Trials@uspto.gov
`571.272.7822
`
`
`Paper 13
` Entered: December 2, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WILLIAM SYKES,
`Petitioner,
`
`v.
`
`SMART VENT PRODUCTS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-01061
`Patent 9,909,302 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, GEORGE R. HOSKINS, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`571.272.7822
`
`
`Paper 13
` Entered: December 2, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WILLIAM SYKES,
`Petitioner,
`
`v.
`
`SMART VENT PRODUCTS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-01061
`Patent 9,909,302 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, GEORGE R. HOSKINS, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2019-01061
`Patent 9,909,302 B2
`
`I. INTRODUCTION
`Petitioner filed a “Request for Reconsideration” of the Decision
`Denying Institution of Inter Partes Review of claims 1, 3, 7, 11, 12, and 18
`of U.S. Patent No. 9,909,302 B2 (Ex. 1001, “’302 Patent”)
`(Paper 11,“Decision” or “Dec.”). We treat Petitioner’s “Request for
`Reconsideration” as a request for rehearing under 37 C.F.R. § 42.71(d). See
`Paper 12 (“Request” or “Req. Reh’g”). Specifically, Petitioner requests
`rehearing of the portion of the Decision denying institution of review of
`claims 7 and 11 because, according to Petitioner, the Board overlooked the
`incorporation by reference of materials related to the limitations requiring
`0.5–5.0 pounds per square inch of pressure for uncoupling the panel from
`the frame. See Req. Reh’g 2. For the reasons explained below, Petitioner’s
`Request for Rehearing is denied.
`Brief Overview of Petition and Decision
`In the Petition, Petitioner cited to column 4, lines 28–45 and Figure 1
`of Shook, and paragraph 37 and Figure 1 of Malitsky to address “one or
`more connectors configured to . . . uncouple the metal panel from the frame
`when 0.5–5.0 pounds per square inch of pressure is applied to a portion of
`the metal panel on a first side of the metal panel” and “a second side of the
`metal panel,” as recited in independent claim 7. See Pet. 13–14 (citing Ex.
`1002, 4:28–45, Fig. 1; Ex. 1003 ¶ 37, Fig. 1). In the Decision, we found
`Petitioner’s evidence insufficient to demonstrate that Shook discloses, and
`the combination of Shook and Malitsky teach or suggest the aforementioned
`limitations of claim 7 because Shook is silent regarding the “amount of
`pressure applied to uncouple the panel from the frame.” See Dec. 18–19.
`We also found that Petitioner did not direct us to evidence explaining how
`
`
`
`2
`
`
`
`IPR2019-01061
`Patent 9,909,302 B2
`the cited portions of Shook account for uncoupling the panel from the frame
`by applying 0.5–5.0 pounds per square inch of pressure on either side of the
`panel. See id. at 19. Finally, we found Petitioner’s assertion of obviousness
`did not address sufficiently how one with ordinary skill in the art at the time
`of the invention would have modified the teachings of Shook in view of
`Malitsky such that the combination of references would teach or suggest the
`aforementioned limitations of claim 7. See id.
`Standard of Review
`The applicable standard for a request for rehearing is set forth in
`37 C.F.R. § 42.71(d), which provides that a request for rehearing “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.” The party challenging a decision bears
`the burden of showing the decision should be modified. See id. “When
`rehearing a decision on petition, a panel will review the decision for an
`abuse of discretion.” Id. § 42.71(c).
`Analysis
`In its Request, Petitioner asserts that the range limitation of 0.5–5.0
`pounds per square inch for uncoupling the panel from the frame, as required
`by independent claim 7, is incorporated by reference in the ’302 Patent,
`Shook, and Malitsky, and is well known to those skilled in the art. See Req.
`Reh’g 3. According to Petitioner, flood vents are designed to be compliant
`with government regulations promulgated by the Federal Emergency
`Management Agency (FEMA). In that regard, Petitioner contends the
`’302 Patent cites, under the heading “OTHER DOCUMENTS,” to the
`following FEMA documents: FEMA, Openings in Foundation Walls and
`
`
`
`3
`
`
`
`IPR2019-01061
`Patent 9,909,302 B2
`Walls of Enclosures, Technical Bulletin, Aug. 1, 2008, and FEMA, Non-
`Residential Floodproofing, Technical Bulletin, Apr. 3, 1993. See id. at 4.
`Petitioner asserts that Shook “teaches that FEMA requirements provide the
`impetus for the inventive steps taken in designing flood vents.” Id.
`at 4–5 (quoting Ex. 1002, 1:13–24). Petitioner contends that Malitsky
`acknowledges the same state of the art as the ’302 Patent and Shook. See id.
`at 5 (quoting Ex. 1003 ¶¶ 3–4). Petitioner further asserts that Malitsky’s
`invention was designed to comply with the following standards: FEMA/FIA
`Technical Bulletin TB 1-93 “Engineered Opening Requirements;” American
`Society of Construction Engineers (ASCE) 24-05 “Flood Resistant Design
`and Construction;” and FEMA National Flood Insurance Program
`Regulations 44 CFR 60.3. See id. (quoting Ex. 1003 ¶¶ 16–19). Petitioner
`concludes that the state of the art for flood vents and flood vent designs is
`disclosed and incorporated by reference in the ’302 Patent, Shook, and
`Malitsky. See id. at 6
`Petitioner contends, the “state of the art, well known by those skilled
`in the art, is those guidelines and restrictions promulgated by FEMA in its
`publications related to flood mitigation and the use of flood vents.” Req.
`Reh’g 6. Petitioner urges that the Board may take judicial notice of those
`FEMA guidelines and regulations as public and allowable according to
`Federal Rules of Evidence Rule 201. See id. (citing 37 C.F.R. § 42.62)
`According to Petitioner, “[t]he public records provided by FEMA related to
`the design and state of the art related to flood vents is therefore properly
`before the Board.” Id.
`On the foregoing premises, Petitioner directs attention to following
`new evidence: (1) FEMA calculations related to hydrostatic loads of
`
`
`
`4
`
`
`
`IPR2019-01061
`Patent 9,909,302 B2
`standing water and for floodwater openings, which, according to Petitioner,
`can be found at https://www.fema.gov/media-library-data/20130726-1518-
`20490-6246/05_fema_p550_ch3.pdf; and (2) FEMA requirements directed
`to 1 foot of flood water, which, according to Petitioner, can be found at
`https://www.fema.gov/medialibrary- daa/20130726-1502-20490-
`9949/fema_tb_1__1_.pdf. See Req. Reh’g 6–8. From the FEMA
`calculations, Petitioner asserts “the pressure, at one foot of water depth, on a
`vertical surface is 0.434 pounds per square inch.” Id. at 7. Petitioner argues,
`for the first time, “[i]t would have been obvious, therefore, to one skilled in
`the art to provide a flood vent that opens (or releases) upon a pressure
`differential between the interior and exterior of a crawl space that meets or
`exceeds the pressure differential at or exceeding the minimum requirements
`defined by FEMA.” Id. Based on the FEMA requirements directed to 1 foot
`of flood water, Petitioner asserts that the FEMA requirements dictate that
`flood vents must maintain a maximum of one foot of differential in height
`between the water depth in an enclosed crawl space and the exterior
`structure. See id. at 8. Petitioner argues for the first time that it was well
`understood by those skilled in the field of flood vents that a flood vent “must
`be able to equilibrate pressure on either side of a flood vent once water
`pressure reached a certain value.” See id. Petitioner also asserts that under
`FEMA guidelines, a flood vent “must be able to allow the flow of water to
`limit the water height differential on either side of the flood vent” to one
`foot. See id.
`
`We are not persuaded that we overlooked any incorporation by
`reference of any FEMA materials identified by Petitioner. Petitioner does
`not identify where in the Petition the alleged incorporation by reference of
`
`
`
`5
`
`
`
`IPR2019-01061
`Patent 9,909,302 B2
`any FEMA materials was addressed. See 37 C.F.R. § 42.71(d); Req.
`Reh’g 1–9. We cannot overlook arguments and evidence not made on the
`record before us. Instead, Petitioner alleges for the first time that certain
`citations and brief discussions of FEMA publications and regulations in the
`’302 Patent, Shook, and Malitsky (see Req. Reh’g 3–6) are incorporated by
`reference, and, based upon attorney arguments regarding the state of the art,
`urges the Board to take judicial notice of public FEMA regulations and
`guidelines related to flood mitigation and the use of flood vents (see id. at 6).
`And based on the bare argument that these public FEMA regulations are
`properly before the Board, Petitioner presents new arguments and evidence
`to address the identified deficiencies of the Petition (see id. at 6–9). We
`need not address the merits of the premises of Petitioner’s arguments
`because a request for rehearing is not an opportunity to present new
`arguments and evidence.
`For these reasons, we are not persuaded that, in rendering our
`Decision, we overlooked any arguments and evidence presented in the
`Petition.
`
`III. DECISION ON REHEARING
`Patent Owner’s request for rehearing is denied.
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2019-01061
`Patent 9,909,302 B2
`PETITIONER:
`
`
`Duncan G. Byers
`Scott L. Reichle
`PATTEN, WORNOM, HATTEN & DIAMONSTEIN
`dbyers@pwhd.com
`sreichle@pwhd.com
`
`
`PATENT OWNER:
`
`Mark D. Passler
`Brice Dumais
`AKERMAN LLP
`mark.passler@akerman.com
`brice.dumais@akerman.com
`
`
`
`7
`
`
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