`June 26, 2019. Paper 25.
`
`2
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`IPR2019-00184
`Patent 8,709,578 B2
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`factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
`(citations omitted). The party requesting rehearing has the burden of
`showing the decision should be modified, and “[t]he request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked.” 37 C.F.R. § 42.71(d).
`
`III. DISCUSSION
`
`Claim Construction
`Petitioner takes issue with our “determin[ation] that the plain meaning
`of the phrase ‘slots penetrating through [a] bamboo strip’ requires an extant
`bamboo strip, namely, one with slots in it.” Req. 2 (citing Dec. 8).
`Petitioner contends that we “overlooked the clear language of the ’578
`Patent, . . . [stating] ‘each bamboo strip may be broken into a plurality of
`smaller bamboo strips connected with each other’” (id. (citing Ex. 1001,
`2:57–59)), and misapprehended or overlooked Petitioner’s arguments in
`support of their proposed construction, particularly in “[m]ixing up the
`words ‘in’ and ‘through’” (id. at 4). Petitioner further contends that we
`ignored portions of the claim phrase (id. at 2–3), as well as “context
`information and the specification of the material(s)” (id. at 3–5 (emphasis
`omitted)), and that we failed to consider evidence from the prosecution
`history as it should properly be understood (id. at 5–6).
`We did not overlook the cited language of the ’578 patent “[stating]
`‘each bamboo strip may be broken into a plurality of smaller bamboo strips
`connected with each other,’” as Petitioner contends, but directly addressed
`the cited language and Petitioner’s contention that its position was
`consistent, before “determin[ing] that the plain meaning of the phrase ‘slots
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`Patent 8,709,578 B2
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`penetrating through [a] bamboo strip’ requires an extant bamboo strip,
`namely, one with slots in it.” Dec. 7–8 (citing Pet. 10, 18; Ex. 1001,
`2:57–58; Ex. 1003 ¶ 47). As we explained, we declined “to further construe
`the term ‘slot’ or the phrase ‘plurality of slots . . . strip,’” because it was not
`necessary to do so in reaching our decision. Id. at 8.
`Petitioner’s further argument that we misapprehended or overlooked
`its claim construction argument because we failed to construe “through” in
`the phrase “slots penetrating through [a] bamboo strip” is misplaced. Req.
`2–4. We fully considered the issues raised before determining both that the
`plain meaning of the phrase, which we determined was its proper meaning,
`“requires an extant bamboo strip . . . with slots in it” and that it was
`unnecessary to determine whether the slots extend completely through the
`bamboo strip. Dec. 8.
`Petitioner’s further arguments grounded on “context information and
`the specification of the material(s)” (Req. 3–5 (emphasis omitted)) and the
`prosecution history, as Petitioner contends it should be understood (id. at 5–
`6), similarly fail to establish any matter misapprehended or overlooked.
`Although Petitioner now sets forth arguments grounded on the context in
`which the term “through” is used, including the materials used, as supporting
`a particular depth of a slot (id. at 3, 5), Petitioner fails to identify where it
`raised any such argument in the Petition (see generally id.). Arguments
`raised for the first time in a Request for Rehearing do not identify any matter
`that we misapprehended or overlooked in denying institution because those
`arguments were not before us. See 37 C.F.R. § 42.71(d). Moreover, as
`discussed in the Decision, we considered the ’578 patent’s disclosure and the
`prosecution history, but determined that it was unnecessary for purposes of
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`the Decision to determine whether the slots extend completely through the
`bamboo strip. Dec. 7–8. Nothing in Petitioner’s Request for Rehearing
`convinces us to the contrary.
`Li’s Disclosure
`As to “Li disclos[ing] bamboo strips formed with a plurality of slots,”
`Petitioner contends that we “misapprehended [its] arguments explaining how
`a person of ordinary skill in the art at the time of the invention . . . would
`have understood Li to disclose the features of claims 1 and 8.” Req. 7.
`Petitioner contends that our Decision was grounded on its “argument [being]
`based on the ‘bare assumption that the rolling process in Li would provide
`the same structure as disclosed in the ’578 patent.’” Id. (citing Dec. 15).
`Petitioner then sets forth particular arguments it contends were
`misapprehended or overlooked. Id. at 7–9. Petitioner further contends that
`our “apparent reliance on the Patent Owner’s translation of Li (Sun)” “led
`[us] to misapprehend the legitimacy of Petitioner’s arguments.” Id. at 9–10.
`Petitioner’s characterization of our Decision disregards our
`consideration of Petitioner’s translation of Li’s disclosure. In the Decision,
`we recognized Petitioner’s argument was grounded on its translation of Li’s
`disclosure, with Mr. Böck’s testimony offered to support what Petitioner
`contended a person of ordinary skill in the art would have understood Li to
`disclose. Dec. 13–16 (citing Exs. 1003 and 1004).
`Petitioner argues, again, that “the presence of gaps in Li’s bamboo
`strip does meet the limitations of ‘slots penetrating through said bamboo
`strip substantially in a direction of thickness defined by said bamboo strip.’”
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`Req. 7 (citing Pet. 17–19; Ex. 1003 ¶¶ 28,2 61). Petitioner again relies on
`“Li describ[ing] that ‘the bamboo strips are [] rolled into cross-linked
`bamboo strand strips’” (id. (emphasis omitted); see also Pet. 19 (citing
`Ex. 1004, 11)), particularly, “cross-linked bamboo strand strips with gaps
`therein” (Req. 8 (citing Pet. 17–20, 24; Ex. 1003 ¶¶ 59–61)). Petitioner
`argues that it is not an assumption that Li’s rolling process forms “slots
`penetrating through said bamboo strip substantially in a direction of
`thickness defined by said bamboo strip,” because “the rolling process
`required by Li forms such slots.” Id. at 7 (citing Pet. 17–19; Ex. 1003 ¶¶ 28,
`61); see also id. (citing Ex. 1003 ¶ 61) (contending that, “[w]hile the exact
`process of ‘rolling’ is not described, Li describes the result of the rolling
`process”). Petitioner also contends, for the first time, that “given Li’s
`disclosure . . . it would not be possible to form the disclosed ‘cross-linked
`bamboo strand strip with gaps therein’ without penetration through the
`bamboo strips from face to bottom (in vertical or the thickness direction as
`defined by the bamboo strip).” Id. at 8 (citing Ex. 1004, 11).
`None of these arguments identifies any matter misapprehended or
`overlooked in our Decision. As we explained, Petitioner failed to explain
`sufficiently both how “cross-linked bamboo strand strips with gaps therein”
`are properly viewed as an extant “bamboo strip” with slots formed therein
`and that the gaps “would be oriented to ‘extend through the thickness of the
`bamboo strips’ so as to meet the limitations of the claim.” Dec. 14–16. We
`further explained how Li’s disclosure of rolling to form its “cross-linked
`
`2 Petitioner cites paragraph 28 of Mr. Böck’s testimony in its Request for
`Rehearing despite having only cited this paragraph, with others, in the
`Petition as support for bamboo having similar, in some cases superior,
`properties to wood and being substituted in traditional wood uses. Pet. 5–6.
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`bamboo strand strips with gaps therein” did not remedy these deficiencies
`because the bamboo product formed by rolling would not necessarily meet
`the claim limitations. Id. at 13–16. We also explained how Mr. Böck’s
`testimony as to the “gaps between the ‘strands’ of Li’s bamboo strand strips
`. . . appears grounded on the bare assumption that the rolling process in Li
`would provide the same structure as disclosed in the ’578 patent.” Dec. 15
`(citing Ex. 1003 ¶¶ 59–62). Although Petitioner disagrees, arguing that Li
`requires a rolling process that forms such slots (Req. 7 (citing Ex. 1003
`¶ 61)), and offers further argument as to “the very way the machine works,
`and its purpose, . . . cutting longitudinal slots” (id. at 8–9), Petitioner fails to
`identify any matter misapprehended or overlooked in our Decision. As to
`the newly-raised arguments, they likewise do not identify any matter that we
`misapprehended or overlooked in denying institution because those
`arguments were not before us. See 37 C.F.R. § 42.71(d).
`Petitioner contends that we were “misled by Patent Owner’s biased
`and misleading translation of Li (Sun)” and, thus, “misapprehend[ed] the
`legitimacy of Petitioner’s arguments.” Req. 10. Petitioner sets forth in a
`table contended discrepancies between its translation of Li—Li
`(Morningside)—and Patent Owner’s translation of Li—Li (Sun)—and
`argues that, under 37 C.F.R. § 42.108(c), we should have resolved these
`discrepancies in the translations in its favor. Id. at 9–10.
`Petitioner fails to identify any basis for either our supposed reliance
`on Patent Owner’s translation it contends was biased and misleading, or for
`any discrepancy in translation not resolved in its favor. See generally Req.
`Looking to the decision, we see only two citations to Li (Sun) (Ex. 2003):
`(i) footnote 9 indicating Patent Owner offered its own translation (Dec. 8
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`n.9); and (ii) a citation signal, “see also Ex. 2003,” following a sentence
`citing Petitioner’s translation—Exhibit 1004—and providing a general
`overview of the prior art (id. at 9). The sentence is reproduced below.
`The disclosed process includes physical processing of a
`bamboo material (cutting or rolling); subjecting the material to
`heat and pressure; soaking the heat- and pressure-treated
`material in an adhesive, and high pressure molding the
`adhesive-soaked material to form a cured product. Id.,
`Abstract; see also Ex. 2003, Abstract.
`Dec. 8–9. We discern nothing in the pertinent portion, “[t]he disclosed
`process includes physical processing of a bamboo material (cutting or
`rolling),” indicating any substantive deviation from Petitioner’s translation
`set forth in the Request. Id.; Req. 10. We likewise discern no deviation
`from Petitioner’s translation elsewhere in our Decision, but rather only that
`we came to different conclusions than those Petitioner sought. See generally
`Dec. Having relied solely on Petitioner’s translation throughout our
`analysis, Petitioner’s contentions, that do not contest that we relied on
`Petitioner’s translation with any particularity, fail to identify any matter
`misapprehended or overlooked.
`Fujiwara’s Disclosure
`Petitioner contends that “[t]he Board misapprehended or overlooked
`[its] arguments regarding Fujiwara’s disclosure of the ‘slots limitation.’”
`Req. 11. Petitioner, however, fails to identify where it raised these
`arguments with any particularity, as it fails to cite to the Petition. Id. at 11–
`13.
`
`First, Petitioner contends that “Fujiwara discloses a method for
`manufacturing lumber from bamboo” that includes “cutting [a thin piece]
`from ‘Mao’ bamboo material” and “pressing the cut thin piece so that the
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`fibers in the longitudinal direction (lengthwise direction) are not severed, but
`the fibers in the crosswise direction (the width direction) are severed
`partially to separate easily in the crosswise direction.” Id. at 11 (citing
`Ex. 1003 ¶83 (quoting Ex. 1005 ¶ 10)). Second, Petitioner contends that
`Fujiwara discloses a “press mold” that partially severs “crosswise-direction
`(width-direction) fibers, but not separating them, where, for the longitudinal
`direction (the lengthwise direction), they are not partially severed,
`preserving the long fibers of the thin bamboo pieces.” Id. (citing Ex. 1003
`¶ 83 (quoting Ex. 1005 ¶ 18)). Petitioner also contends that, “[c]onsistent
`with Petitioner’s arguments raised in [the] petition, it is clear that Fujiwara
`discloses that: (i) fibers of a bamboo strip are not severed in [the]
`longitudinal direction; and (ii) fibers of a bamboo strip are partially severed
`in the crosswise direction,” and that this “discloses the ‘slots limitation’ in
`each of claims 1 and 8.” Id. at 11–12.
`Petitioner then contends that despite what Fujiwara discloses, we
`“agreed with Patent Owner’s argument that ‘what Fujiwara discloses is more
`consistent with a bundle of fibers in that the fibers “in the lengthwise
`direction . . . are dispersed and crossed,” as opposed to an extant ‘bamboo
`strip.’” Id. at 12 (citing Dec. 20; Prelim. Resp. 25). Petitioner contends that
`our “agreement misapprehends the disclosure of Fujiwara, which includes a
`step for pressing a singular bamboo strip, not multiple strips that would be
`required to get a ‘fiber bundle’ having cross-wise fibers.” Id. Petitioner
`further cites to Mr. Böck’s testimony as supporting “that the fibers are
`separated in the cross-wise direction so that they could be pulled apart.” Id.
`(citing Ex. 1003 ¶ 86).
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`Petitioner also contends that “[t]he Board . . . overlooks Petitioners’
`explanation of why Fujiwara discloses the gaps required by [its] proposed
`construction,” particularly that “separating fibers in the width direction
`results in gaps of the bamboo strip,” and that this implies the gaps extend
`through the thickness of the bamboo piece. Id. at 12–13 (citing Dec. 21;
`Ex. 1003 ¶ 84). Petitioner further argues that “Fujiwara is not pointing out
`that there is a follow up step needed.” Id. at 13.
`None of these arguments identifies any matter misapprehended or
`overlooked in our Decision. We addressed each issue raised here in our
`decision to the extent Petitioner raised in the Petition. Petitioner’s argument
`that we misapprehended Fujiwara’s disclosure on the basis that it lacks any
`pressing of “multiple strips that would be required to get a ‘fiber bundle’
`having cross-wise fibers” (id. at 12) is unsupported on this record and fails
`to address our reliance on paragraph 8 of Fujiwara for disclosing that “the
`fibers ‘in the lengthwise direction . . . are dispersed and crossed” (Dec. 20
`(citing Ex. 1005 ¶ 8)).
`Petitioner’s arguments that we overlooked its explanation of how
`Fujiwara discloses gaps, or slots, including Mr. Böck’s testimony that
`“separating fibers in the width direction results in gaps of the bamboo strip”
`(Req. 12–13 (citing Ex. 1003 ¶ 84)), are also unsupported on this record
`because we squarely addressed this testimony and found it insufficiently
`supported (Dec. 20 (citing Ex. 1003 ¶ 84)). As to “overlook[ing]
`Petitioner’s explanation” on page 21 of the Decision (Req. 12), we did not
`overlook any such explanation, but rather we had already addressed it and
`found it lacking as to supporting a disclosure of gaps in Fujiwara, as
`discussed above. Petitioner, thus, identifies nothing that we misapprehended
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`or overlooked in our further discussion that Petitioner failed to explain
`sufficiently how gaps formed in a mass of fibers, as disclosed in Fujiwara,
`“would be oriented to ‘extend through the thickness of [the] bamboo strips’ .
`. . substantially in a direction of thickness defined by [the] bamboo strip’”
`(Dec. 21).
`As to the newly-raised arguments, such as, that “Fujiwara is not
`pointing out that there is a follow up step needed” (Req. 13), they do not
`identify any matter that we misapprehended or overlooked in denying
`institution because those arguments were not before us. See 37 C.F.R.
`§ 42.71(d).
`On this record, Petitioner neither persuades us that we overlooked or
`misapprehended any matter, nor sufficiently shows that denying an inter
`partes review of claims 1–15 was an abuse of discretion.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
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`For PETITIONER:
`Thomas Pasternak
`John Schafer
`AKERMAN LLP
`thomas.pasternak@akerman.com
`jay.schafer@akerman.com
`
`For PATENT OWNER:
`Thomas Kramer
`O’KELLY ERNST & JOYCE, LLC
`tkramer@oelegal.com
`
`Gerard O’Rourke
`O’ROURKE LAW OFFICE, LLC
`gorourke@orourkefirm.com
`
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