IPR2020-00609 (P.T.A.B. Aug. 20, 2020)

Huber Engineered Woods LLC

Patent Trials and Appeals BoardAug 20, 2020

IPR2020-00609 (P.T.A.B. Aug. 20, 2020)

Trials@uspto.gov Paper 12 571.272.7822 Date: August 20, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ LOUISIANA-PACIFIC CORPORATION, Petitioner, v. HUBER ENGINEERED WOODS LLC, Patent Owner. ____________ IPR2020-00609 Patent 9,546,479 B2 ____________ Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314, 37 C.F.R. § 42.4 IPR2020-00609 Patent 9,546,479 B2 2 I. INTRODUCTION Louisiana-Pacific Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No. 9,546,479 B2 (“the ’479 patent”). Pet. 5. Huber Engineered Woods LLC (“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim. Resp.”) to the Petition, contending that the Petition should be denied as to all challenged claims. Prelim. Resp. 4. We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we do not institute an inter partes review of any challenged claim. A. Related Proceedings Petitioner represents that the ’479 patent is at issue in Huber Engineered Woods LLC v. Louisiana-Pacific Corporation, USDC, District of Delaware, No. 1:19-cv-00342-LPS, filed February 18, 2019. Pet. 5. We also identify proceedings in IPR2020-00596, IPR2020-00600, IPR2020- 00601, IPR2020-00604, IPR2020-00605, IPR2020-00606, and IPR2020- 00607 as challenging patents related to the ’479 patent. Each of these related patents claims priority to U.S. Provisional Application No. IPR2020-00609 Patent 9,546,479 B2 3 60/547,031, filed on Feb. 23, 2004. See, e.g., Ex. 1001, code (60). Most notably, however, we instituted review of claims 1–20 of the ’479 patent in IPR2019-00919 on October 8, 2019. See IPR2019-00919, Paper 9. B. References Relied Upon Petitioner’s challenges rely on the following references (Pet. 8–15): Name Reference Ex. No. APA APA Engineered Wood Handbook 1005 Alaska Building in Alaska: Permeability of Common Building Material to Water Vapor 1008 StoGuard- 2001 Press Release titled, “Sto Corp. Launches Sto Guard Housewrap Alternative” 1014 StoGuard- 2003 Press Release titled, “Sto Guard a seamless, fluid-applied air and moisture barrier, provides superior protection under most claddings. It does what other wraps only pretend to do” 1015 ASTM D5795 Standard Test Method for Determination of Liquid Water Absorption of Coated Hardboard And Other Composite Wood Products Via ‘Cobb Ring’ Apparatus 1006 ASTM Report Interlaboratory Study to Establish Precision Statements for ASTM D5795, Test Method for Determination of Liquid Water Permeability of Applied Coatings on Hardboard and Other Composite Wood Products Via ‘Cobb Ring’ Apparatus 1007 ASTM E96 Standard Test Methods for Water Vapor Transmission of Materials 1016 Van Wagoner US Pat. No. 4,719,723, issued Jan. 19, 1988 1018 Hsu US Pat. No. 5,616,419, issued Apr. 1, 1997 1026 IPR2020-00609 Patent 9,546,479 B2 4 Name Reference Ex. No. Ou US Pat. No. 6,737,155 B1, issued May 18, 2004 1020 Lionel US Pat. No. 6,901,712 B2, issued June 7, 2005 1019 Arnold Installing Housewrap 1022 Grace Wall-Sheathing Seam Tape 1023 DuPont Press Release titled, “Tyvek Tape” 1009 Forbes GB2364338, published Jan. 23, 2002 1038 Kenji JP2001-020415, published Jan. 23, 2001 1039 & 1040 (English translation) Flack US Pat. No. 4,828,635, issued May 9, 1989 1041 Maietta US Pat. No. 5,732,520, issued Mar. 31, 1998 1042 Hedquist CA 1,181,565, issued Jan. 29, 1985 1043 Hoffman US Pat. No. 5,147,486, issued Sept. 15, 1992 1044 Peng US Pat. No. 7,159,368 B2, issued Jan 9, 2007 1054 Martz US Pat. No. 5,061,258, issued Oct. 29, 1991 1056 IPR2020-00609 Patent 9,546,479 B2 5 C. Alleged Grounds of Unpatentability Petitioner contends that claims 1–20 of the ’479 patent are unpatentable under the following grounds: Claim(s) Challenged 35 U.S.C. § Basis1 1–20 103(a) Forbes in view of Flack, Van Wagoner, Peng, ASTM D5795, ASTM Report, Hsu, ASTM E96, Alaska, Grace, APA, DuPont, Martz, Arnold, and Maietta 1–20 103(a) Kenji in view of Flack, Van Wagoner, Peng, ASTM D5795, ASTM Report, Hsu, ASTM E96, Alaska, Grace, APA, DuPont, Martz, Arnold, and Maietta Pet. 15. Petitioner also relies on the declaration testimony of Dr. Peter E. Laks (Ex. 1002) in support of its Petition. See, e.g., id. at 32 (referencing Ex. 1002). D. Patent Owner’s Argument Patent Owner’s only argument is that we should deny institution under 35 U.S.C. § 314(a) because the Petition is a follow-on petition to the petition filed in related proceeding IPR2019-00919. See, generally, Prelim. Resp. Patent Owner applies each of the factors set forth in General Plastic to the instant case (see id. at 4–18) and argues that these factors “weigh heavily against instituting IPR in this case” (id. at 5). See General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, Paper 19 (PTAB Sep. 6, 2017) (precedential) (“General Plastic”). We agree. 1 We reproduce the summary of asserted grounds as set forth by Petitioner. See Pet. 15. Several of the references cited are applied only to certain dependent claims. The specific combinations of art applied to each claim is set forth on pages 22–82 of the Petition. IPR2020-00609 Patent 9,546,479 B2 6 II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) The issue is whether we should exercise our discretion to deny institution because Petitioner previously petitioned for inter partes review of the same challenged claims. A. Our Guidance Under 35 U.S.C. § 314(a), we have discretion to deny institution of an inter partes review. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). In deciding whether to institute inter partes review, we consider the guidance in the Consolidated Trial Practice Guide, which states: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare. Further, based on IPR2020-00609 Patent 9,546,479 B2 7 prior experience, the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate. To aid the Board in determining whether more than one petition is necessary, if a petitioner files two or more petitions challenging the same patent, then the petitioner should, in its petitions or in a separate paper filed with the petitions, identify: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a). The Board encourages the petitioner to use a table to aid in identifying the similarities and differences between petitions. Consolidated Trial Practice Guide Update, 59–60 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citations and footnotes omitted) (“Consolidated Trial Practice Guide” or “CTPG”). B. Analysis Petitioner filed a “Statement Pursuant July 2019 Update to the Trial Practice Guide” to justify the second, follow-on petition in IPR2020-00609 (“Pet.” or “Follow-On Petition”), despite the originally-filed petition that challenges the same claims in IPR2019-00919 (IPR2019-00919, Paper 1 (“Orig. Pet.” or “Original Petition”)). Paper 3 (“Statement”). In the Statement, Petitioner justifies the Follow-On Petition contending that: 1) The Original Petition primarily relies on APA, which Patent Owner argues is not a valid prior art reference, and the Follow-On Petition overcomes this potential infirmity. See Statement 1–3. IPR2020-00609 Patent 9,546,479 B2 8 2) Patent Owner presents “new, materially different, claim construction arguments” (id. at 3) and “the Board should allow the Patent Owner to address this new position head-on” (id. at 4). 3) The grounds raised in the Follow-On Petition are “generally the same grounds raised” in related proceedings IPR2020-00596, IPR2020-00600, IPR2020-00601, IPR2020- 00604, IPR2020-00605, IPR2020-00606, and IPR2020-00607 and efficiency justifies the Follow-On Petition. See id. at 5. The Consolidated Trial Practice Guide provides that two petitions are needed in only rare circumstances (CTPG 59), and Petitioner’s arguments fall short of establishing that the Follow-On Petition is necessary under this guidance. 1. Prior Art Status of Original Petition Justifies Follow-On Petition Addressing Petitioner’s argument (1), we are not persuaded that the uncertain status of APA (IPR2019-00919, Ex. 1005) or any other reference relied upon in the Original Petition justifies the Follow-On Petition. Petitioner cites to the Board’s decision in Panduit, and argues that, as in Panduit, “the new references relied upon similarly address the possibility that a primary reference may be disqualified.” Statement 2 (referencing Panduit Corp. v. CCS Tech., Inc., IPR2017-01323, Paper 8 (PTAB Nov. 8, 2017) (emphasis added)). APA: (1) was published by McGraw-Hill, a well-known publisher; (2) exhibited a copyright date of 2002, which if true established its prior art status as to the ’479 patent; and (3) contained Library of Congress catalog publication data, including ISBN information. IPR2019-00919, Paper 9, 16 (citing in-part Coriant (USA) Inc. v. Oyster Optics, LLC, Case IPR2018- IPR2020-00609 Patent 9,546,479 B2 9 00258, slip op. at 11 (PTAB June 6, 2018) (Paper 13) (“For established publishers, demonstrating a date of publication is alone sufficient for showing accessibility to the public.”)). Furthermore, in IPR2019-00919, Patent Owner does not dispute the status of APA’s copyright date, ISBN number, or publication by McGraw-Hill in either of its Patent Owner Response or Patent Owner Sur-Reply. See IPR2019-00919, Paper 12 (Patent Owner Response); see also IPR2019-00919, Paper 18 (Patent Owner Sur Reply); see also Giora George Angres, Ltd. v. Tinny Beauty and Figure, Inc., No. 96-1507, 1997 WL 355479, at *7 (Fed. Cir. June 26, 1997) (unpublished) (finding “no reason to suspect that . . . [a reference published by an established publisher] was not publicly available, including to one skilled in the art” when “no evidence was presented that it was not”). Moreover, and although Patent Owner challenges the prior art status of other secondary references in IPR2019-00919 (see IPR2019-00919, Paper 12, 16–20), because Petitioner’s first challenge in the Original Petition relies solely on APA as an anticipatory reference (see Orig. Pet. 17), Petitioner’s first challenge in the Original Petition survives any non-APA prior-art challenge by Patent Owner. For the foregoing reasons, we are not persuaded that the Follow-On Petition is justified simply because Patent Owner disputes the prior art status of references relied on in the Original Petition. 2. Shifting Claim Construction Position Justifies Follow-On Petition Petitioner also argues that the Follow-On Petition is justified because Patent Owner revised its claim construction after the Original Petition was filed. See Statement 3–4. In particular, Petitioner contends that Patent IPR2020-00609 Patent 9,546,479 B2 10 Owner changed its proposed claim construction of the claim term “barrier layer secured to the outer surface of each panel” to mean that the barrier layer is “secured to each individual panel and not to other panels.” See id. at 3 (citing in part IPR2019-00919, Paper 12). Petitioner’s second argument is also unpersuasive. Even if we assume Patent Owner’s claim construction to be a revision from its original position, we do not see how this justifies a second petition. Taking Petitioner’s argument to its logical conclusion, the Board would allow follow-on petitions whenever a patent owner clarifies its claim construction position to overcome a petitioner’s initial petition. As our prior precedential decision guides us, it is unfair to patent owners to allow petitioners to use filings from prior proceedings as a roadmap to strategically stage their prior art and arguments. See General Plastic, 16 (“The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.”). Moreover, Petitioner had the opportunity to dispute Patent Owner’s “revised” claim construction in IPR2019-00919. In its reply, Petitioner argued, “There is simply no reason to assume that the phrase ‘each panel with its secured barrier layer’ prohibits the barrier layer from being secured to another panel.” IPR2019-00919, Paper 14, 17. Petitioner further argued, “There is simply no language in a single claim to suggest or imply that the barrier layer is only secured to one panel. If such a claim were intended, then the applicant could have, and should have, used language that expresses such an intention.” Id. at 18. Because Petitioner addressed Patent Owner’s “revised” claim construction in IPR2019-00919, we do not see why IPR2020-00609 Patent 9,546,479 B2 11 Petitioner needs the second, Follow-On Petition, to address that same, revised claim construction. For the foregoing reasons, we are not persuaded that the Follow-On Petition is justified simply because Patent Owner may have revised its proposed claim construction in IPR2019-00919. 3. Follow-On Petition Ensures Efficiency in Related Proceedings Finally, Petitioner argues that because the grounds raised in the Follow-On Petition are “generally the same” as the grounds raised in related proceedings IPR2020-00596, IPR2020-00600, IPR2020-00601, IPR2020- 00604, IPR2020-00605, IPR2020-00606, and IPR2020-00607, we should allow the Follow-On Petition for efficiency purposes. See Statement 4–5. Petitioner’s argument is not persuasive, however, as it presumes that we instituted review in these related inter partes proceedings. Because the Board denied inter partes review in each of these related proceedings, Patent Owner’s third argument is without merit. C. Summary The Consolidated Trial Practice Guide provides that two petitions are needed in only rare circumstances. CTPG 59. Petitioner has not shown that our circumstances justify two petitions to challenge the same claims. III. CONCLUSION For the reasons provided above, considering all the circumstances in this case, and in accordance with the Consolidated Trial Practice Guide, we exercise our delegated discretion under § 314(a) and deny institution. IPR2020-00609 Patent 9,546,479 B2 12 IV. ORDER In consideration of the foregoing, it is hereby ORDERED that, no inter partes review is instituted. IPR2020-00609 Patent 9,546,479 B2 13 PETITIONER: W. Edward Ramage eramage@bakerdonelson.com Aaron Chaloner achaloner@bakerdonelson.com PATENT OWNER: Daniel W. McDonald dmcdonald@merchantgould.com Jeffrey D. Blake jblake@merchantgould.com Paige S. Stradley pstradley@merchantgould.com Peter S. Selness pselness@merchantgould.com