Trials@uspto.gov
`571-272-7822
`
` Paper 15
`
`Entered: August 16, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVX CORPORATION,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00010
`Patent 9,326,381 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`INTRODUCTION
`AVX Corporation (“Petitioner”) filed a Request for Rehearing (Paper
`13, “Req. Reh’g”) of the Decision on Institution (Paper 11, “Dec.”), which
`instituted a post grant review of claims 1–4, 6–11, and 13–19, but not claims
`5 and 12, of U.S. Patent No. 9,326,381 B2 (Ex. 1001, “the ’381 patent”).
`
`
`571-272-7822
`
` Paper 15
`
`Entered: August 16, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVX CORPORATION,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00010
`Patent 9,326,381 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`INTRODUCTION
`AVX Corporation (“Petitioner”) filed a Request for Rehearing (Paper
`13, “Req. Reh’g”) of the Decision on Institution (Paper 11, “Dec.”), which
`instituted a post grant review of claims 1–4, 6–11, and 13–19, but not claims
`5 and 12, of U.S. Patent No. 9,326,381 B2 (Ex. 1001, “the ’381 patent”).
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`Petitioner argues that the Board overlooked Petitioner’s identification of the
`claimed “dielectric grains” in Jeong. Req. Reh’g 1–6. Petitioner
`additionally argues that we misapprehended and overlooked aspects of
`Petitioner’s argument and evidence regarding the Group 39 capacitors and
`also misapplied the Board’s rules and applicable law on authentication. Id.
`at 6–15. For the reasons that follow, the Request for Rehearing is denied.
`
`STANDARD OF REVIEW
` A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or a
`reply. Id. When reconsidering a decision on institution, we review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`ANALYSIS
`Petitioner contends that we misapprehended or overlooked
`Petitioner’s arguments in connection with the application of Jeong with
`respect to the “dielectric grains” element recited in claim 1. Req. Reh’g 1–6.
`In particular, Petitioner argues that we misapprehended that the “ceramic
`particles” of Jeong that it relied on to meet the claimed “dielectric grains”
`were with respect to the completed manufactured product, as opposed to
`
`2
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`what was used during manufacturing. Id. at 1–3. Contrary to Petitioner’s
`contentions, we expressly addressed both the pre- and post- manufacturing
`descriptions in Jeong, and concluded that Petitioner had not shown
`sufficiently why Jeong’s ceramic particles should be treated as equivalents
`to the claimed “dielectric grains.” Dec. 15–16. As pointed out in the
`Decision on Institution (id. at 15), the Jeong product (ceramic capacitor) is
`made by ceramic particles and additional elements resulting in a dielectric
`layer of the ceramic capacitor.
`Petitioner argues that sintered “ceramic particles” are synonymous
`with “dielectric grains.” Req. Reh’g 3–4. This is a new argument. We
`could not have overlooked or misapprehended an argument that was never
`presented by Petitioner in the first place. A request for rehearing is not an
`opportunity to submit new arguments. See 37 C.F.R. § 42.71(d).1
`Petitioner’s rehearing request in this regard is telling, because it never
`directs us to places in the Petition that we overlooked, but rather takes
`various disjunctive statements from Patent Owner’s Preliminary Response
`and Patent Owner’s evidence to contend that we overlooked Patent Owner’s
`alleged admission of this issue. Req. Reh’g 3–4. The request for rehearing
`is misplaced because the burden to show the claims are unpatentable is on
`Petitioner, not Patent Owner. 37 C.F.R. § 42.20(c). Petitioner must put
`forth its case in its Petition.
`
`
`1 Petitioner argues that it requested leave to respond to Patent Owner’s
`arguments made in Patent Owner’s Preliminary Response in a sur-reply, but
`that we denied that request. Req. Reh’g 3; Paper 9. Petitioner’s implicit due
`process argument is misplaced. It is incumbent upon Petitioner to make its
`case in its Petition. Petitioner cannot rely on a sur-reply to fix what should
`have been in the Petition.
`
`3
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`Petitioner argues that Jeong necessarily discloses an average number
`of dielectric grains in a thickness direction of 2 or greater. Req. Reh’g 4–6.
`The argument is premised on the assumption that Jeong’s “ceramic
`particles” are the same as the claimed “dielectric grains.” We explained in
`our Decision that Petitioner had not shown sufficiently that Jeong’s “ceramic
`particles” are the same as the claimed “dielectric grains.” Dec. 15–17.
`Nothing in Petitioner’s request for rehearing persuades us that we abused our
`discretion in that regard. Accordingly, Petitioner’s arguments regarding
`Jeong’s description of the size and number of ceramic particles is not
`persuasive.
`Petitioner argues that we erred in requiring that the Group 39
`capacitors be proven to be prior art. Req. Reh’g 7–9. Rather, Petitioner
`argues, “it was not necessary to prove that the Group 39 capacitors
`themselves were prior art, only that they faithfully represent products made,
`offered for sale, and/or sold before the priority date.” Id. at 7. Petitioner’s
`argument is misplaced because we considered the Group 39 capacitors and
`representations made by Petitioner with respect to the Group 39 capacitors.
`Indeed, it was Petitioner that asserted in its Petition that “the Group 39
`capacitors that were in on sale, sold, and in public use before the effective
`filing date of the ’381 patent.” Pet. 65. Thus, we did not err in addressing
`Petitioner’s own argument when we explained that Petitioner had failed to
`show that the Group 39 capacitors, purchased four years after the effective
`filing date of the ’381 patent, was prior art. Dec. 28–30.
`Petitioner argues that the Decision fails to identify any reasons to
`doubt the evidence “that the Group 39 capacitors are representative of the
`0612YC105KAT2A product sold in 2012.” Req. Reh’g 8. Petitioner’s
`
`4
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`argument is misplaced because Petitioner failed to meet its burden in the
`first instance to show that the Group 39 capacitors are representative of any
`alleged product sold in 2012. We explained why Petitioner failed in that
`regard to show that it was more likely than not that a product was actually
`sold prior to the effective filing date of the ’381 patent. Dec. 28–30. Thus,
`we did provide reasons and explanation.
`Petitioner argues that we overlooked Petitioner’s evidence showing
`that the Group 39 capacitors are the same as what was sold prior to the
`effective filing date. Req. Reh’g 9–12. Petitioner fails to identify where
`these arguments were previously made but simply makes arguments and
`provides explanations that were not presented in the Petition. Id. We could
`not have overlooked or misapprehended the newly presented arguments and
`explanation, and, therefore, the rehearing request is denied on that basis
`alone. Moreover, Petitioner’s argument that we overlooked evidence
`authenticating the Group 39 capacitors is also not persuasive, because we
`considered the evidence to which we were directed in support of the
`argument made in the Petition. Petitioner cannot now direct us to evidence
`(along with new arguments explaining that evidence and case law) that it did
`not rely on in the Petition explaining the prior art status of the Group 39
`capacitors. See, e.g., Req. Reh’g 10 (citing Ex. 1003 ¶¶ 74, 84). The
`Petition was inadequate in both explanation and evidence to which we were
`directed. A rehearing request is not an opportunity for a petitioner to fix that
`which is deficient in its petition.
`Lastly, Petitioner argues that we implicitly ruled on authenticity in
`rendering our decision regarding the status of the Group 39 capacitors as
`prior art, and, therefore, bypassed the proper procedure for allowing
`
`5
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`Petitioner to file supplemental evidence. Req. Reh’g 12–15. We disagree.
`Our decision did not rule on the authenticity of any evidence submitted by
`Petitioner.2 Rather, we determined that Petitioner failed to show “with
`sufficient evidence that it is more likely than not that the claimed invention
`was sold or offered for sale prior to the effective filing date.” Dec. 30.
`For all of the above reasons, Petitioner’s Request for Rehearing is
`denied.
`
`
`
`2 Rule 901 of the Federal Rules of Evidence states that “[t]o satisfy the
`requirement of authenticating or identifying an item of evidence, the
`proponent of the evidence must produce evidence sufficient to support a
`finding that the item is what the proponent claims it is.” In rendering our
`decision, we did not rule on the authenticity of any item of evidence, such
`that we excluded or did not consider certain evidence. We considered the
`evidence to which we were directed.
`
`6
`
`
`
`PGR2017-00010
`Patent 9,326,381 B2
`
`FOR PETITIONER:
`Michael Houston
`Nicholas M. Lagerwall
`FOLEY & LARDNER LLP
`mhouston@foley.com
`nlagerwall@foley.com
`
`
`
`FOR PATENT OWNER:
`Hosang Lee
`Bernard J. Knight
`Alexander P. Ott
`MCDERMOTT WILL & EMERY
`hlee@mwe.com
`bknight@mwe.com
`aott@mwe.com
`
`
`
`
`
`7
`
`
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