Clifford A. Lowe

Patent Trials and Appeals Board

Sep 4, 2020

PGR2019-00058 (P.T.A.B. Sep. 4, 2020)

Trials@uspto.gov Paper No. 13
571.272.7822 Date: September 4, 2020

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)

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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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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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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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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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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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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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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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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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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.
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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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Claims 35 U.S.C § Reference(s)/Basis Denied Granted
1–6, 10–
16, 20–22
112(a) Lack of Written
Description
Support &
Enablement
1–6, 10–16,
20–22

1–6, 10–
16, 20–22
102 Sales of “Superior
Mark Tape”
1–6, 10–16,
20–22

1–6, 10–
16, 20–22
102 Sales of
“Durastripe Tape”
1–6, 10–16,
20–22

Overall
Outcome
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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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