Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: May 18, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COSENTINO S.A.U. and C & C NORTH AMERICA INC.,
`Petitioner,
`v.
`
`
`
`
`
`CAMBRIA COMPANY LLC,
`Patent Owner.
`
`
`PGR2021-00010
`Patent 10,773,418 B2
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`AVELYN M. ROSS, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Date: May 18, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COSENTINO S.A.U. and C & C NORTH AMERICA INC.,
`Petitioner,
`v.
`
`
`
`
`
`CAMBRIA COMPANY LLC,
`Patent Owner.
`
`
`PGR2021-00010
`Patent 10,773,418 B2
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`AVELYN M. ROSS, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`PGR2021-00010
`Patent 10,773,418 B2
`
`INTRODUCTION
`I.
`Cosentino S.A.U. and C & C North America Inc. (collectively,
`“Petitioner”)1 filed a Petition (Paper 1, “Pet.”) requesting post-grant review
`of claims 1–23 of U.S. Patent No. 10,773,418 B2 (Ex. 1001, “the ’418
`patent”). Cambria Company LLC (“Patent Owner”) filed a Preliminary
`Response to the Petition (Paper 7, “Prelim. Resp.”). The Board authorized
`supplemental briefing to address the factors outlined in Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”). Paper 8, 2. Petitioner filed a Reply to Patent Owner’s
`Preliminary Response. Paper 9 (“Reply”). Also pursuant to our
`authorization, Patent Owner filed a Sur-Reply. Paper 10 (“Sur-Reply”).
`To institute post-grant review, we must determine that the information
`presented in the Petition, “if such information is not rebutted, would
`demonstrate that it is more likely than not that at least 1 of the claims
`challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the
`reasons discussed below, after considering the parties’ submissions and the
`evidence of record, we determine that Petitioner has demonstrated that it is
`more likely than not that at least one of the challenged claims of the ’418
`patent is unpatentable. Thus, we institute post-grant review.
`
`
`1 The Petition states: “The Petitioners and real parties-in-interest are
`Cosentino S.A.; Stone Systems of Central Texas LLC; Stone Systems of
`Houston, LLC; Stone Systems of New Mexico, LLC; Stone-Made Products,
`Inc.; Stone Suppliers, Inc.; and C & C North America Inc.” Pet. 108. The
`parties, however, use the caption shown above, seemingly indicating that
`Cosentino S.A.U. and C & C North America Inc. are Petitioners. To the
`extent either party believes it necessary to the resolution of this matter, we
`invite the parties to clarify the identification of Petitioner and its real parties-
`in-interest.
`
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`PGR2021-00010
`Patent 10,773,418 B2
`A. Related Proceedings
`The parties state that the ’418 patent is at issue in Cambria Company
`LLC v. Cosentino SA, Case No. 6:20-cv-894-ADA (W.D. Tex.) (the “District
`Court proceeding”). Pet. 109; Paper 5, 1.
`B. The ’418 Patent
`The ’418 patent, titled “Processed Slabs, and Systems and Methods
`Related Thereto,” is directed to systems and processes for forming synthetic
`mold slab products to a selected slab shape that is suitable for use in living
`or working spaces. Ex. 1001, code (54), 1:18–24. The processed slab
`emulates the appearance of a quarried stone slab due at least in part to use of
`two differently colored mineral mixes distributed according to first and
`second predefined patterns. Id. at 3:11–16.
`The dispensation process can provide an aesthetic effect that emulates
`the veined appearance of natural quarried stone slabs such as granite or
`marble, and includes some veins that extend partly or fully across length L
`of the slab. Id. at 5:52–58. The veins can also extend through the thickness
`of the slab to provide a natural vein appearance even when the slab is cut
`and edged to specific shapes. Id. at 5:64–6:2. Figure 6 is reproduced below:
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`PGR2021-00010
`Patent 10,773,418 B2
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`
`Figure 6 is a perspective view of an example synthetic molded slab product.
`Id. at 5:8–9. Synthetic molded slab product 600 includes major surface 612
`having “veins 602, 606 that extend partly or fully across a length and/or
`width of the hardened slab 600.” Id. at 11:52–58. Differently pigmented
`veins such as 602 and 606 can extend across the slab product, and also can
`extend through thickness 610 of slab 600 from first major face 612 to
`opposing major face 614 to provide a natural vein appearance when the slab
`is cut and edged to specific shapes. Id. at 11:59–64. For example, when
`section 630 is cut away from synthetic molded slab product 600, with
`“veins 602 and 606 extending into the interior 606 and/or across the
`thickness 610, cutting and/or processing of the synthetic molded slab
`
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`PGR2021-00010
`Patent 10,773,418 B2
`product 600 shows the veins 602 and 606 in a manner that emulates the
`aesthetics of cut quarried stone slabs.” Id. at 12:15–21.
`C. Illustrative Claim
`1. A processed slab formed from a plurality of particulate
`mineral mixes deposited into a mold, comprising:
`a slab width that is at least 2 feet, a slab length that
`extends perpendicular to the slab width and that is at least 6
`feet, and a slab thickness that extends perpendicular to the slab
`width and the slab length, the slab length greater than the slab
`width, the slab width greater than the slab thickness;
`a first predetermined pattern defined by a first particulate
`mineral mix and comprising a set of slab veins exposed along a
`major surface of the slab, the set of slab veins comprising:
`a first vein in a generally lengthwise direction
`along the major surface, the first vein having a first vein
`thickness defined by the first particulate mineral mix that
`is equal and parallel to the slab thickness,
`a second vein in a generally widthwise direction
`along the major surface, the second vein having a second
`vein thickness defined by the first particulate mineral mix
`that is equal and parallel to the slab thickness,
`wherein the first vein in the generally lengthwise
`direction intersects the second vein in the generally
`widthwise direction; and
`a second predetermined pattern defined by a second
`particulate mineral mix that occupies the entire slab thickness;
`wherein the first and second mineral mixes are different
`and each comprise quartz and one or more binders, the first
`particulate mineral mix absent from the second predetermined
`pattern and the second particulate mineral mix absent from the
`first predetermined pattern.
`Ex. 1001, 13:11–41.
`D. The Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–3, 5–13, and 16–20 would have been
`unpatentable on the following grounds:
`
`5
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`PGR2021-00010
`Patent 10,773,418 B2
`Claims Challenged
`35 U.S.C. §
`Basis
`Dening, 2 Zhangwu, 3 Benito, 4
`1–23
`103
`Buskila5
`1–23
`112
`Indefiniteness
`In support of its unpatentability arguments, Petitioner relies on the
`declaration testimony of Dr. John R. Dorgan (the “Dorgan Declaration”).
`Ex. 1004.
`
`II. ANALYSIS
`A. Eligibility for Post-Grant Review
`The AIA’s post-grant review provisions apply to patents that
`“contain[] or contained at any time . . . a claim to a claimed invention that
`has an effective filing date . . . that is on or after [March 16, 2013].” Leahy-
`Smith America Invents Act (AIA) §§ 3(n)(1), 6(f)(2)(A) (2011). In addition,
`a “petition for a post-grant review may only be filed not later than the date
`that is 9 months after the date of the grant of the patent or of the issuance of
`
`
`2 PCT Application Publication No. WO 2008/000168 A1 (Ex. 1007). We
`refer to the certified English translation of this document (Ex. 1008).
`Petitioner denotes this reference as “Dening,” but Dening appears to be the
`first name of inventor “YANG, Dening.” Ex. 1008, 1. For consistency with
`the record before us, however, we refer to this reference as “Dening.”
`3 Chinese Patent Application Publication No. CN 102806599 A (Ex. 1005).
`We refer to the certified English translation of this document (Ex. 1006).
`Petitioner denotes this reference as “Zhangwu,” but Zhangwu appears to be
`inventor Chen Zhangwu’s first name. Ex. 1006, code (72). For consistency
`with the record before us, however, we refer to this reference as “Zhangwu.”
`4 U.S. Patent Application Publication No. 2015/0360507 A1 (Ex. 1009).
`Petitioner denotes this reference as “Benito,” but Benito is only part of
`inventor Jose Manuel Benito Lopez’s last name. Ex. 1009, code (72). For
`consistency with the record before us, however, we refer to this reference as
`“Benito.”
`5 U.S. Patent Application Publication No. 2011/0034586 A1 (Ex. 1012).
`
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`PGR2021-00010
`Patent 10,773,418 B2
`a reissue patent (as the case may be).” 35 U.S.C. § 321(c) (2018); see 37
`C.F.R. § 42.202(a) (2020).
`Here, the ’418 patent is eligible for post-grant review because the
`Petition was filed within nine months of the ’418 patent’s issue date and the
`earliest possible priority date of the ’418 patent is after March 16, 2013 (the
`effective date for the first inventor to file provisions of the Leahy-Smith
`America Invents Act). Ex. 1001, code (45) (showing an issue date of
`September 15, 2020); id. at 1:8–14 (claiming priority to a series of U.S.
`patent applications, the earliest of which was filed on January 30, 2015); id.
`at code (22); Paper 4 (according the Petition a filing date of November 24,
`2020).
`B. Discretion Under 35 U.S.C. § 324(a)
`Institution of post-grant review is discretionary:
`The Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`35 U.S.C. § 324(a). The portion of the statute reading “[t]he Director may
`not authorize . . . unless” mirrors the language of 35 U.S.C. § 314(a), which
`concerns inter partes review. This language of Sections 314(a) and 324(a)
`provides the Director with discretion to deny institution of a petition. See
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); Patent Trial and Appeal Board Consolidated Trial
`Practice Guide (“CTPG”) 55 (November 2019), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated. The Director has
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`PGR2021-00010
`Patent 10,773,418 B2
`delegated his authority under § 324(a) to the Board. 37 C.F.R. § 42.4(a)
`(“The Board institutes the trial on behalf of the Director.”).
`The Leahy-Smith America Invents Act was “designed to establish a
`more efficient and streamlined patent system that will improve patent quality
`and limit unnecessary and counterproductive litigation costs.” H.R. Rep.
`No. 112−98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (post-grant
`reviews were meant to be “quick and cost effective alternatives to
`litigation”); see also S. Rep. No. 110−259, at 20 (2008); CTPG 56. The
`Board recognized these goals, but also recognized “the potential for abuse of
`the review process by repeated attacks on patents.” General Plastic Co.,
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, 16−17 (PTAB
`Sept. 6, 2017) (precedential).
`In NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc., IPR2018-
`00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), the Board determined
`that the advanced state of a parallel proceeding is an additional factor
`weighing in favor of denying institution under 35 U.S.C. § 314(a). Id. at 19–
`20. In Fintiv, the Board articulated a list of factors that we consider in
`determining whether to exercise discretion to deny institution based on an
`advanced stage of a parallel proceeding:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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`PGR2021-00010
`Patent 10,773,418 B2
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11, 5–6. “These factors relate to whether efficiency, fairness,
`and the merits support the exercise of authority to deny institution in view of
`an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating these
`factors, we take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review.” Id. (citing
`CTPG 58). As Patent Owner notes, although “Fintiv and NHK Spring were
`decided in the related IPR context under Section 314(a), panels have applied
`the same analysis and factors to PGR petitions under section 324(a).”
`Prelim. Resp. 3 (citing Supercell Oy v. Gree, Inc., PGR2020-00041,
`Paper 14, 5–25 (PTAB Sept. 14, 2020), reh’g denied, Paper 17 (PTAB
`Nov. 18, 2020)).
`Patent Owner has asserted the ’418 patent against Petitioner in the
`District Court proceeding. Pet. 109; Paper 5, 1. Petitioner has not requested
`a stay of the District Court proceeding. Prelim. Resp. 4; Reply 3–4.
`Petitioner contends that because Fintiv factors 3, 4, and 6 weigh in favor of
`institution and because Fintiv factors 1, 2, and 5 are either neutral or do not
`outweigh the strength of factors 3, 4, and 6, the Fintiv factors weigh against
`discretionary denial. Reply 1–5. Patent Owner contends the Fintiv factors
`weigh strongly in favor of denying institution of post-grant review under 35
`U.S.C. § 324(a). Prelim. Resp. 3–4. In our analysis below, we address each
`of the Fintiv factors in turn.
`1. First Fintiv Factor: Existence or Likelihood of Stay
`Patent Owner contends that this factor weighs in favor of denial.
`Prelim. Resp. 4. Patent Owner contends that Petitioner has not requested a
`stay of the District Court proceeding, and there is no reason to believe that a
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`PGR2021-00010
`Patent 10,773,418 B2
`stay would be granted if it were requested. Id. In support of this assertion,
`Patent Owner argues the presiding judge stated that he “probably can get a
`patent trial resolved more quickly than the PTAB can.” Id. at 4–5 (citing
`Ex. 2007, 1). Patent Owner further contends the District Court “recognized
`the need to accelerate the trial schedule ‘[d]ue to the nature of ongoing
`damages’ alleged by Patent Owner.” Id. at 5 (citing Ex. 2002, 2).
`Petitioner contends this factor is neutral based on similar cases
`decided by the Board. Reply 4. Patent Owner responds that the presiding
`judge “has never stayed a case due to an IPR or PGR” and has already
`rejected Petitioner’s proposed schedule while accepting Patent Owner’s
`expedited trial date of October 12, 2021. Sur-Reply 1.
`With regard to the first Fintiv factor, Petitioner has not requested a
`stay of the District Court proceeding, and we decline to speculate on the
`likelihood of a stay being granted. For these reasons, we determine that this
`factor is neutral.
`2. Second Fintiv Factor: Proximity of Anticipated Trial Date and
`Statutory Deadline for Final Written Decision
`Patent Owner contends this factor also weighs in favor of denial,
`because the presently scheduled trial date in the District Court proceeding—
`October 12, 2021—is roughly seven months before the Board’s projected
`Final Written Decision on May 22, 2022. Prelim. Resp. 6. Patent Owner
`further contends the facts of the present proceeding compare favorably to
`both NHK and Fintiv, in which the Board ultimately denied institution. Id.
`at 7 (citing NHK, Paper 8, 20; Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 15, 17 (PTAB May 13, 2020) (informative)). Patent Owner also
`contends that other Board panels have determined this factor favors denial
`
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`PGR2021-00010
`Patent 10,773,418 B2
`where, as here, a parallel proceeding was running ahead of the Board by six
`to seven months. Id. at 7 n.1.
`Petitioner contends this factor favors institution, because 1) the trial
`judge has multiple trials scheduled for the week of October 12, 2021; 2) the
`allowance of a new patent related to the ’418 patent will require new claim
`construction and contentions; and 3) Petitioner plans to request shortened
`timelines for responding, which will reduce the time to issue the final written
`decision. Reply 4–5. Patent Owner responds that 1) Petitioner’s speculation
`about the trial date is backwards, because the presently requested bench trial
`is more likely to proceed than a jury trial; 2) Petitioner’s expectations about
`the new patent do not demonstrate that the trial date would be altered; and
`3) Petitioner’s proposed shortened deadlines do not alter the Board’s
`statutory deadline. Sur-Reply 1–3.
`We agree that this factor favors exercising discretion to deny, because
`1) Petitioner has little support for its contentions that a change of the bench
`trial date will happen; 2) Petitioner does not persuasively demonstrate that
`the existence of a newly-allowed patent necessitates a change of trial date;
`and 3) the proffered alteration of Petitioner’s deadlines does not absolve us
`of our obligation to issue a final written decision within one year of
`institution of post-grant review. Thus, we determine that the second Fintiv
`factor weighs in favor of exercising our discretion to deny institution under
`§ 324(a).
`3. Third Fintiv Factor: Investment in Parallel Proceeding
`Under this factor, we first consider Petitioner’s timing in filing the
`Petition. If a petitioner, “faced with the prospect of a looming trial date,
`waits until the district court trial has progressed significantly before filing a
`petition,” that decision “may impose unfair costs to a patent owner.”
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`Patent 10,773,418 B2
`Fintiv, Paper 11, 11. On the other hand, if “the evidence shows that the
`petitioner filed the petition expeditiously, such as promptly after becoming
`aware of the claims being asserted, this fact has weighed against exercising
`the authority to deny institution.” Id.
`Petitioner asserts that this Petition was filed within two weeks of
`service of the complaint. Reply 2. Patent Owner does not argue otherwise,
`other than to state that “diligence is not its own factor and cannot overcome
`an advanced parallel proceeding.” Sur-Reply 4; see generally Prelim. Resp.
`We find no unreasonable delay in Petitioner’s filing.
`Second, we consider “the amount and type of work already completed
`in the parallel litigation by the court and the parties at the time of the
`institution decision.” Fintiv, Paper 11, 9. “Specifically, if, at the time of the
`institution decision, the district court has issued substantive orders related to
`the patent at issue in the petition, this fact favors denial.” Id. at 9–10.
`Petitioner contends this factor weighs in favor of institution, because
`although a Markman hearing was held on March 11, 2021, much work
`remains to be completed, including final infringement and validity
`contentions and expert discovery. Reply 1–2. Patent Owner responds that
`the parties have extensively briefed and submitted multiple expert
`declarations and, by the time of the institution, will have served all final
`contentions and nearly concluded fact discovery. Sur-Reply 3–4.
`Although we appreciate that a Markman hearing was held, we find no
`evidence in the record that any substantive determinations on validity issues
`have been made in the District Court proceeding. The present circumstances
`are similar to those in Sand Revolution II, LLC v. Continental Intermodal
`Group-Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020)
`(informative) (“Sand Revolution”), in which, as here, the parties exchanged
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`Patent 10,773,418 B2
`preliminary infringement and invalidity contentions, and the district court
`conducted a Markman hearing and entered an order construing claim terms.
`Id. at 10. The Sand Revolution panel found that “aside from the district
`court’s Markman Order, much of the district court’s investment relates to
`ancillary matters untethered to the validity issue itself” and “much work
`remains in the district court case as it relates to invalidity: fact discovery is
`still ongoing, expert reports are not yet due, and substantive motion practice
`is yet to come.” Id. at 10–11. Here, as in Sand Revolution, much work
`remains to be done in the district court. On balance, we find the timeliness
`of the Petition and the level of investment of time and resources in the
`District Court proceeding, coupled with the absence of any substantive
`determinations on validity issues by the court, suggests this factor weighs
`against exercising our discretion to deny institution under § 324(a).
`4. Fourth Fintiv Factor: Overlap Between Issues Raised in Petition
`and in Parallel Proceeding
`Patent Owner contends this factor favors denial of institution, because
`there is complete overlap between the validity issues raised in the Petition
`and in the related District Court proceeding, and because the prior art
`references and combinations advanced in the Petition are the same as those
`advanced in the related District Court proceeding. Prelim. Resp. 11–13.
`Specifically, Patent Owner argues that the invalidity contentions incorporate
`by reference the Petition in its entirety, including the accompanying exhibits
`and the Dorgan Declaration. Id. (citing Ex. 2004, 10).
`Petitioner argues that it has proposed a Sotera-type stipulation that
`obviates concerns of duplicative efforts between the District Court and the
`Board. Reply 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-
`01019, Paper 12, 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A)
`
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`(“Sotera”)). Petitioner stipulates that “if the Board institutes this PGR,
`Petitioners will not pursue in the parallel proceeding any ground raised or
`that could have reasonably been raised in this PGR.” Id. Patent Owner
`responds that Petitioner has already pursued the same grounds in the District
`Court proceeding, and Petitioner’s strategic wait to raise its stipulation,
`which was not filed in District Court and not offered to Patent Owner, does
`not provide a basis to accept Petitioner’s stipulation. Sur-Reply 4–5.
`Concerns about the degree of overlap may be mitigated where a
`petitioner agrees not to pursue in the parallel district court litigation the
`grounds advanced in the petition. Sand Revolution, Paper 24, 11–12. A
`petitioner stipulating not to pursue “any ground raised or that could have
`been reasonably raised” weighs strongly in favor of not exercising
`discretionary denial. Sotera, Paper 12, 18–19. Petitioner unequivocally
`stipulates that, if the Board institutes this post-grant review, it will “not
`pursue in the parallel proceeding any ground raised or that could have
`reasonably been raised in this PGR.” Reply 3. We are not persuaded that
`Petitioner delayed in filing its stipulation under Sotera, as that decision was
`not designated as precedential until after the Petition was filed. We also are
`not persuaded that the stipulation is ineffective simply because Petitioner has
`not filed it with the District Court. See, e.g., Lego Systems, Inc. v. MQ
`Gaming LLC, IPR2020-01443, Paper 12, 15 (explaining that the panel was
`“not persuaded that a stipulation must be filed in the District Court before it
`can be considered in the Board’s discretionary denial analysis [and that] the
`stipulation becomes effective ‘if the IPR is instituted’”). Considering that
`Petitioner has agreed to be bound by a stipulation that is substantively the
`same as the stipulation addressed in Sotera, we follow the Sotera precedent
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`in finding that this factor weighs strongly against exercising discretion to
`deny. Sotera, Paper 12, 7–8.
`5. Fifth Fintiv Factor: Whether Petitioner and Parallel Proceeding
`Defendant Are Same
`The parties do not dispute that the same parties involved in the present
`proceeding are also involved in the District Court proceeding. Prelim.
`Resp. 13; Pet. 108 (“Petitioners and Patent Owner are the same parties
`involved in the district court case.”). Thus, this factor weighs in favor of
`exercising our discretion to deny institution under § 324(a).
`6. Sixth Fintiv Factor: Other Circumstances (Including Merits)
`Patent Owner contends this factor “is at best neutral.” Prelim.
`Resp. 14. Petitioner contends this factor weighs in favor of institution,
`because Petitioner has presented “a strong challenge to the ’418 claims” and
`because “Patent Owner does not meaningfully challenge the merits.”
`Reply 3. Patent Owner responds that Petitioner’s conclusory arguments
`favor denial. Sur-Reply 5.
`Petitioner presents a single obviousness grounds based on a
`combination of four references, and states that synthetic slabs that mimic
`vein patterns in natural stone were known. See Pet. 15–104. Petitioner also
`asserts that the term “generally” as used in the claims renders the claims
`indefinite. See id. at 104–107. On the present record, Patent Owner does
`not provide any arguments directed to the merits. See generally Prelim.
`Resp. As we describe in more detail below, we find the evidence and
`arguments presented by Petitioner persuasive on this preliminary record and
`sufficient to meet our standard for instituting post-grant review.
`In addition, we note that we are simultaneously instituting inter partes
`review in IPR2021-00214, IPR2021-00215, and IPR2021-00216 as well as
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`Patent 10,773,418 B2
`post-grant review in this case. Each of these proceedings involves Petitioner
`and Patent Owner and challenges a patent involved in the District Court
`proceeding. It would be inefficient to discretionarily deny institution of the
`present Petition, which we find meets the statutory threshold for institution,
`while we proceed to trial with respect to other patents involved in the same
`District Court proceeding.
`Thus, we find that the sixth Fintiv factor weighs against exercising
`discretion to deny institution.
`7. Conclusion on the Factors
`Because the analysis is fact-driven, no single factor is determinative
`of whether we exercise our discretion to deny institution under 35 U.S.C.
`§ 324(a). On this record, after weighing all of the factors and taking a
`holistic view, we determine that the facts in this case that weigh against
`exercising discretion outweigh the facts that favor exercising discretion.
`Accordingly, we determine that the circumstances presented weigh against
`exercising our discretion to deny institution under § 324(a).
`C. Legal Standards
`1. Obviousness
`A patent claim is unpatentable for obviousness if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In
`Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court set out a
`framework for assessing obviousness that requires consideration of four
`factors: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope
`and content of the prior art,” (3) the “differences between the prior art and
`
`16
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`PGR2021-00010
`Patent 10,773,418 B2
`the claims at issue,” and (4) “secondary considerations”6 of nonobviousness
`such as “commercial success, long felt but unsolved needs, failure of others,
`etc.” Id. at 17–18; see also KSR, 550 U.S. at 407.
`2. Indefiniteness
`“The specification [of a patent] shall conclude with one or more
`claims particularly pointing out and distinctly claiming the subject matter
`which the inventor or a joint inventor regards as the invention.” 35 U.S.C.
`§ 112(b) (2018). A patent “is invalid for indefiniteness if its claims, read in
`light of the specification delineating the patent, and the prosecution history,
`fail to inform, with reasonable certainty, those skilled in the art about the
`scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
`898, 901 (2014); see USPTO Memorandum on the Approach to
`Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings
`(Jan. 6, 2021).
`D. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of the invention “would have been someone with a bachelor’s degree in
`materials, materials science, materials engineering, chemical engineering, or
`a related field, and at least two years of work experience or the equivalent
`graduate study in the design or manufacture of composites with
`thermosetting resins.” Pet. 14 (citing Ex. 1004 ¶¶ 46–47). In its Preliminary
`
`
`6 Petitioner preliminarily addresses Patent Owner’s secondary
`considerations arguments in the related litigation. Pet. 102–104. Patent
`Owner does not raise secondary considerations arguments here. See
`generally Prelim. Resp. We note Petitioner’s arguments but, in the absence
`of a more complete record and arguments from both parties, determine that
`this element of the framework is best analyzed on a full record during trial.
`
`17
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`PGR2021-00010
`Patent 10,773,418 B2
`Response, Patent Owner does not contest Petitioner’s asserted level of
`ordinary skill in the art. See generally Prelim. Resp.
`We adopt Petitioner’s definition, because we find it is consistent with
`the level of skill in the art at the time of the invention as reflected by the
`prior art and the ’418 patent. See Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary
`skill level are not required “where the prior art itself reflects an appropriate
`level and a need for testimony is not shown” (quoting Litton Indus. Prods.,
`Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
`E. Claim Construction
`We apply the claim construction standard articulated in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.200(b) (2020).
`Under Phillips, claim terms are afforded “their ordinary and customary
`meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary
`meaning of a claim term is the meaning that the term would have to a person
`of ordinary skill in the art in question at the time of the invention.” Id.
`at 1313. Only terms that are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner states that “no terms require express construction because
`the patent claims encompass the below prior-art mappings under any
`reasonable construction consistent with the Phillips standard.” Pet. 14–15.
`At this time, Patent Owner does not disagree with Petitioner’s position. See
`generally Prelim. Resp. We agree with Petitioner that no express
`construction of any claim term is necessary for purposes of this Decision.
`
`18
`
`
`
`PGR2021-00010
`Patent 10,773,418 B2
`F. Ground 1: Asserted Obviousness of Claims 1–23 based on Dening,
`Zhangwu, Benito, and Buskila
`1. Overview of Dening (Exs. 1007, 1008)
`Dening is a PCT Application Publication titled “A Mould System for
`Making the Products with Multi-Color 3D Patterns and Its Method.”
`Ex. 1007, code (54). Dening relates to a hollow pattern mold system for
`producing multicolor region pattern products, including resin-containing
`artificial stones, and producing three-dimensional color patterns such as
`high-grade imitation natural stone. Ex. 1008, 2. Dening discloses that by
`arranging “two or more colors in the pattern as contrast” and “by arranging
`one or more raw materials with strong light transmittance, it is possible to
`produce a product with a three-dimensional visual effect as the high-grade
`natural stone.” Id. at 5–6. One embodiment of color patterns is depicted in
`Figure 28, reproduced below.
`
`
`Figure 28 is a schematic plan view of a product with a pattern having three
`color pattern regions according to an embodiment of a hollow pattern mold
`system. Id. at 19, 28. The large black dot portion with the reference
`
`19
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