Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 54
`Date: May 21, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIMPSON STRONG-TIE COMPANY INC.,
`Petitioner,
`
`v.
`
`COLUMBIA INSURANCE COMPANY,
`Patent Owner.
`____________
`
`PGR2019-00063
`Patent 10,316,510 B2
`____________
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BELISLE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`

`

`I.
`
`PGR2019-00063
`Patent 10,316,510 B2
`
`INTRODUCTION
`Petitioner, Simpson Strong-Tie Company Inc., filed a Request for
`Rehearing (Paper 53, “Request” or “Req. Reh’g”) seeking review of the
`Board’s Final Written Decision (Paper 52, “Dec.”), in which we: (1) held
`unpatentable claims 1–20 of U.S. Patent No. 10,316,510 B2 (Ex. 1001,
`“the ’510 patent”); (2) granted Patent Owner’s Revised Contingent Motion
`to Amend as to proposed substitute claim 40; and (3) denied Patent Owner’s
`Revised Contingent Motion to Amend as to proposed substitute claims 21–
`39.
`
`We also refer to the Petition (Paper 2, “Pet.”), Patent Owner’s
`Response (Paper 27, “PO Resp.”), Petitioner’s Reply (Paper 32, “Pet.
`Reply”), Patent Owner’s Sur-Reply (Paper 36, “PO Sur-Reply”), Patent
`Owner’s Contingent Motion to Amend (Paper 28), Petitioner’s Opposition to
`the Contingent Motion to Amend (Paper 33), Patent Owner’s Revised
`Contingent Motion to Amend (Paper 37, “RMTA”), Petitioner’s Opposition
`to the RMTA (Paper 40, “RMTA Opp.”), Patent Owner’s Reply to the
`RMTA Opposition (Paper 43, “RMTA Reply”), and Petitioner’s Sur-Reply
`to the RMTA Reply (Paper 48, “RMTA Sur-Reply”).
`For the reasons set forth below, Petitioner’s Request is denied.
`
`II.
`
`STANDARD OF REVIEW
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d). In its request for
`rehearing, the dissatisfied party must “specifically identify” (1) “all matters
`the party believes the Board misapprehended or overlooked,” and (2) “where
`
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`PGR2019-00063
`Patent 10,316,510 B2
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`each matter was previously addressed.” Id.; Consolidated Trial Practice
`Guide (“CTPG”)1 at 90; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019).
`
`III. ANALYSIS
`Petitioner requests modification of the Final Written Decision on three
`asserted grounds, which we address in turn below. Req. Reh’g 2–13.
`A. Alleged Misapprehension/Overlooking of Regulatory Requirement
`for Revised Motions to Amend
`Petitioner contends the Board overlooked a “regulatory requirement”
`of the Board’s Motion to Amend (“MTA”) Pilot Program2 in determining
`the sufficiency of Patent Owner’s Revised Contingent Motion to Amend
`(“RMTA”). Req. Reh’g 2–6. More specifically, Petitioner contends the
`Board overlooked the MTA Pilot Program’s requirement that a revised MTA
`include “one or more new proposed substitute claims in place of previously
`presented substitute claims.” Id. at 2 (quoting Notice at 9,498, 9,501).
`Petitioner argues Patent Owner’s RMTA includes “the exact same substitute
`claims” as its underlying MTA (id. at 3), and because the Board overlooked
`the foregoing requirement for one or more new proposed substitute claims,
`the Board erred by not denying Patent Owner’s RMTA in its entirety,
`including proposed substitute claim 40 (id. at 6). Petitioner contends it
`previously addressed this matter by arguing in its Opposition to the RMTA
`that “[Patent Owner’s] RMTA should be denied because it ‘fails to comply
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2 See Notice Regarding a New Pilot Program Concerning Motion to Amend
`Practice and Procedures in Trial Proceedings under the America Invents Act
`before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497 (Mar. 15,
`2019) (“Notice” or “MTA Pilot Program”).
`
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`PGR2019-00063
`Patent 10,316,510 B2
`
`with the basic requirements for entry of a motion to amend, and thus PO has
`not met its burden of production under 37 C.F.R. §§ 42.[2]21(a)(2)
`and (b),’” and that “[t]he Motion is replete with material defects that warrant
`denial of entry of the proposed substitute claims.” Id. at 3. We are not
`persuaded by Petitioner’s argument.
`Petitioner plainly did not previously address this matter with the
`Board, and notably, has not specifically identified where this particular
`matter was so addressed, notwithstanding Petitioner’s attempt to bootstrap
`for this purpose its generic allegations about the RMTA failing to comply
`with “basic requirements” and being “replete with material defects” (Req.
`Reh’g 3). Accordingly, the Board could not have misapprehended or
`overlooked arguments or evidence that Petitioner did not present.
`Nevertheless, Petitioner further contends “good cause still exists for
`the Board to consider this argument upon Rehearing.” Req. Reh’g 4. In
`particular, Petitioner argues “Patent Owner’s lack of adherence to the Pilot
`Program’s requirements in its RMTA amounts to gamesmanship that the
`Board should not tolerate as a matter of public policy.” Id. at 5. Petitioner
`also argues “Patent Owner received the benefits of the Pilot Program’s
`preliminary guidance without adhering to the Program’s requirements for
`submitting a Revised MTA in response.” Id. Petitioner further argues
`“[g]ranting, even in part, this Revised Motion to Amend, which on its face
`does not satisfy clear requirements set forth in the Pilot Program, improperly
`shifts the burden of production regarding the RMTA’s compliance with
`regulatory requirements to the Petitioner.” Id. at 6. We are not persuaded
`by Petitioner’s arguments.
`
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`PGR2019-00063
`Patent 10,316,510 B2
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`Contrary to Petitioner’s above arguments, Patent Owner was
`authorized to receive “the benefits of” the Board’s preliminary guidance
`(Paper 35) on its MTA (Paper 28) regardless of whether it subsequently filed
`a revised MTA or instead filed a reply to the guidance or to Petitioner’s
`Opposition to the MTA (Paper 33). See Notice at 9,500. Had Petitioner
`timely raised this matter with the Board, we could have, for example,
`deemed Patent Owner’s RMTA to be a Reply under the MTA Pilot Program
`and proceeded with subsequent authorized briefing. See id.; 37 C.F.R.
`§§ 42.5(a) (“The Board may determine a proper course of conduct in a
`proceeding . . . .”), (b) (“The Board may waive or suspend a requirement of
`parts 1, 41, and 42 and may place conditions on the waiver or suspension.”),
`42.20(d) (“The Board may order briefing on any issue involved in the
`trial.”). Regardless, by Patent Owner filing the RMTA, Petitioner received
`the opportunity—and took advantage of that opportunity—to file both
`another Opposition (Paper 40) and a Sur-Reply (Paper 48) against Patent
`Owner’s motion and proposed substitute claims. Hence, we do not find
`good cause to address Petitioner’s arguments here on rehearing.
`B. Alleged Misapprehension of Application of Nautilus Standard in
`Analyzing Definiteness of the Large Enough Limitation
`Petitioner contends “the Board resorted to standards other than the
`Nautilus standard” in analyzing the Large Enough Limitation (defined at
`Dec. 24) in claim 20 and proposed substitute claim 40. Req. Reh’g 7; see id.
`at 8–12. But Petitioner’s argument here is belied by our Decision, in which
`we determined that “we are not persuaded that the [Large Enough
`Limitation] would not inform the skilled artisan, with reasonable certainty,
`about the scope of the claimed invention,” which is precisely the Nautilus
`
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`Patent 10,316,510 B2
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`standard. Dec. 28 (citing Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d
`1374, 1382–83 (Fed. Cir. 2015)) (emphasis added). We note that just
`because we were not persuaded by Petitioner’s arguments and evidence does
`not mean that we overlooked or misapprehended Petitioner’s arguments and
`evidence,3 and importantly, a request for rehearing is not an opportunity
`merely to reargue one’s case or to express disagreement with the Board’s
`decision.4
`Also, Petitioner has not specifically identified where this particular
`matter of misapprehending application of Nautilus was previously
`addressed, even though our application of Nautilus in our Decision is
`
`3 In its Request, Petitioner contends the Board overlooked Petitioner’s
`prosecution history evidence related to indefiniteness, and specifically,
`Examiner conclusions concerning the legal issue of indefiniteness of
`different claim limitations in different patent applications. See Req.
`Reh’g 8–10. We did not. We acknowledged such evidence and related
`arguments (see Dec. 23 (citing Pet. 22–25)), but we are not bound by such
`Examiner conclusions.
`4 In its Request, Petitioner reiterates its contention that “defining a distance
`based on an indeterminate size of ‘the drywall’ is insufficient to clearly set
`out the metes and bounds of the claim,” because “[d]rywall comes in [a]
`variety of different sizes—some narrow, some thick” (Pet. 23–25). See Req.
`Reh’g 9–12. We did not overlook or misapprehend Petitioner’s contention
`here, but instead found it unpersuasive, and addressed it in detail in our
`Decision. See Dec. 24–28. We also explained why we do not agree with
`Petitioner that a claimed space or distance defined by the size of a well-
`known object (like drywall) available in various sizes is inherently
`indefinite, and cited Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
`806 F.2d 1565, 1576 (Fed. Cir. 1986). Not only did Petitioner not
`previously address Orthokinetics, but we pointed this out in the Decision:
`“Notably, again, in asserting ‘Petitioner disagrees with the Board’s
`conclusions’ here, Petitioner does not address Orthokinetics.” Dec. 26
`(citations omitted). Petitioner’s Request remains silent on Orthokinetics.
`
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`PGR2019-00063
`Patent 10,316,510 B2
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`substantially similar to that in our decision to institute inter partes review in
`this case. Compare Paper 52, 23–28, with Paper 14, 19–23. Indeed, in our
`Decision, we observed that Petitioner’s entire retort to our indefiniteness
`analysis consisted of the statement, “Petitioner disagrees with the Board’s
`conclusions” (Dec. 25–26),5 and a few statements “liberal[ly]
`characterize[ing]” deposition testimony of Patent Owner’s expert,
`Dr. Serrette (Dec. 27–28). See Pet. Reply 27; RMTA Opp. 8–9; RMTA Sur-
`Reply 8–9. Accordingly, we could not have misapprehended or overlooked
`argument or evidence that Petitioner did not present, and regardless, we have
`not misunderstood the evidence or arguments before us or incorrectly
`applied the law, including the Nautilus standard, to the record evidence
`before us.
`C. Alleged Misapprehension of Petitioner’s Reliance on Certain
`Drawings in Tsukamoto
`Petitioner contends the Board misapprehended Petitioner’s reliance on
`certain drawings in Tsukamoto. Req. Reh’g 12–13. In particular, Petitioner
`argues the Board misunderstood that, in relying on Tsukamoto’s Figures 3
`and 4 and cited expert testimony of Mr. Fennell, Petitioner was not
`
`
`5 In its Request, Petitioner contends the Board erred to the extent that we
`considered any statements concerning indefiniteness by our reviewing court
`in Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371 (Fed. Cir.
`2001). See Req. Reh’g 8–12. Not only did Petitioner not previously address
`this matter, but we pointed this out in the Decision: “Notably, in asserting
`‘Petitioner disagrees with the Board’s conclusions’ here, Petitioner does not
`address Exxon.” Dec. 25–26 (citations omitted); see Paper 14, 19–23. Even
`in its Request, Petitioner still fails to address why Exxon’s discussion of
`differences between enablement and indefiniteness standards is not pertinent
`to indefiniteness issues under Nautilus.
`
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`PGR2019-00063
`Patent 10,316,510 B2
`
`“attempt[ing] to shift the burden of persuasion onto Patent Owner,” but
`“merely attempt[ing] to illustrate that other figures in Tsukamoto (e.g.,
`FIGs. 3 and 4) show the intersecting lines (e.g., corner).” Id. at 13. Again,
`we did not misapprehend Petitioner’s intended purpose in relying on
`Tsukamoto’s Figures 3 and 4, rather we explicitly found Petitioner’s
`arguments concerning such figures unpersuasive. See, e.g., Dec. 110–111
`(“[W]e find Tsukamoto’s cross-sectional drawings, taken together, as well
`as Petitioner’s own three-dimensional illustrations of such drawings, belie
`Petitioner’s position here.” (emphasis added)), 117 (“[E]ven if ‘Tsukamoto’s
`back flange shares a corner with the top flange’ as argued by Petitioner,
`we are not persuaded by this argument.” (citation omitted)); see also id.
`at 112–118. Indeed, we explained in detail why we are not persuaded by
`Petitioner’s characterizations of Tsukamoto’s Figures 3 and 4 and arguments
`related thereto relative to the claim limitations at issue. See Dec. 110–118.
`Accordingly, the Board has not misunderstood the evidence or
`arguments before us or incorrectly applied the law to the record evidence
`before us.
`
`IV. CONCLUSION
`We are not persuaded by Petitioner that the Board misapprehended or
`overlooked any arguments or record evidence before us, or incorrectly
`applied the law to the record evidence before us, in reaching our final
`decision in this case as reflected in the Decision (Paper 52).
`
`V. ORDER
`For the foregoing reasons, it is:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`8
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`

`PGR2019-00063
`Patent 10,316,510 B2
`
`For PETITIONER:
`
`Michelle Holoubek
`Sean Flood
`Ali Allawi
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`holoubek-ptab@sternekessler.com
`sflood-ptab@sternekessler.com
`aallawi-ptab@sternekessler.com
`
`
`For PATENT OWNER:
`
`Kurt James
`Steven Levitt
`John Schroeder
`B. Scott Eidson
`STINSON LLP
`kurt.james@stinson.com
`steven.levitt@stinson.com
`john.schroeder@stinson.com
`scott.eidson@stinson.com
`
`9
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