Trials@uspto.gov
`571.272.7822
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` Paper No. 13
`
` Date: September 4, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHIELDMARK, INC.
`Petitioner,
`v.
`CLIFFORD A. LOWE
`Patent Owner.
`____________
`
`PGR2019-00058
`Patent 10,214,664 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Petitioner’s Motion to Accept Late-filing of Request for Rehearing
`37 C.F.R. § 42.5(c)
`Denying Petitioner’s Request on Rehearing of Institution Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`

`

`PGR2019-00058
`Patent 10,214,664 B2
`
`
`INTRODUCTION
`
`ShieldMark, Inc. (“Petitioner”) filed a Petition for post-grant review
`of claims 1–6, 10–16, and 20–22 of U.S. Patent No. 10,214,664 B2
`(Ex. 1001, “the ’664 patent”). Paper 2 (“Pet.”). Clifford A. Lowe (“Patent
`Owner”) filed a Preliminary Response to the Petition. Paper 7. Upon
`consideration of the Petition and the Preliminary Response, we determined
`that Petitioner had failed to demonstrate that it is more likely than not that
`the ʼ664 patent is eligible for post-grant review, and denied institution of
`trial. Paper 8 (“Dec.” or “Decision”).
`On April 8, 2020, the Board’s electronic filing system, PTABE2E,
`sent an email to the parties stating that a Request for Rehearing had been
`filed in this proceeding. The email also indicated, in all capital letters,
`“THERE WERE NO DOCUMENTS SUBMITTED WITH THIS
`REQUEST.” Paper 9, 2; Ex. 3001.
`On May 13, 2020, the Board sent an email to the parties requesting
`clarification as to whether Petitioner intended to file a request for rehearing.
`The parties requested a call with the Board and we held that call on May 19,
`2020. Paper 9. During the call, Petitioner explained the circumstances
`surrounding its mistaken belief that it timely filed a rehearing request, and
`how it served Patent Owner with such a request on April 8, 2020. Patent
`Owner confirmed that it was so served. Based on the circumstances
`presented in the call, we authorized Petitioner to file a motion to accept the
`late filing of the request for rehearing that was served on Patent Owner on
`April 8, 2020. Id. at 3. We authorized Patent Owner to file an opposition.
`Id.
`
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`PGR2019-00058
`Patent 10,214,664 B2
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`
`Petitioner filed its motion (Paper 10, “Mot.”), along with a copy of the
`request that was purportedly served on Patent Owner (Ex. 1020), and Patent
`Owner filed its opposition (Paper 12, “Opp.”).
`After considering these papers, we determine it would be in the
`interests of justice to accept Petitioner’s late-filed rehearing request.
`However, based on our consideration of the merits of the Request for
`Rehearing, we are not persuaded that we misapprehended or overlooked any
`issues of law or fact that would necessitate modification of our Decision.
`
`
` ANALYSIS
`Petitioner’s Motion to Accept Late-Filed Rehearing Request
`In its motion, Petitioner states that its office was closed on April 8,
`2020 due to the COVID-19 outbreak, and that the individual who “was
`experienced in filing documents with the Board . . . was unavailable to file
`the document.” Req. 1. As a result, according to Petitioner, “the
`undersigned attorney filed the Rehearing Request and believed it was
`properly filed on April 8, 2020,” and also served a copy on Patent Owner.
`Id. Petitioner states it “believed the reference to ‘no documents submitted’
`with the request in the receipt meant that no exhibits were included with the
`Rehearing Request,” and “did not realize that there was an issue with the
`filing until it received an email from the Board on May 13, 2020.” Id. at 2.
`Based on these circumstances, Petitioner asserts that good cause exists
`for us to grant its motion because its late filing “was simply an honest
`mistake resulting from Petitioner’s counsel’s office closure due to the
`Covid-19 outbreak,” and was not a circumstance of Petitioner’s own
`making. Id. Petitioner also asserts that it is in the interests of justice to grant
`
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`PGR2019-00058
`Patent 10,214,664 B2
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`its motion and consider its request. Id. at 3. Specifically, Petitioner asserts
`that Patent Owner would not be prejudiced by our consideration of its
`request, and further states that an extension of the deadline for filing its
`rehearing request is warranted by the CARES Act extension of deadlines.
`Id.
`
`Patent Owner avers that Petitioner’s actions amount to filing error and
`the extensions provided by the CARES Act do not apply to filing errors, but
`rather to the timeliness of a filing, i.e., “a delay in filing due to the COVID-
`19 outbreak.” Opp. 1. According to Patent Owner, the current
`circumstances do not meet the good cause or interests of justice standards.
`Id. at 2. Specifically, Patent Owner states that COVID-19 may have played
`a role in Petitioner’s counsel’s office closure, but that does not excuse a
`filing error because 1) other counsel could have filed the request, 2) counsel
`could have filed the request sooner, 3) counsel could have reviewed the
`filing process detailed on the PTAB website and/or requested technical
`assistance from PTAB, and 4) counsel and co-counsel failed to read the
`filing receipt status regarding no documents being submitted. Id.
`Patent Owner further avers that it would be prejudiced by a delay in
`this proceeding in view of the pending litigation that is suspended while this
`case is active before us, and argues such delay does not “serve the purpose
`of time restraints on preliminary AIA proceedings––to expedite return to
`litigation should an AIA post-grant review be denied and proceedings not
`instituted.” Id. at 3.
`Under 37 C.F.R. § 42.5(c)(3), “[a] late action will be excused on a
`showing of good cause or upon a Board decision that consideration on the
`merits would be in the interests of justice.” We agree with Petitioner that it
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`PGR2019-00058
`Patent 10,214,664 B2
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`would be in the interests of justice to consider the merits of its rehearing
`request.
`The CARES Act Notice1 cited by Petitioner provides that certain
`filings due between March 27, 2020 and April 30, 2020 will be considered
`timely if filed on or before June 1, 2020. Ex. 1024, 2. To qualify for such
`an extension, the filing must be accompanied by a statement that the delay in
`filing was due to the COVID-19 outbreak. Id. One such delay “due to the
`COVID-19 outbreak” includes a circumstance where a petitioner was
`affected by an office closure that materially interfered with timely filing.
`Id. at 2–3. The circumstances surrounding Petitioner’s counsel’s office
`closure fall within the scope of the relief afforded by the CARES Act Notice
`because, due to the closure, the individual familiar with the PTABE2E filing
`system was not present at counsel’s office to ensure the request was properly
`uploaded. Based on the facts and circumstances presented, including the
`lack of significant prejudice to Patent Owner, we determine it would be in
`the interests of justice to deem Petitioner’s Request for Rehearing to be
`timely filed and now consider its merits.
`
`Petitioner’s Request for Rehearing
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed.
`
`
`1 Available at https://www.uspto.gov/sites/default/files/documents/Patents-
`Notice-CARES-Act-2020-04.pdf
`
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`PGR2019-00058
`Patent 10,214,664 B2
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`37 C.F.R. § 42.71(d). Specifically, “[w]hen rehearing a decision on
`petition, a panel will review the decision for an abuse of discretion.”
`37 C.F.R. § 42.71(c).
`Petitioner asks us to reconsider our determination that the ʼ664 patent
`has not been shown to be eligible for post grant review. Ex. 1020 (“Req.”);
`Dec. 2. We have considered Petitioner’s Request, and for the reasons set
`forth below, we decline to modify our Decision to not institute post grant
`review.
`
`Petitioner first contends that we overlooked or misapprehended
`arguments regarding the written description and enablement of “limitation
`1a)” requiring “each of the first and second lateral edge portions having a
`width defined in a direction perpendicular to the longitudinal direction.”
`Req. 7–9. Petitioner argues that we did not consider its arguments made at
`pages 53–55 of its Petition regarding “width” of the lateral edge portions.
`Id. We are not persuaded by this argument.
`
`Before considering the merits of a post grant review challenge, we
`must first determine whether the subject patent is eligible for post grant
`review. It is Petitioner’s burden to establish such eligibility, a threshold that
`Petitioner recognizes by devoting an entire section of its Petition arguing
`why it believes the ʼ664 patent is eligible for post-grant review (Pet. 28–43)
`prior to detailing its specific challenges (id. at 43–62).
`
`Petitioner’s argument in the Request suggests that, to appreciate the
`full scope of its eligibility arguments presented at pages 33–36 of its
`Petition, we were to mine other portions of the Petition (i.e., pages 53–55)
`for additional lack of enablement and written description arguments for a
`“width of the lateral edge portion” limitation. We, however, are not required
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`PGR2019-00058
`Patent 10,214,664 B2
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`to undertake such efforts on Petitioner’s behalf. See DeSilva v. DiLeonardi,
`181 F.3d 865, 867 (7th Cir. 1999) (“A brief must make all arguments
`accessible to the judges, rather than ask them to play archaeologist with the
`record.”); Dec. 23 (“Because Petitioner has failed to demonstrate that the
`ʼ664 patent is eligible for post-grant review, we need not address Petitioner’s
`specific unpatentability challenges to claims 1–6, 10–16, 20–22 thereof.
`Pet. 43–62.”).
`Indeed, the subsection on pages 53–55 that Petitioner claims we
`should have consulted pertains to its ground 1, which challenges the claims
`for lack of enablement and lack of written description support in the ’664
`patent itself. Pet. 53–55. By contrast, the post-grant review eligibility
`question on pages 33–35 asks whether certain claim elements were
`adequately supported by the priority applications. Id. at 21, 33–36. And
`neither section of the Petition contains cross-citations or references that
`would indicate that we were to consult both in concert. Further confusing
`the issue, the subsection heading to which Petitioner now refers recites
`“[t]he claim phrase ‘width of the lateral edge portion’ is not enabled and
`lacks an adequate written description.” Pet. 53. There is no such “claim
`phrase” in any of the challenged claims. Ex. 1001, 5:1–49, 61–67, 6:1–49,
`61–67, 7:1–7.
`Therefore, the arguments Petitioner now faults us for overlooking or
`misapprehending fall under a subheading quoting a non-existent claim
`limitation in a section of the Petition not directed to the eligibility
`requirement. Under these circumstances, the cited arguments were not
`properly before us as we considered Petitioner’s eligibility arguments. We
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`PGR2019-00058
`Patent 10,214,664 B2
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`cannot have overlooked or misapprehended eligibility arguments that were
`not properly before us. 37 C.F.R. § 42.71(d).
`
`Moreover, Petitioner’s argument on rehearing does not specifically
`address the full scope of our reasoning set forth in the Decision regarding
`written description and enablement of limitation 1a), or explain how that
`analysis should change if we considered the arguments on pages 53–55 we
`allegedly overlooked. Dec. 12–13. Our Decision makes clear that we
`considered “the parties’ respective arguments, and the evidence of record” in
`determining that Petitioner had not established that limitation[] 1a) . . .
`lack[s] written description or enabling support in the pre-AIA applications.”
`Dec. 12 (emphasis added); id. at 13 (explaining how Figures 1 and 2 of
`provisional application 60/673,883, filed April 22, 2005 (“the first
`provisional application”) evince possession of limitation 1a)); see also id. at
`14 (discussing Petitioner’s lack of a Wands factor analysis or persuasive
`argument regarding non-enablement for limitation 1a)).
`
` Petitioner next argues that we overlooked evidence regarding the
`examiner and applicant interview summaries for limitations 1a) and 1b), and
`asserts the interview summaries and subsequent attempted cancelation of
`these limitations “supports that both limitations 1a) and 1b) are prohibited
`new matter.” Req. 9–10. This argument is unpersuasive because it amounts
`to a mere disagreement with our conclusion about the evidence presented.
`The Examiner and applicant interview summaries referenced in Petitioner’s
`Request were neither previously overlooked nor misapprehended. Rather,
`our Decision makes clear that we considered the arguments at pages 33 and
`34 of the Petition where the interview summaries were discussed, as well as
`the evidence presented. See Dec. 13 (discussing the specific contents of the
`
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`PGR2019-00058
`Patent 10,214,664 B2
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`Examiner’s and applicant’s interview summaries). Patent Owner’s use of
`the plural when referring to the claim limitations in its interview summary
`(Ex. 1002, 39) does not support Petitioner’s position that both limitations 1a)
`and 1b) were of concern to the Examiner. Rather, as stated in our Decision,
`Patent Owner’s interview summary suggests that limitation 1b) was of
`concern––not limitation 1a). Dec. 13 (“The Examiner indicated the
`limitations . . . relating the maximum height of the lateral edge portions to
`the width of the lateral edge portions raise section 112 issues.”). Moreover,
`our Decision notes that, despite Patent Owner’s attempt to cancel limitation
`1a), the Examiner “allowed the claims to issue with this limitation.” Id.
`
`Finally, Petitioner asserts that we misapprehended its argument that
`disclosure of one embodiment does not support the breadth of the claim
`limitation requiring “each of the first and second lateral edge portions having
`a maximum height that is less than its width.” Req. 10–13; Dec. 14.
`Petitioner relies on the principles articulated in LizardTech, Inc. v. Earth
`Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) to support its
`argument. Req. 11–13.2
`
`
`2 Petitioner also argues that independent claims 1 and 11 do not expressly
`require a “recess” or a “shoulder” and asserts that “such features are
`necessary to define and determine the ‘width’ of the lateral edge portions.”
`Req. 12–13. We do not consider this argument on rehearing, however,
`because it was not properly before us as we considered whether the ʼ664
`patent is eligible for post grant review. As explained supra, our Decision
`first considered Petitioner’s eligibility arguments (Pet. 28–43) and, after
`determining that Petitioner failed to demonstrate such eligibility, we stated
`“we need not address Petitioner’s specific unpatentability challenges” set
`forth at pages 43–62 of its Petition. Dec. 23. As best can be determined,
`Petitioner made a similar argument at pages 47–48 of the Petition, i.e., not in
`its eligibility discussion. Pet. 28–43.
`
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`PGR2019-00058
`Patent 10,214,664 B2
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`This argument fails to identify a matter that we overlooked or
`misapprehended. Our Decision reflects that we considered Petitioner’s
`argument and found it to be a simple assertion of a lack of written
`description (Dec. 14), and Petitioner now seeks to broaden this argument by
`citing case law3 that the Petition did not establish applies to the current facts.
`In LizardTech, our reviewing court stated that “a patentee cannot always
`satisfy the requirements of section 112, in supporting expansive claim
`language, merely by clearly describing one embodiment of the thing
`claimed.” LizardTech, 424 F.3d at 1346 (emphasis added). This language
`suggests that the converse is true––i.e., that sometimes the disclosure of one
`embodiment is enough to provide written description support for “expansive
`claim language.” Indeed, that approach is consistent with LizardTech, as
`well as other Federal Circuit cases holding that the written description
`inquiry is highly fact specific, and must consider the skill level of the
`ordinary skilled artisan. See LizardTech, 424 F.3d at 1345 (“it is
`unnecessary to spell out every detail of the invention in the specification;
`only enough must be included to convince a person of skill in the art that the
`inventor possessed the invention . . . . In this case, however, LizardTech has
`failed” (emphasis added)); Ralston Purina Co. v. Far-Mar-Co., 772 F.2d
`1570, 1575 (Fed. Cir. 1985) (“Precisely how close the original description
`must come to comply with the description requirement of 35 U.S.C. § 112
`must be determined on a case-by-case basis.” (emphasis added)); Vas-Cath
`Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (“[U]nder proper
`
`3 Petitioner did not cite the LizardTech case in its Petition. While a request
`for rehearing is not limited to only cases that were cited to the Board
`previously, we find it significant that a case on which the Petitioner relies so
`heavily in its Request appears nowhere in the Petition.
`10
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`Patent 10,214,664 B2
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`circumstances, drawings alone may provide a ‘written description’ of an
`invention as required by § 112.”); Union Oil Co. of California v. Atlantic
`Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (“The Patent Act and this
`court’s case law require only sufficient description to show one of skill in
`the [relevant] art that the inventor possessed the claimed invention at the
`time of filing.”).
`Applying these legal principles to the instant facts, we noted that
`Figure 2 of the first provisional application provides the identical tape
`measurements that are recited in the ʼ664 patent, and how “those
`measurements satisfy the claim requirement that the tape’s lateral edge
`portion has a maximum height, i.e., 0.78 mm, that is less than the lateral
`edge portion’s width, i.e., 1.9 mm.” Dec. 13–14. Our Decision also states
`that Petitioner failed to satisfy its burden of demonstrating how such
`disclosure does not comply with the requirements of section 112. Id. at 14
`(“Petitioner makes a simple assertion that these measurements are only
`sufficient to support one embodiment. . . . Such unexplained assertions fail
`to satisfy Petitioner’s burden.”).
`
`
`
` CONCLUSION
`For the reasons set forth above, we determine it would be in the
`interests of justice to accept the late filing of Patent Owner’s Request for
`Rehearing. However, Petitioner fails to persuade us that we overlooked or
`misapprehended any dispositive matter that would necessitate a modification
`of our Decision.
`
`
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`PGR2019-00058
`Patent 10,214,664 B2
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`
`
`
`Claims
`1–6, 10–
`16, 20–22
`
`1–6, 10–
`16, 20–22
`1–6, 10–
`16, 20–22
`Overall
`Outcome
`
`
`
`
`
`35 U.S.C § Reference(s)/Basis
`112(a)
`Lack of Written
`Description
`Support &
`Enablement
`Sales of “Superior
`Mark Tape”
`Sales of
`“Durastripe Tape”
`
`
`102
`
`102
`
`
`
`Granted
`
`Denied
`1–6, 10–16,
`20–22
`
`1–6, 10–16,
`20–22
`1–6, 10–16,
`20–22
`1–6, 10–16,
`20–22
`
`
`
`
`
`
`
`
`
` ORDER
`For the reasons given, it is hereby
`
`ORDERED that Petitioner’s Motion to Accept the Late Filing of its
`
`Rehearing Request is granted; and
`FURTHER ORDERED that Petitioner’s Request for Rehearing is
`denied.
`
`
`
`
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`PGR2019-00058
`Patent 10,214,664 B2
`
`PETITIONER:
`
`
`Howard Wernow
`Rich Megley
`Joseph Sebolt
`howard.wernow@sswip.com
`rmegley@leesheikh.com
`joe.sebolt@sswip.com
`
`
`PATENT OWNER:
`
`Ray L. Weber
`Laura J Gentilcore
`rlweber@rennerkenner.com
`ljgentilcore@rennerkenner.com
`
`
`
`
`
`13
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`