Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 11
`Entered: November 20, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EVERSTAR MERCHANDISE CO. LTD.,
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC CO. LTD.,
`Patent Owner.
`__________________
`
`Case PGR2019-00055
`Patent 10,119,664 B2
`__________________
`
`
`
`
`
`Before DEBRA K. STEPHENS, STACEY G. WHITE, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner's Request on Rehearing of Decision Denying Institution
`of Post Grant Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`

`

`PGR2019-00055
`Patent 10,119,664 B2
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`
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`I. INTRODUCTION
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`Everstar Merchandise Co. Ltd. (“Petitioner”) filed a Request for
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`Rehearing under 37 C.F.R. § 42.71(c) and (d). Paper 9 (“Req. Reh’g”). In
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`the Request, Petitioner seeks reconsideration of our Decision (Paper 8,
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`“Dec.”) denying institution of post grant review of claims 1–10 (the
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`“challenged claims”) of U.S. Patent No. 10,119,664 B2 (Ex. 1101, “the ’664
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`patent”). Req. Reh’g 1. For the reasons explained below, we deny the
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`Request for Rehearing.
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`II. DISCUSSION
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`The party challenging a decision in a request for rehearing bears the
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`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
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`(2019). A request for rehearing “must specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed.” Id. “When rehearing a decision on
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`petition, a panel will review the decision for an abuse of discretion.” Id.
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`§ 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
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`(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
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`the Patent Office's discretion.”). “An abuse of discretion is found if the
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`decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
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`erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or
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`(4) involves a record that contains no evidence on which the Board could
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`rationally base its decision.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge
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`Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016).
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`In our Decision, we determined that none of the grounds put forth in
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`the Petition taught “22AWG reinforced intermediate wires including an
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`2
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`PGR2019-00055
`Patent 10,119,664 B2
`
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`internal reinforcing strand, none of the plurality of 22AWG reinforced
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`intermediate wires having an external reinforcing strand or other reinforcing
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`structure” as recited in claim 1. Dec. 13–20, 23–26. Petitioner asserts that
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`we “misapprehended a critical factual issue, improperly resolved factual
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`disputes in favor of the Patent Owner, and reached a decision inconsistent
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`with [our] decision in a related proceeding (PGR2019-00056).” Req Reh’g
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`1. We address each of Petitioner’s arguments in turn.
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`A. Purported Misapprehension of Critical Facts
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`Petitioner assets that “Patent Owner presented an unforeseeable and
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`misleadingly narrow interpretation of the UL 2002 Standard.” Id. at 2.
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`Specifically, Petitioner argues that “the UL 2002 Standards expressly allow
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`22 AWG wire to be used for twisted conductor wires, and for single
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`conductor wires that incorporate a twisted ‘non-current carrying polymeric
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`supporting rope.’” Id. at 3. Further, Petitioner asserts that a person of
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`ordinary skill in the art would have understood a single conductive “wire”
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`twisted with a supporting rope to be equivalent to “a single conductor
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`twisted with a supporting rope, all contained within a ‘wire,’ as internally
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`reinforced conductive wires were long-known and incorporated in the
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`industry.” Id.
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`In the Decision, we agreed with Patent Owner’s argument that
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`Petitioner “fail[ed] to demonstrate that the asserted art teaches ‘22 AWG
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`reinforced intermediate wires’ that include ‘an internal reinforcing strand,
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`none of the plurality of 22 AWG reinforced intermediate wires having an
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`external reinforcing strand or other reinforcing structure’ as recited in claim
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`1.” Dec. 13–14 (citing Prelim. Resp. 23–29). In the Decision, we noted
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`Petitioner’s argument that
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`3
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`PGR2019-00055
`Patent 10,119,664 B2
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`twisted pairs of wires connect the lamp assemblies throughout
`the body of Sylvania’s net lights. [Pet.] 28. Petitioner points
`out that Sylvania’s net lights include a tag that indicates the
`lights were manufactured in accordance with Underwriters
`Laboratory’s standards for decorative string lights. Id. at 30.
`Petitioner directs us to UL 2002 Standards which state that
`“wire employed in a series connected seasonal product shall be
`a minimum No. 22 AWG (0.32 mm2) Type CXTW twisted
`conductor.” Id. (quoting Ex. 1008, 40 §13.2.4). Thus,
`Petitioner contends that Sylvania’s intermediate wires would
`have been 22 AWG. Id. (citing Ex. 1009 ¶ 50). Further,
`Petitioner argues that “[t]o the extent Sylvania’s intermediate
`wires are not reinforced, reinforced wires having the structure
`called for by the claimed invention have been known in the art
`for many years and well-before the time of the alleged
`invention, as indicated by Gao.” Id. at 31 (citing Ex. 1009 ¶ 52,
`Appx. B.). In addition, Petitioner asserts that “the UL standards
`governing decorative lighting products as far back as 2001 have
`contemplated the use of reinforced wiring in decorative lighting
`products.”
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`Dec. 15
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`In analyzing this argument, we found it lacking for several reasons.
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`First, we determined that there was no evidence as to the wire gauge of
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`Sylvania’s net lights. Id. at 16. Petitioner does not assert that this is
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`erroneous. Next, we determined that Gao does not address wire gauge. Id.
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`Petitioner does not assert that this is erroneous. Thus, we determined that
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`Petitioner must be relying on UL 2002 Standards because the other two
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`references in this ground do not address wire gauge. Id.1; see also Pet. 30
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`(citing UL 2002 Standards’ discussion of 22 AWG wires).
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`1 We made similar findings as to all three asserted grounds asserted.
`Specifically, that the only reference before us that made explicit reference to
`wire gauge was the UL 2002 Standards. See Dec. 13–20, 23–26.
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`4
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`PGR2019-00055
`Patent 10,119,664 B2
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`In the Decision, we noted that “UL 2002 Standards describe the use of
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`22 AWG twisted conductors (also known as a twisted pair). The document,
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`however, also states that if a single wire is used it should be a larger 18
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`AWG wire.” Dec. 16 (citing Ex. 1008, 40) (internal citations omitted). We
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`found that Petitioner failed to explain adequately why one of ordinary skill
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`in the art after reviewing this reference would use a single 22 AWG wire.
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`Id. at 16–17. Then we examined whether the disputed limitation would have
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`been meet by using Gao’s wire in a twisted pair. Id. at 17. We were
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`“persuaded that 2002 UL Standard’s disclosure of using a thinner wire in a
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`twisted pair support[ed] Patent Owner’s argument that the twisting of the
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`wires provides an external reinforcement” and thus, we determined that the
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`twisted pair configuration did not meet the claim limitation. Id. at 19.
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`In its Rehearing Request, Petitioner argues that Patent Owner
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`incorrectly asserted that “UL 2002 Standards only allow using a non-current
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`carrying rope that is externally twisted with a wire.” Req. Reh’g 4.
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`Petitioner further asserts that we misapprehended the record because Gao
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`shows a wire with an internal reinforcing support that meets the claim
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`limitation. Id. at 5. That, however, was not the basis for our Decision. The
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`question was not whether the UL Standards would allow single 22 AWG
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`wire, but rather the question was whether the cited references disclose or
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`suggest the use of a 22 AWG wire including an internal reinforcing strand,
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`and without any external reinforcing strand or other reinforcing structure.
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`The use of the recited wire very well may have been allowed by the UL
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`2002 Standards, but Petitioner did not direct us to a teaching demonstrating
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`that one of ordinary skill in the art would have had reason to use a 22 AWG
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`5
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`PGR2019-00055
`Patent 10,119,664 B2
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`gauge wire in the manner described by the claim language. Petitioner has
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`not shown us that we have overlooked any such teaching in the Petition.
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`Further, Petitioner contends that it “recogniz[ed] the risk that [we]
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`could be deceived by the Patent Owner’s erroneous arguments and
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`misleading figure2.” Req. Reh’g 4. Petitioner sought, but was denied,
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`additional briefing to address Patent Owner’s arguments regarding the UL
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`2002 Standards. Id. Petitioner argues that being deprived “of the
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`opportunity to respond to these Patent Owner arguments – reasonably
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`unforeseeable by Petitioner when it filed the Petition – raise[d] fundamental
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`due process concerns.” Id. at 10. In support of its arguments, Petitioner
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`cites a passage from the Trial Practice Guide that indicates that a “petitioner
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`‘may respond to any . . . new claim construction issues raised by the patent
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`owner.’” Id. (quoting Trial Practice Guide Update (July 2019) at § II.B.6.).
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`We disagree. First, we note that neither party sought construction of
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`any terms in this proceeding. See Pet. 8–9; Prelim. Resp. 20. Second, as
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`Petitioner noted in its Request, we held a conference call with the parties and
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`heard Petitioner’s arguments that the Preliminary Response purportedly
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`contained an unexpected interpretation of UL 2002 Standards and an
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`implicit claim construction. See Paper 7. We were not persuaded by
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`Petitioner’s arguments regarding the need for additional briefing to address
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`these points. Id. Petitioner cites Honeywell to support its argument that the
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`denial of authorization to file additional briefing was improper. See Req.
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`Reh’g 10. That case, however, is distinguishable from the circumstances
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`2 The Preliminary Response included drawings that illustrated Patent
`Owner’s interpretation of the UL 2002 Standards. See Prelim. Resp. 5.
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`6
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`PGR2019-00055
`Patent 10,119,664 B2
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`here. There, the Federal Circuit held there to be an abuse of discretion
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`because the Board assumed authority expressly delegated to the Director.
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`Honeywell Int’l. Inc. v. Arkema Inc., 939 F. 3d 1345, 1349 (Fed. Cir. 2019).
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`No such issues are present in this case. After hearing from the parties on a
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`conference call, we determined that we were able to evaluate the party’s
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`arguments without the assistance of further briefing. See Paper 7. Nothing
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`since has transpired to disturb that determination. We evaluated the
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`arguments and evidence from both parties and for reasons described in the
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`Decision and reiterated, in part, in this Decision on Rehearing we were not
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`persuaded by Petitioner’s arguments and evidence.
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`Third, the portion of the Trial Practice Guide cited by Petitioner
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`addresses the circumstance where a patent owner “propose[d] additional
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`terms for construction, with corresponding statements identifying a proposed
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`construction of any particular term or terms and where the intrinsic and/or
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`extrinsic evidence supports those meanings.” Trial Practice Guide at
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`§ II.B.6. Patent Owner proffered no such construction. A more applicable
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`section of the Trial Practice Guide would be the portion that discusses
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`Petitioner’s ability to request a reply to patent owner’s preliminary response.
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`Id. at § II.C. That portion of the Trial Practice Guide allows for replies if
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`patent owner’s testimonial evidence is such that petitioner can make a
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`showing of good cause for additional briefing. No such showing of good
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`cause was made in this proceeding. Finally, the disputed portions of the
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`Preliminary Response included arguments regarding whether the UL 2002
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`Standards taught or disclosed wires without external reinforcement. See
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`Paper 7 (noting Petitioner’s assertion that page thirty-one of the Preliminary
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`Patent 10,119,664 B2
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`Response contained an implicit claim construction); Prelim. Resp. 31
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`(arguing that the proposed combination “does not yield at least the
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`‘reinforced intermediate wire’ which has no external reinforcement”). As
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`was discussed above, this case turned on a different issue other than the one
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`implicated by the purported implicit claim construction. Here, the crucial
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`issue was whether the recited wire gauge was taught or suggested by the
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`cited art. Thus for all of the foregoing reasons, we are not persuaded that it
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`was improper for us to deny Petitioner’s request for additional briefing. As
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`such, we are not persuaded that we misapprehended any critical facts in
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`deciding to deny Petitioner’s request to institute a post-grant review.
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`B. Purported Failure to Resolve Factual Disputes in Favor of
`Petitioner
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`On Rehearing, Petitioner further argues that we “failed to give proper
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`weight to the parties’ respective testimonial evidence.” Reg. Reh’g 6.
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`Specifically, Petitioner asserts that “Petitioner’s expert offered testimony
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`that the UL 2002 Standards do not exclude 22 AWG wires with internal
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`reinforcement, and also that a POSITA would not narrowly interpret the UL
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`2002 Standards to exclude internal reinforcement.” Id. (citing Ex. 1009 ¶
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`53, 56, 122–123, 126). Here again, the question was not whether the
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`reference “excluded” 22 AWG wires with internal reinforcement, but rather
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`whether there was a teaching demonstrating sufficiently that one of ordinary
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`skill in the art would have had reason to use such a wire.
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`Dr. Fantone opined that “[t]he UL standards require that wire
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`employed in a series connected seasonal product be “a minimum [of] 22
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`AWG (0.32 mm2).” Ex. 1009 ¶ 29 (citing Ex. 1008 at 40 §13.2.4). The
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`portion of the UL Standards cited by Dr. Fantone states that a 22 AWG will
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`PGR2019-00055
`Patent 10,119,664 B2
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`be employed in seasonal products and then provides for four exceptions.
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`Ex. 1008 § 13.2.4. Exception No. 2 states that “[w]hen a net lighting string
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`employs single conductor Type CXTW flexible cord. It shall be a
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`minimum No. 18 AWG.” Id. (emphasis added). We found that there was a
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`lack of explanation as to why a person of ordinary skill in the art after
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`reading the UL Standards with its explicit statement that a single wire “shall
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`be a minimum No. 18 AWG” would use a smaller 22 AWG wire. Dec. 16.
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`Petitioner does not direct us to any such explanation. Petitioner instead
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`argues that we did not properly weigh Dr. Fantone’s testimony that shows
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`that “the UL 2002 Standards do not exclude 22 AWG with internal
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`reinforcement.” Reg. Reh’g 6. We, however, examined Petitioner’s
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`allegations in search of a teaching that would lead one of ordinary skill in
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`the art to use a single 22 AWG wire and we did not find such a teaching.
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`Thus, we are not persuaded that we gave improper weight to any proffered
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`testimony.
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`C. Purported Inconsistent Decisions
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`Finally, Petitioner asserts that our Decision in this proceeding is
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`inconsistent with our decision in PGR2019-00056, (“the ’037 Proceeding”)
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`regarding a related patent, U.S. Patent No. 10,222,037. Req. Reh’g 10.
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`“Like in its Petition here, in the ’037 Proceeding, Everstar and its expert, Dr.
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`Stephen D. Fantone, explained that the UL 2002 Standards show common
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`industry knowledge about wire reinforcement, and those Standards do not
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`exclude internal reinforcement.” Id.
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`In the ’037 Proceeding, we determined that there was no evidence in
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`the current record that manufacturers were required to follow the UL
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`Standards. Id. at 11–12 (quoting Ex. 1015, 21–22). Petitioner argues that
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`Patent 10,119,664 B2
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`that finding is inconsistent with our statement in the instant Decision that
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`“Petitioner’s allegations must rely on UL 2002 Standards despite the
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`Petitioner’s description of that reference as optional.” Id. at 12. This,
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`however, takes the statement from the instant Decision out of context. In
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`that portion of the Decision, we, having ascertained that neither Sylvania nor
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`Gao discuss wire gauge, determine that Petitioner must be relying on the UL
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`Standards to teach the recited wire gauge. Dec. 16. This is not inconsistent
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`with our statement in the ’037 Proceeding that there was a lack of evidence
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`as to whether manufacturers must comply with the UL Standards. Here, the
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`only reliance on to the UL Standards had to do with the factual support for
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`Petitioner’s allegations. In particular, it is immaterial to our Decision
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`whether manufacturers must follow the UL Standards. We simply noted that
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`the other cited references contained no evidence as to wire gauge and thus,
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`the only recited reference that could support Petitioner’s allegations
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`regarding wire gauge had to be the UL Standards.
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`Next, Petitioner directs us to claim 16 of the ’037 patent. Claim 16
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`recites “each of the plurality of internally-reinforced intermediate wires
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`comprises a 22 AWG wire.” Ex. 1015, 31. Petitioner asserts that our
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`analysis of the ground asserted against claim 16 in the ’037 Proceeding
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`correctly found that UL 2002 Standards teach the use of the 22 AWG wire.
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`Req. Reh’g 12. We note that the claim language differs in these two cases.
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`In the ’037 patent, claim 1 (from which claim 16 directly depends) recites “a
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`plurality of internally-reinforced intermediate wires” with “one or more
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`reinforcing strands.” See id. at 6. Thus, claim 16 of the ’037 patent does not
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`include language at issue here such as “none of the plurality of the 22 AWG
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`Patent 10,119,664 B2
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`reinforced wires having an external reinforcing strand or other reinforcing
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`structure.” Further, we note that the portion of the decision in the ’037
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`Proceeding relied upon by Petitioner concerns the allegation that claim 16
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`would have been obvious over Kumada, Debladis ’120, and Liu or
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`Lawrence. See id. at 12. That combination3 is not asserted in this
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`proceeding. In the ’037 Proceeding, we noted that Kumada made specific
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`statements regarding the UL Standards. Id. at 44. We were persuaded that
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`one of ordinary skill in the art would view those statements from Kumada as
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`teaching the wire recited in the ’037 patent and we cited the UL Standards as
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`evidence of the way that a person of ordinary skill in the art would have
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`understood those statements from Kumada. Id. Petitioner now argues that
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`we have been inconsistent in interpreting “whether the UL 2020 Standards
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`teach, or exclude, the use of 22 AWG wires.” Req. Reh’g 14. As noted
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`above our Decision is not based on a determination that UL 2002 Standards
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`exclude 22 AWG wires, but rather is based on Petitioner’s failure to direct
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`us to a teaching that would have lead one of ordinary skill in the art to use
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`the 22 AWG wire as recited in the ’664 patent. Further, we are not
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`persuaded that the analysis of different claim language in light of a different
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`combination of art is inconsistent with our Decision in the instant case.
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`3 Petitioner here asserts that claims 1–10 would have been obvious over
`(1) Sylvania, Gao, and optionally UL 2002 Standards; (2) Kumada, Gao,
`Lin, and optionally UL 2002 Standards; and (3) Won, Gao, Kumada, and
`optionally UL 2002 Standards. Dec. 2–3. Thus, Kumada is at issue here,
`but the application is different due to differences in the claim language.
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`11
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`PGR2019-00055
`Patent 10,119,664 B2
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner has not demonstrated that we
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`misapprehended or overlooked any matter or that we abused our discretion
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`in not instituting a post-grant review of claims 1–10 of the ’664 patent.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that Petitioner’s Request for Rehearing is denied.
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`PETITIONER:
`
`Barry Herman
`Preston Heard
`WOMBLE BOND DICKINSON LLP
`Barry.herman@wbd-us.com
`Preston.heard@wbd-us.com
`
`
`PATENT OWNER:
`
`John Fonder
`Doug Christensen
`CHRISTENSEN, FONDER, DARDI & HERBERT, PLLC
`fonder@cfpatlaw.com
`christensen@cfpatlaw.com
`
`Timothy Bianchi
`SCHWEGMAN LUNDBERG & WOESSNER, P.A.
`tbianchi@slwip.com
`
`12
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`