Continental Automotive Systems, Inc.v.Wasica Finance GmbH

Patent Trial and Appeal Board

Jul 29, 2014

08137155 (P.T.A.B. Jul. 29, 2014)

Trials@uspto.gov Paper 16
Tel: 571-272-7822 Entered: July 29, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CONTINENTAL AUTOMOTIVE SYSTEMS, INC.,
Petitioner,
v.
WASICA FINANCE GMBH & BLUEARC FINANCE AG,
Patent Owner.
_______________

Case IPR2014-00295
Patent 5,602,524
_______________

Before RAMA G. ELLURU, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
A. Background
On July 11, 2014, Continental Automotive Systems, Inc.
(“Petitioner”) filed a request for rehearing (Paper 15, “Req. Reh’g”) of the
Board’s decision (Paper 11, “Dec.”) denying inter partes review of claim 4
of U.S. Patent No. 5,602,524 (“the ’524 patent”). The corrected Petition
(Paper 6, “Pet.”) challenged claims 1-21 of the ’524 patent. We determined
that the information presented, at the preliminary stage of this proceeding,
establishes a reasonable likelihood that Petitioner would prevail at trial with
respect to claims 1-3 and 5-21 of the ’524 patent. We further determined,
however, that the information does not show sufficiently that there is a
reasonable likelihood that Petitioner would prevail at trial with respect to
claim 4. Accordingly, we declined to institute trial as to claim 4.
Petitioner’s request for rehearing is limited to our decision declining
to institute trial with respect to claim 4 of the ’524 patent. For the reasons
that follow, we deny the request for rehearing.

II. STANDARD OF REVIEW
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
a panel will review the decision for an abuse of discretion.” In its request
for rehearing, the dissatisfied party must identify the place in the record
where it previously addressed each matter it submits for review. 37 C.F.R.
§ 42.71(d).

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III. ANALYSIS
A. Whether the “Signal Amplifier and Filter Device” are Multiple
Elements
Petitioner contends that the Board’s decision incorrectly treated the
“signal amplifier and filter device” in claim 4 as distinct devices, rather than
a single device. Req. Reh’g 2. Regardless of whether the “signal amplifier
and filter device” in claim 4 are distinct devices, or a single device, our
decision denying institution of the challenges to claim 4 was based on
Petitioner’s failure to address, in the Petition, the claimed “signal amplifier
and filter device,” either as individual elements or as a single element. See
Dec. 23. Thus, we are not persuaded that we misapprehended the “signal
amplifier and filter device” limitation in claim 4.
B. Petitioner’s Allegation that the Board Overlooked Evidence that
the “Signal Amplifier and Filter Device” are Well-Known and
Obvious
Petitioner contends that the Board “overlooked . . . (1) a discussion of
the prosecution history of the ’524 Patent at page 31 of the Petition and
(2) key testimony of Dr. Mercer cited at page 33 of the Petition.” Req.
Reh’g 3.
1. Prosecution History
With respect to the prosecution history, Petitioner alleges that page 31
of the Petition specifically addressed the “signal amplifier and filter device”
limitation of claim 4 by “cit[ing] the portion of the prosecution history
where the Examiner took ‘judicial notice that it is known in the art to
provide amplifying and filtering means [from original claim 25] at the
receiver end in order to condition the received signals for subsequent
usage’” and “argu[ing] that claim 4 recited elements that are ‘either identical
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or patentably indistinct’ from original claim 25, and that claim 4 was
unpatentable for the same reasons.” Id. at 4. Petitioner now appears to
additionally request the Board to take judicial notice regarding the “signal
amplifier and filter device” in claim 4. Id.
We could not have overlooked these arguments because they were not
presented in the Petition. See 37 C.F.R. § 42.104(b)(4) (“The petition must
specify where each element of the claim is found in the prior art patents or
printed publications relied upon.”). For example, page 31 of the Petition is
part of a section titled “Overview of Williams,” and states that “during
prosecution, the Examiner found that original claims 22-32, 35-37, and 41-
42 of the application resulting in the ’524 patent were obvious in view of
Williams” and that “[j]ust as the Examiner found during prosecution, issued
claims 3, 4, 7-9, 18, and 20 are obvious in view of the tire pressure
monitoring system disclosed by Williams.” Although the portion of the
prosecution history cited in the Petition may include the Examiner’s
“judicial notice,” Petitioner does not contend, in the Petition, that the “signal
amplifier and filter device” in claim 4 was well-known, or that the Board
should take judicial notice regarding that limitation.
2. Dr. Mercer’s Testimony
As for the testimony of Dr. Mercer cited at page 33 of the Petition,
Petitioner contends that “[t]he Board’s decision overlooked the fact that
Dr. Mercer’s testimony: (1) stated that claim 4 includes the additional
element of the signal amplifier and filter device, and (2) opined that the
additional ‘signal amplifier and filter device’ element was unpatentable in
view of the Oselin and Williams combination.” Req. Reh’g 5-6. As
Petitioner notes, however, our decision addressed this testimony from
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Dr. Mercer. Id. at 5 (quoting Dec. 23 (“Other than generally stating that
‘Williams teaches, or renders obvious, each additional element of claim 4,’
the Mercer Declaration also fails to address the signal amplifier and filter
device limitations.”)).
We did not overlook the testimony of Dr. Mercer cited by Petitioner
in the Petition. The Board considered the evidence and argument presented
in the Petition. Dec. 23. Specifically, we considered Dr. Mercer’s
testimony, but found that “the Mercer declaration [] fails to address the
signal amplifier and filter device limitations.” Id. Petitioner’s contention in
this request for rehearing is merely a disagreement with the Board’s
decision. Disagreement with the Board’s decision is not a sufficient basis on
which to request rehearing.
C. Petitioner’s Allegation that the Board Overlooked Evidence that
the Integration of All Elements of Claim 4 on a Single Circuit
Would Have Been an Obvious Design Choice
Petitioner’s rehearing request contends that “[t]he Board’s Decision
overlooked the Petition’s argument and Dr. Mercer’s testimony that:
(1) Williams discloses using a microprocessor for some of the features of
claim 4, and (2) it would have been an obvious design choice to combine the
additional elements of claim 4 into a single integrated circuit.” Req.
Reh’g 8. The Petition, however, states that “[a] POSITA would have found
it obvious, and advantageous, to combine the comparison device and
memory into a single integrated chip,” not that it would have been obvious
to combine a signal amplifier and filter device with the comparison device
and memory into a single integrated chip. See Pet. 33. We could not have
overlooked or misapprehended Petitioner’s argument, raised for the first
time in the rehearing request, as it was not raised in the Petition.
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IV. CONCLUSION
Petitioner’s request for rehearing is denied.

PETITIONER:

Gary M. Ropski
James K. Cleland
John A. Lingl
Nicholas A. Restauri
BRINKS, GILSON & LIONE
gropski@brinksgilson.com
jcleland@brinksgilson.com
jlingl@brinksgilson.com
nrestauri@brinksgilson.com

PATENT OWNER:

Michael T. Hawkins
Patrick J. Bisenius
FISH & RICHARDSON P.C.
hawkins@fr.com
bisenius@fr.com