Trials@uspto.gov
`571-272-7822
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`Paper 21
`Date: March 21, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`BMW OF NORTH AMERICA, LLC AND MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`STRAGENT, LLC,
`Patent Owner.
`____________
`
`IPR2021-00419
`Patent 9,705,765 B2
`____________
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and JASON M.
`REPKO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
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`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`
`
`
`
`

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`IPR2021-00419
`Patent 9,705,765 B2
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`I.
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`INTRODUCTION
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`BMW of North America and Mercedes-Benz USA, LLC (collectively
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`“Petitioner”), seek rehearing1 of our Decision Denying Institution (Paper 14,
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`“Dec.” or “Decision”). Paper 15 (“Rehearing Request” or Req. Reh’g). In
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`the Decision, we denied Petitioner’s request to institute an inter partes
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`review (Paper 1, “Pet.” or “Petition”) of claims 1–31 of U.S. Patent No.
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`9,705,765 B2 (Ex. 1001, “the ’765 patent”). Dec. 21. The denial was based
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`on our exercise of discretion under 35 U.S.C. § 325(d). Id. Pursuant to our
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`Order, Petitioner and Patent Owner Stragent, LLC each filed briefing in
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`support of their respective positions on the Rehearing Request. Paper 18
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`(Order), Paper 19 (“Pet. Reh’g Br.”), Paper 20 (“PO Reh’g Br.”). For the
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`reasons that follow, Petitioner’s Request for Rehearing is denied.
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`II.
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`STANDARD OF REVIEW
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). Under 37 C.F.R.
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`§ 42.71(d), a party requesting rehearing of a decision on institution must
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`identify specifically all matters we misapprehended or overlooked, and the
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`place where each matter was previously addressed. Id. When reconsidering
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`a decision on institution, we review the decision for an abuse of discretion.
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`37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a
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`decision is based on an erroneous interpretation of law, if a factual finding is
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`not supported by substantial evidence, or if the decision represents an
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`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v.
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`U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).
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`1 Petitioner sought Precedential Opinion Panel review, but the request for
`Precedential Opinion Panel review was denied. Paper 17.
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`2
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`IPR2021-00419
`Patent 9,705,765 B2
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`A. Background
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`III. ANALYSIS
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`In the Decision, we concluded that the circumstances presented
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`warranted the exercise of our discretion to deny institution based on 35
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`U.S.C. § 325(d). Dec. 21. We reviewed the facts presented in light of the
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`two-part framework presented in Advanced Bionics, LLC v. Med-El
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`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb.
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`13, 2020) (precedential) and the non-exclusive list of factors discussed in
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
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`8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
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`paragraph). Id. at 11.
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`As an initial matter, we note that in its Request for Rehearing
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`Petitioner contends that our Decision is in error because it would allow
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`patent owners to side-step Board decisions because “a patent owner could
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`simply engage in an end-run around the Board’s decisions through
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`continuation practice by (1) identifying references in an IDS, and (2) in any
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`subsequent IPR on the issued patent, presenting arguments that the issued
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`claims are patentably distinct from the previous invalidated claims.” Req.
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`Reh’g 7. That, however, is not improper. If the claims are in fact patentably
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`distinct, then Patent Owner is within its rights to pursue them before the
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`Office. See 37 C.F.R. § 42.73(d)(3)(i) (estopping patent owners from
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`seeking to obtain any patent claim “that is not patentably distinct from a
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`finally refused or canceled claim”).
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`Petitioner further asserts that our Decision is in error because neither
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`prong of the Advanced Bionics framework is met. Req. Reh’g 7–15; Pet.
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`Reh’g Br. 1–7. We review Petitioner’s arguments as applied to each portion
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`of the Advanced Bionics framework.
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`3
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`IPR2021-00419
`Patent 9,705,765 B2
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`B. Part One of the Advanced Bionics Framework
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`Part one of the Advanced Bionics framework directs us to determine
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`whether the same or substantially the same art or arguments previously were
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`presented to the Office. Advanced Bionics, Paper 6 at 10. Petitioner,
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`however, contends that “[u]nder Part One of the Advanced Bionics
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`framework, ‘the art and arguments must have been previously presented to
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`the Office during proceedings pertaining to the challenged patent.” Req.
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`Reh’g 8 (citing Advanced Bionics, Paper 6 at 7–8). Petitioner argues that
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`Patent Owner failed “to present any papers from the previous IPRs –
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`including this Board’s institution decisions–during the prosecution of the
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`’765 patent.” Pet. Reh’g Br. 1. Thus, Petitioner contends that “the inquiry
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`stops there because there is no legally sufficient evidence that ‘the art and
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`arguments,’ i.e., the Board’s findings from the prior IPR institution decisions
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`regarding OSEK, and which form a basis for proper interpretation of the
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`grounds presented in the petition, were ‘previously presented to the Office.’”
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`Id. We are not persuaded by Petitioner’s arguments.
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`We first turn to the words of the statute. Section 325(d) allows for the
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`discretion not to institute a proceeding if the challenge is based on matters
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`previously presented to the Office. The statute states, in relevant part,
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`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.
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`35 U.S.C. § 325(d). Thus, the very words of the statue specify that the
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`exercise of discretion may be based on the presentation of the same (or
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`substantially the same) art or arguments. Petitioner’s quotation from
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`Advanced Bionics is taken out of context and Petitioner bases its argument
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`IPR2021-00419
`Patent 9,705,765 B2
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`on an interpretation that is contrary to the statue and Advanced Bionics itself.
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`As stated in Advanced Bionics,
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`35 U.S.C. § 325(d) identifies two separate issues for the
`Director to consider in exercising discretion to deny institution
`of review: whether the petition presents to the Office the same
`or substantially the same art previously presented to the Office,
`or whether the petition presents to the Office the same or
`substantially the same arguments previously presented to the
`Office.
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`Advanced Bionics, Paper 6 at 7 (emphasis added).
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`In the Decision, we were persuaded that Part One of the Advanced
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`Bionics framework was satisfied “because each of the OSEK references and
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`Staiger were identified on an IDS, which was signed by the Examiner,
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`[indicating that] the six OSEK references and Staiger were considered
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`during the prosecution of the ’765 patent.” Dec. 12–13 (citing Ex. 1002,
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`3478–80 (signed IDS); Ex. 1001, code (56) (references cited on the face of
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`the ’765 patent)). As such, our finding was that “the same or substantially
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`the same art previously was presented to the Office.” Id. at 13. We are not
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`persuaded that that finding was in error.
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`C. Part Two of the Advanced Bionics Framework
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`After finding Part One of the Advanced Bionics framework to be
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`satisfied, we moved to Part Two, which directs us to determine whether the
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`petitioner has demonstrated that the Office erred in a manner material to the
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`patentability of the challenged claims. See Advanced Bionics, Paper 6 at 8.
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`Under this prong we analyzed “the extent to which the asserted art was
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`evaluated previously and the existence of error in regards to that previous
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`evaluation.” Dec. 13. Petitioner contends that we erred as to both points.
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`First, Petitioner asserts that our analysis as to the extent the asserted
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`art was evaluated was in error because “the Examiner could not have
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`IPR2021-00419
`Patent 9,705,765 B2
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`considered the Board’s final decisions invalidating [related patents] because
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`the decisions issued after issuance of the ’765 patent” and “nothing in the
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`’765 patent prosecution history indicates that [the] Examiner materially
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`considered OSEK, Staiger, or any papers from the [related] IPRs, including
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`the petitions and institution decisions.” Req. Reh’g 9. We are not persuaded
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`by these arguments.
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`At the time the application that matured into the ’765 patent was filed,
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`petitions had been filed against two patents related to the ’765 patent. As
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`Patent Owner notes, final written decisions did not issue in any of the related
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`cases until nearly a year after the ’765 patent issued. See PO Reh’g Br. 3
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`n.2. Thus, the Examiner could not have reviewed our final decisions. The
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`parties dispute whether the Examiner received proper notice of the related
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`petitions. See id. at 3 (“Petitioners admit that the Patent Owner made
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`Examiner Anya aware of all IPRs filed against related patents . . . .”); see
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`also Pet. Reh’g Br. 2 (“Patent Owner’s reference to the prior IPRs in the IDS
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`transmittal letter fails to comply with the Patent Office’s rules for disclosure
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`of material information.”). It, however, is undisputed that the Examiner
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`received OSEK and Staiger and signed the Information Disclosure Statement
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`indicating that the references were considered by the Examiner. See Ex.
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`1002, 3478–80 (signed IDS); see also Ex. 1001, code (56) (references cited
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`on the face of the ’765 patent).
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`Petitioner argues that we erred as to the extent of analysis given to
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`OSEK and Staiger because “[t]he Examiner and Patent Owner submitted
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`interview summaries explicitly stating that no prior art was discussed in the
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`interview.” Req. Reh’g 10 (citing Ex. 1002, 3432, 3509). We, however,
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`never stated that prior art was discussed in an interview or relied upon that
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`fact in the Decision. See Dec. Rather, we were persuaded that the course of
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`6
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`IPR2021-00419
`Patent 9,705,765 B2
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`events in the prosecution history indicated that a “greater degree of
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`consideration and evaluation” were given to OSEK and Staiger “than the
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`scenario where a reference is merely listed on an IDS.” Id. at 15. As noted
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`in the Decision, Patent Owner asserted that the claims of the ’765 patent
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`“were specifically amended to overcome . . . OSEK prior art.” Id. at 14
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`(quoting Prelim. Resp. 1). In the Decision, we recounted the prosecution
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`history relevant to our determinations – including the fact that an IDS
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`identifying OSEK and Staiger was filed January 12, 2017, an interview with
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`the Examiner was held February 27, 2017, subsequent to the interview all
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`pending claims were replaced with a new claim set, and the Examiner
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`allowed the amended claims. Id. at 14 (citing Ex. 1002, 29–36, 3432, 3434–
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`54). OSEK and Staiger were presented to the Examiner in the applicant’s
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`January 12 filing and “responsive to” that filing and the interview a month
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`later the Examiner allowed the amended claims of the application. See id.
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`Patent Owner asserted that the claim amendments were designed to
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`overcome OSEK and Petitioner did not provide evidence that would dispute
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`that assertion. See id. at 15 (citing Pet. 10–11).
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`Petitioner’s argument that Patent Owner failed to cite the institution
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`decisions from the related cases in the waning days of the prosecution of the
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`’765 patent does not persuade us that we erred in determining that OSEK
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`and Staiger were considered by the Examiner. See PO Reh’g Br. 5 (noting
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`that the first institution decisions in related cases were issued days after the
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`issuance fee was paid and a few weeks before the patent issued). As noted
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`above, § 325(d) recites that our exercise of discretion may be based on a
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`determination that the art or arguments were previously before the Office.
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`Thus, an exercise of § 325(d) discretion may be based on our analysis of the
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`presentation of the same art to the Office without requiring us to find that the
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`IPR2021-00419
`Patent 9,705,765 B2
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`Examiner also was presented with the same arguments. Our Decision does
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`not speak to whether the Applicant had a duty to provide the Examiner with
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`the preliminary findings as stated in the institution decisions, but only speaks
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`to whether the Examiner considered OSEK and Staiger.
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`Second, Petitioner argued that Examiner error was shown and that we
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`erred (1) in determining that Petitioner should have responded to the
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`Examiner; (2) in not giving sufficient weight to the terminal disclaimer
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`because the Examiner found the claims of the ’765 patent patentably
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`indistinct from claims found unpatentable in the related IPRs; and (3) in
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`giving weight to the “re-trying an access” limitation because the Examiner
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`did not specifically identify that limitation in the Notice of Allowance. Req.
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`Reh’g 11. We are not persuaded by these arguments.
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`As to the first point, Petitioner provides no citation to the Decision
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`when it states that we erred by requiring Petitioner to “point to errors in an
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`analysis that does not exist.” Req. Reh’g 12. We did not premise our
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`Decision on a determination that the Petitioner failed to respond to the
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`Examiner’s findings. In the Decision, we noted that Patent Owner pointed
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`out “what it characterize[d] to be material differences in the claim language
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`between independent claims 12 and 24 of the ’765 patent and the claims
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`considered in the previous IPRs.” Dec. 15 (citing Prelim. Resp. 3–5).
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`Patent Owner contended that those differences rendered “any findings made
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`in the prior IPRs . . . irrelevant in regard to certain limitations of claims 12
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`and 24 and that, in any event, those limitations are not taught by the asserted
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`art.” Id. at 15–16 (citing Prelim. Resp. 28–64). In the Decision, we stated
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`that “the record would not support Petitioner’s implied assertion of error by
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`the Examiner if the evaluation performed by the Examiner were distinct
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`IPR2021-00419
`Patent 9,705,765 B2
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`from the evaluation performed in the prior IPRs.” Id. at 16. Petitioner’s
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`arguments do not persuade us that our approach was in error.
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`As to Petitioner’s arguments regarding the terminal disclaimer, we
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`note that Petitioner did not make any reference to the terminal disclaimer in
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`its Petition. See Pet. We could not have overlooked or misapprehended an
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`argument that was not before us. Further, the Federal Circuit has held that,
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`while the presence of a terminal disclaimer may be a “strong clue” that
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`claims may be patentably indistinct, a terminal disclaimer alone “does not
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`give rise to a presumption that a patent subject to a terminal disclaimer is
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`patentably indistinct from its parent patents.” SimpleAir, Inc. v. Google
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`LLC, 884 F.3d 1160, 1168 (Fed. Cir. 2018). Determining whether the
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`claims of the ’765 patent are patentably indistinct from those of the related
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`patents requires comparing the claims at issue with those of the related
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`patents along with an analysis of other relevant facts. See id. Petitioner
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`failed to provide any such analysis in its Petition while Patent Owner noted
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`allegedly “material differences in the claim language between independent
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`claims 12 and 24 of the ’765 patent and the claims considered in the
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`previous IPRs.” Dec. 15 (citing Prelim. Resp. 3–5). Therefore, the presence
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`of a terminal disclaimer alone is insufficient to persuade us of error.
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`Petitioner further contends that we erred in finding that “the Examiner
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`must have fully considered OSEK—and therefore must not have erred in his
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`evaluation of the prior art—because the challenged claims contain the ‘re-
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`trying an access in connection with the storage resource’ language, which is
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`not the same language recited in the invalidated claims of the [related]
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`patents.” Req. Reh’g 12–13. That, however, was not our finding. As noted
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`above, we analyzed whether the difference in claim language would mean
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`that the analysis performed in the IPRs was different from the analysis
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`IPR2021-00419
`Patent 9,705,765 B2
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`performed by the Examiner on the ’765 patent claims. Dec. 16. As such,
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`the evaluation and analysis performed by the Examiner was the only analysis
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`of OSEK and Staiger as applied to the ’765 claims. Therefore, our Decision
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`reflects a desire to avoid unnecessary duplication of the work done by the
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`Examiner in the absence of a sufficient showing by Petitioner that the
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`Examiner erred. The Board’s analysis of different claim language is
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`insufficient to show Examiner error in this case because Petitioner did not
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`explain in its Petition how we should view the differences in the claim
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`language.
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`Petitioner goes on to argue that the “re-trying” language was not
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`patentably distinct from the language of the related patents because “the
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`Examiner’s reasons for allowance did not specifically quote the ‘re-trying’
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`language.” Req. Reh’g 13. As an initial matter, we note that Petitioner did
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`not raise this argument in its Petition and as such, we could not have
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`misapprehended or overlooked an argument that was not made. See Pet.
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`Further, Petitioner does not direct us to any authority that would limit the
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`scope of patentable material based on the Examiner’s statements in the
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`Notice of Allowance. To the contrary, the Federal Circuit “has recognized
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`that an Examiner’s Statement of Reasons for Allowance ‘will not necessarily
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`limit a claim.’” Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345
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`(Fed. Cir. 2005) (quoting ACCO Brands, Inc. v. Micro Sec. Devices,
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`Inc., 346 F.3d 1075, 1079 (Fed. Cir. 2003)). Here, we are not persuaded that
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`the record as presented would support limiting the patentable distinctions to
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`those noted in the Notice of Allowance. The Applicant specifically
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`responded to the Examiner’s Notice of Allowance by filing a statement “that
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`the claims may be allowable for reasons other than those identified by the
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`Examiner.” Ex. 1002, 3507. In the absence of any evidence establishing
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`IPR2021-00419
`Patent 9,705,765 B2
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`that the patentable subject matter is limited to that recited by the Examiner,
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`we are not persuaded by Petitioner’s argument.
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`For the first time on Rehearing, Petitioner also contends that “the
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`Examiner granted claims that did not contain the ‘re-trying’ language” and
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`thus, the Examiner found “no distinction” between the “re-trying” language
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`and the language of the claims of the related patents. Req. Reh’g 13–14.
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`Here again, this argument was not presented in the Petition, and, therefore,
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`we could not have overlooked or misapprehended an argument that was not
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`made. In addition, this argument is unavailing because the ’765 claims
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`containing language similar to the language of the claims of the related
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`patents were the subject of a statutory disclaimer. Dec. 3–4 (discussing
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`disclaimer of claims 1–11 and 13–23). As such, we treat those claims as if
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`they never existed. See Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)
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`(“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling
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`the claims from the patent and the patent is viewed as though the disclaimed
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`claims had never existed in the patent.”). Petitioner argues that the statutory
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`disclaimer does not matter because it is clear that the Examiner “did not
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`consider the ‘re-trying’ language to be patentable over the prior art.” Req.
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`Reh’g 14. The record, however, does not support Petitioner’s assertion that
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`it is “clear” that the Examiner gave no patentable weight to the re-trying
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`limitations in relation to the prior art, including OSEK. As noted in the
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`Decision, “Petitioner [did] not address the difference in language between
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`‘retrying’ and ‘issuing another storage request.’” Dec. 17 (citing Pet. 66).
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`Thus, for all of the foregoing reasons we are not persuaded of error in our
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`analysis of the application of the Advanced Bionics framework to the
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`arguments and evidence presented.
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`IPR2021-00419
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`IV. CONCLUSION
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`Petitioner has not shown that the Board overlooked or
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`misapprehended any matter.
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`V. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner’s Request for Rehearing is denied.
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`PETITIONER:
`
`Lionel Lavenue
`David Reese
`Cory Bell
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`lionel.lavenue@finnegan.com
`david.reese@finnegan.com
`cory.bell@finnegan.com
`
`James Glass
`Brett Watkins
`QUINN, EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`brettwatkins@quinnemanuel.com
`
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`PATENT OWNER:
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`George Andrew Gordon
`ANDREW GORDON LAW FIRM, PLLC
`andrew@agordonlawfirm.com
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`12
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