Trials@uspto.gov
`571-272-7822
`
`Paper 19
`Entered: February 23, 2021
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`v.
`CHERVON (HK) LIMITED,
`Patent Owner.
`
`PGR2020-00061
`Patent 10,524,420 B2
`
`
`
`Before LINDA E. HORNER, JAMES J. MAYBERRY, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`HORNER, 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)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 19
`Entered: February 23, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ONE WORLD TECHNOLOGIES, INC.,
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`v.
`CHERVON (HK) LIMITED,
`Patent Owner.
`
`PGR2020-00061
`Patent 10,524,420 B2
`
`
`
`Before LINDA E. HORNER, JAMES J. MAYBERRY, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`HORNER, 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)
`
`
`
`
`
`
`
`
`
`PGR2020-00061
`Patent 10,524,420 B2
`
`INTRODUCTION
`I.
`One World Technologies, Inc., d/b/a Techtronic Industries Power
`Equipment (“Petitioner”) filed a Petition requesting a post-grant review of
`claims 1–15 of U.S. Patent No. 10,524,420 B2 (“the ’420 patent”). Paper 1
`(“Pet.”). Chervon (HK) Limited (“Patent Owner”) filed a Preliminary
`Response. Paper 11 (“Prelim. Resp.”).
`On December 7, 2020, we denied institution (Paper 16, “Dec.”)
`because Petitioner failed to show that the ’420 patent is eligible for
`post-grant review. Dec. 2, 10‒18.
`Petitioner filed a Request for Rehearing (Paper 17, “Req. Reh’g”)
`seeking reconsideration of our eligibility analysis and of our decision to
`deny institution. Petitioner also filed Exhibit 1025 with the Request for
`Rehearing. For the reasons stated below, we deny the Request for Rehearing
`and expunge Exhibit 1025.
`II. NEW EVIDENCE
`Petitioner filed Exhibit 1025 with its Request for Rehearing. Req.
`Reh’g 15 n.4. This exhibit was not of record at the time the Decision
`Denying Institution was entered. See id. (Petitioner acknowledging that
`“Exhibit 1025 is being added to the record of this proceeding concurrently
`with this Request for Rehearing; Ex. 1025 was originally ‘Reserved.’”).
`Petitioner did not request a conference call with the Board prior to
`submitting Exhibit 1025, nor did Petitioner explain in the Request for
`Rehearing why this exhibit should be admitted. Thus, Petitioner has not
`established good cause to admit Exhibit 1025. See Huawei Device Co. v.
`Optis Cellular Tech., LLC., IPR2018-00816, Paper 19 at 3‒4 (PTAB Jan. 8,
`2019) (expunging exhibits filed with a request for rehearing when the
`
`2
`
`
`
`PGR2020-00061
`Patent 10,524,420 B2
`petitioner failed to establish good cause for admitting the exhibits)1; see also
`Consolidated Trial Practice Guide 90 (Nov. 2019)2 (“Absent a showing of
`‘good cause’ prior to filing the request for rehearing or in the request for
`rehearing itself, new evidence will not be admitted.”).
`Because Petitioner has not established good cause to admit
`Exhibit 1025, we expunge the exhibit from the record.
`III. ANALYSIS
`When reconsidering a decision on institution, we review the decision
`for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of
`discretion occurs 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.
`See 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). The party requesting rehearing has the
`burden of showing the decision should be modified, which includes
`specifically identifying all matters the party believes were misapprehended
`or overlooked. See 37 C.F.R. § 42.71(d).
`In our Decision Denying Institution, we found that Petitioner failed to
`meet its burden to show that the ’420 patent is eligible for post-grant review.
`See AIA § 3(n)(1)(B) (making the AIA applicable to a patent that claims
`priority under 35 U.S.C. § 120, 121, or 365(c) to any patent or application
`
`
`1 The Office designated Huawei precedential on April 5, 2019, well over a
`year before our Decision and Petitioner’s Request for Rehearing in this case.
`Petitioner should have been aware of this Board precedent and addressed it
`if it wished to submit new evidence.
`2 Available at https://www.upsto.gov/TrialPracticeGuideConsolidiated.
`
`3
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`
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`PGR2020-00061
`Patent 10,524,420 B2
`that contains or contained at any time a claim having an effective filing date
`on or after March 16, 2013); 37 C.F.R. § 42.204(a) (requiring a petitioner to
`certify that the patent for which review is sought is available for post-grant
`review); Mylan Pharms. Inc. v. Yeda Res. & Dev. Co., PGR2016-00010,
`Paper 9 at 10 (PTAB Aug. 15, 2016) (holding that the ultimate burden of
`persuasion remains with a petitioner to demonstrate that the challenged
`patent is eligible for post-grant review).
`Petitioner’s basis for arguing in the Petition that the ’420 patent is
`eligible for post-grant review was that the ’627 patent3, to which the ’420
`patent claims priority, allegedly contains at least one claim having an
`effective filing date on or after March 16, 2013. Pet. 10‒11. Specifically,
`Petitioner asserts that the parent ’627 patent claims subject matter, i.e., a
`“gripping member” and a “handle,” disclosed only in the later CN040
`priority application4 filed after March 16, 2013. Id. at 11 (citing Ex. 1023,
`claim 1). Petitioner asserts that the earlier CN914 priority application5 does
`not disclose this claimed subject matter. Id. at 13. Petitioner bore the
`burden on this issue.
`We found, “Petitioner’s evidence in support of its assertion that ‘[t]he
`earlier [CN914] application does not disclose a “gripping member” and
`“handle”’ is inadequate.” Dec. 16. Specifically, we faulted Petitioner’s
`logic in attempting to show that the earlier CN914 application does not
`disclose these claimed features by showing that the later CN040 application
`
`
`3 U.S. Pat. 9,888,627 B2 (Ex. 1023, “the ’627 patent”).
`4 Chinese priority application CN 2012 20602040U (“CN040”), filed May 3,
`2013.
`5 Chinese priority application CN 2012 10387914 (“CN914”), filed October
`14, 2012.
`
`4
`
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`PGR2020-00061
`Patent 10,524,420 B2
`does disclose them. Id. at 16‒17 (“[T]he depiction of what appears to be a
`substantially cylindrical gripping member and an elongated handle in the
`later CN040 application does not exclude these features also from being
`disclosed in the earlier CN914 application.”). We also noted that Patent
`Owner demonstrated the earlier CN914 application “appears to show
`similar-looking features as the substantially cylindrical gripping member and
`the elongated handle identified by Petitioner in the figures of the later
`CN040 application.” Id. at 17. We faulted Petitioner for failing “to address
`the drawings presented in the earlier CN914 application or establish
`sufficiently that the claim features of the parent ’627 patent are not disclosed
`therein.” Id.
`Petitioner argues that the Board’s Decision “seemingly admonishes
`Petitioner for not submitting affirmative evidence to prove a negative – that
`the CN914 application fails to disclose what is claimed in claims 1-5 and
`6-10 of the ’627 patent.” Req. Reh’g 6. Petitioner argues, “The Decision
`does not explain what additional evidence this Board expected, but
`Petitioner concedes it ‘d[id] not refer to any specific support’ in the earlier
`CN914 application because that is the point – the CN914 application does
`not disclose what is claimed.” Id.
`Petitioner’s objection to being expected to prove a negative is
`unpersuasive. Petitioner provides substantive analysis of the figures in the
`CN914 application in this Request for Rehearing and points out alleged
`“material differences” between the figures in the CN914 and CN040
`applications. Req. Reh’g 12–15 (emphasis omitted). This is exactly the type
`of analysis and argument that could have been supportive of Petitioner’s
`
`5
`
`
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`PGR2020-00061
`Patent 10,524,420 B2
`position had it been presented to the Board in the Petition.6 Petitioner did
`not provide any such analysis in its Petition. Rather, the Petition simply
`asserted that the CN914 application does not disclose the claimed features
`without any supporting discussion and analysis of what is shown, or not
`shown, in the figures of the CN914 application. Pet. 13. Further, as noted in
`our Decision, Petitioner also failed to provide us with an English language
`translation of either the CN040 application or the CN914 application.
`Dec. 14‒15. Petitioner’s belated analysis presented for the first time in the
`Request for Rehearing highlights the lack of analysis in the Petition.
`Petitioner also argues that the Board’s Decision “rel[ies]
`impermissibly on what is disclosed only in the later CN040 application” to
`conclude that the earlier CN914 application provides written description
`support for the claimed “handle.” Req. Reh’g 6. This argument
`misapprehends the Board’s Decision. The Decision turned on whether
`Petitioner had met its burden to show that the ’420 patent is eligible for
`post-grant review by showing that the “handle” claimed in the ’627 patent
`was not disclosed in the CN914 application. The Decision found
`Petitioner’s showing inadequate. Dec. 16‒17.
`Further, to the extent that the Board considered Patent Owner’s
`arguments comparing the figures of the CN914 and CN040 applications, the
`Board did not adopt Patent Owner’s assertion that “Figure 3 of [the] CN914
`
`
`6 Petitioner also did not seek leave to file a reply to the Patent Owner
`Preliminary Response to address Patent Owner’s argument that the figures
`of the CN914 application provide adequate support for the claimed features.
`37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a reply to the
`preliminary response in accordance with §§ 42.23 and 42.24(c). Any such
`request must make a showing of good cause.”).
`
`6
`
`
`
`PGR2020-00061
`Patent 10,524,420 B2
`[application] is nearly identical to Figures 1 and 4 of [the] CN040
`[application].” Req. Reh’g 7 (quoting Prelim. Resp. 13). Instead, the Board
`noted in its Decision that “the earlier CN914 application appears to show
`similar-looking features as the substantially cylindrical gripping member and
`the elongated handle identified by Petitioner in the figures of the later
`CN040 application.” Dec. 17. Petitioner’s argument that it was improper
`for the Board to rely on the figures of the CN040 application is unsuccessful,
`given that it was Petitioner who relied on the comparison of the CN040
`application and the CN914 application to argue that the CN914 application
`lacks written description support for claims 1 and 6 of the ’627 patent.
`Pet. 11–12.
`Petitioner identifies, for the first time in the Request for Rehearing,
`alleged “material differences” between the earlier figures of the CN914
`application and the later figures of the CN040 application. Req. Reh’g 9‒15
`(emphasis omitted). First, Petitioner argues for the first time in its rehearing
`request that the CN914 application does not disclose the “proximity”
`limitation of the claims of the ’627 patent. Id. at 9‒10 (arguing that the
`figures of the CN914 application do not depict “the claimed proximity of the
`handle to the ‘gripping portion’ of an operating arm” (emphasis added)).
`Petitioner never identified this “proximity” limitation as the basis for post-
`grant review eligibility in the Petition. Second, Petitioner argues for the first
`time on rehearing, with reference to newly annotated figures from the
`CN914 and CN040 applications, that the two parallel lines shown on the
`front of the mower in the CN914 application depict “a flat exterior surface
`contiguous with the convex surface at the front of the mower” that is “in the
`manner of an adhesive protecting strip.” Id. at 10‒13. Third, Petitioner
`
`7
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`PGR2020-00061
`Patent 10,524,420 B2
`urges us, for the first time on rehearing and with reference to new evidence,
`to infer from the manner in which a “handle-like component” and a front
`handle were depicted in the CN914 application and in another patent owned
`by the Patent Owner, that the component depicted on the front of the mower
`in the CN914 application is not a “handle.” Id. at 14‒15.
`We could not have misapprehended or overlooked these arguments
`because they are new arguments presented for the first time in the Request
`for Rehearing. In its Petition, Petitioner argued that the CN040 application
`discloses “an operating arm” that “includes a substantially cylindrical
`gripping portion” and “an elongated handle positioned on a [front] end” of
`the main body, as recited in the claims of the ’627 patent. Pet. 11‒12
`(alteration in original) (referring to annotated Figures 1 and 4 of the CN040
`application). As to the disclosure of the earlier CN914 application,
`Petitioner stated only that “[t]he earlier Chinese application does not
`disclose a ‘gripping member’ and ‘handle.’” Id. at 12. In its Preliminary
`Response, Patent Owner argued that “Petitioner’s conclusory and
`unsupported statement that [the] CN914 [application] fails to disclose a
`‘substantially cylindrical gripping portion’ or an ‘elongated handle’ cannot,
`as a matter of law, satisfy Petitioner’s burden of establishing that the [’]420
`patent is eligible for post[-]grant review.” Prelim. Resp. 12. Patent Owner
`also compared the figures from the CN914 and CN040 applications and
`argued that the figures from the CN914 application do disclose a
`“substantially cylindrical gripping portion” and an “elongated handle.” Id.
`at 12‒13. After receiving notice that the disclosure shown in the figures of
`the CN914 application was in dispute, Petitioner could have contacted the
`Board to request authorization to file additional briefing on this issue.
`
`8
`
`
`
`PGR2020-00061
`Patent 10,524,420 B2
`Petitioner did not do so. Because Petitioner did not attempt to bring this
`issue to the Board’s attention prior to entering the Decision Denying
`Institution, we decline to consider its new arguments for the first time on
`rehearing. See Huawei, IPR2018-00816, Paper 19 at 8‒9.
`IV. CONCLUSION
`For the reasons stated above, we conclude that we did not abuse our
`discretion in determining that Petitioner failed to meet its burden to show
`the ’420 patent is eligible for post-grant review and for denying post-grant
`review. Therefore, we deny Petitioner’s request to institute this proceeding.
`V. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`9
`
`
`
`PGR2020-00061
`Patent 10,524,420 B2
`FOR PETITIONER:
`Edward Sikorski
`James Heintz
`Tiffany Miller
`DLA PIPER LLP
`ed.sikorski@dlapiper.com
`jim.heintz@dlapiper.com
`tiffany.miller@dlapiper.com
`
`
`FOR PATENT OWNER:
`
`James Lukas
`Gary R. Jarosik
`Keith Jarosik
`Benjamin Gilford
`Callie Sand
`GREENBERG TRAURIG, LLP
`lukasj@gtlaw.com
`jarosikg@gtlaw.com
`jarosikk@gtlaw.com
`gilfordb@gtlaw.com
`sandc@gtlaw.com
`
`
`10
`
`
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