RDP Technologies, Inc.

Patent Trials and Appeals Board

Jun 4, 2020

IPR2019-01562 (P.T.A.B. Jun. 4, 2020)

Trials@uspto.gov Paper 13
Tel: 571-272-7822 Entered: June 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CHEMCO SYSTEMS, L.P.,
Petitioner,
v.
RDP TECHNOLOGIES, INC.,
Patent Owner.

IPR2019-01562
Patent 8,133,401 B2

Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
JULIA HEANEY, Administrative Patent Judges.

TORNQUIST, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request on Rehearing of Decision
Denying Institution of Inter Partes Review
35 U.S.C. § 42.71(d)
IPR2019-01562
Patent 8,133,401 B2

2

I. INTRODUCTION
Chemco Systems, L.P. (“Petitioner”) filed a request for rehearing
(Paper 12, “Req. Reh’g”) of our decision (Paper 11, “Decision” or “Dec.”)
denying institution of inter partes review of claims 1, 2, 10, and 15 of U.S.
Patent No. 8,133,401 B2 (“the ’401 patent”).
The Decision addressed three grounds of unpatentability with either
Muzik (Ex. 1010) or Underwood (Ex. 1011) as the primary reference.
Dec. 5. Petitioner requests rehearing of our decision not to institute review
of claims 1, 2, 10, and 15 over Muzik. Petitioner argues in its request for
rehearing that the Decision adopted an incorrect construction of claim 1(b)
of the ’401 patent and, in so doing, incorrectly concluded that the adopted
construction is consistent with Patent Owner’s infringement allegations
before the district court. Req. Reh’g 6–7.
For the reasons discussed below, we deny Petitioner’s request for
rehearing.
II. STANDARD FOR REHEARING
Pursuant to 37 C.F.R. § 42.71(d):
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 in a motion, an opposition, or a reply.
When reconsidering a decision on institution, we review the decision for an
abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists
where a “decision [i]s based on an erroneous conclusion of law or clearly
erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.
IPR2019-01562
Patent 8,133,401 B2

3

Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed.
Cir. 1988).
III. ANALYSIS
A. Construction of Limitation 1(b)
Claim 1(b) of the ’401 patent requires “delivering slurry from the
slurry tank via a delivery line and extracting a portion of the slurry delivered
from the slurry tank via the delivery line and discharging said extracted
portion of the slurry from said delivery line.” Ex. 1002, 5:29–32. Neither
party proposed an express construction for this claim term. Dec. 5. In the
Decision, we analyzed the language of claim 1(b), as well as “the interplay
between claims 1(b) and 1(c),” and construed claim 1 to require that the
“extracted portion” be discharged from “the delivery line” separate from
“the rest of the slurry.” Id. at 9.
Petitioner contends the language of claim 1(b) is “ambiguous because
it is unclear exactly what must be discharged.” Req. Reh’g 1. According to
Petitioner, this claim limitation could require: (1) that the slurry from the
delivery line be discharged from the system, without specifying where in the
system this must happen or (2) that the extracted portion of the slurry must
be discharged from the delivery line. Id. at 1–2. Although Petitioner
concedes that the construction adopted in Decision is consistent with
Figure 1 of the ’401 patent, it contends consideration of claim 1(d) tends to
favor the implied construction relied upon in the Petition. Id. at 3–4.
Petitioner requests therefore that we grant rehearing and institute trial so that
the parties may fully brief what precisely claim 1(b) requires. Id. at 6.
A petition must set forth “[h]ow the challenged claim is to be
construed.” 37 C.F.R. § 42.104(b)(3). This is particularly important when a
IPR2019-01562
Patent 8,133,401 B2

4

claim term is ambiguous. Petitioner did not provide an express construction
of claim 1(b) in the petition, or specifically address the interplay between
this claim limitation and the other limitations of the claim. Thus, we could
not have overlooked or misapprehended the claim construction arguments
made in the request for rehearing. Accordingly, we deny Petitioner’s request
for rehearing on this ground.
B. Consistency with Patent Owner’s Infringement Contentions
In the Decision, we stated that “Patent Owner’s arguments before the
district court appear consistent with our construction requiring that the
extracted portion of lime slurry be discharged from the system from a ‘slurry
tank’ via the ‘delivery line’ separate from ‘the rest of the slurry.’” Dec. 12.
Petitioner contends this conclusion was both incorrect and unnecessary to
arrive at our adopted construction. Req. Reh’g 5–7. Thus, to the extent the
Board does not grant rehearing in this case, Petitioner requests that we
“withdraw” our “statement that ‘Patent Owner’s arguments before the
district court appear consistent with’” our adopted construction. Id. at 7.
Our determination that the adopted construction of claim 1(b)
“appears consistent” with Patent Owner’s arguments before the district court
was based on limited briefing from the parties and only noted an apparent
consistency, not a definitive one, with respect to claim 1(b). It should be
understood in this context, and not as a factual finding or definitive
conclusion. And because our statement regarding Patent Owner’s arguments
before the district court was not a definitive conclusion or factual finding,
we decline to withdraw it from the Decision.
IPR2019-01562
Patent 8,133,401 B2

5

C. Conclusion
Having considered Petitioner’s request for rehearing, we determine
that Petitioner has not established that we misapprehended or overlooked
any matter in declining to institute an inter partes review. Thus, the request
for rehearing is denied.
IV. ORDER
It is
ORDERED that Petitioner’s Request for Rehearing in IPR2019-01562
is denied.

IPR2019-01562
Patent 8,133,401 B2

6

PETITIONER:
Matthew W. Johnson
Marlee R. Hartenstein
JONES DAY
mwjohnson@jonesday.com
mhartenstein@jonesday.com

PATENT OWNER:
Thomas J. Fisher
Keri L. Schaubert
COZEN O’CONNOR
tfisher@cozen.com
kschaubert@cozen.com