Takeaway: In asserting obviousness based on a “simple design choice” rationale, the Petition must explain why the proposed modification would have been a simple design choice and how the simple proposed modification would have met the limitations of the challenged claims.

In its Decision, the Board denied Petitioners’ Request for Rehearing of the Board’s decision not to institute inter partes review of the ‘352 patent. The Board was not persuaded that its earlier determination to not institute was an abuse of discretion or misapprehension or overlooking of any matter that Petitioners had asserted.

The Board had denied institution of inter partes review of claims 1, 7, 8, 10, 11, 19, 20, 64-67, 70-72, and 74-76 of the ‘352 patent. Petitioners then requested rehearing of this decision. Also, Petitioners requested that expanded panel of the Board on rehearing.

Petitioners had asserted that “the Board abused its discretion because (1) the Decision is contrary to, and inconsistent with, application of Board rules in other cases” and (2) the Decision misapplied the law of obviousness because the prior art provides a motivation to combine the cited references[.]”

For example, Petitioners had suggested that the Board improperly dismissed the Petition because it had not complied with “a specific, rigid format” not required by the rules. The Board replied by indicating that it had denied institution “because Petitioners’ arguments, analysis, and evidence did not establish a reasonable likelihood that Petitioners would prevail in proving that at least one challenged claim is unpatentable based on the cited references” rather than because of any failure of the Petition to follow “rigid petition format.”

In particular, the Board indicated that “the Petition was denied because the Petition: (1) did not provide a detailed explanation of the significance of the evidence, as required by 37 C.F.R. § 42.22(a)(2). . . ; (2) did not specify where each element of the claim is found in the prior art patents or printed publications relied upon, as required by 37 C.F.R. § 42.104(b)(4) . . . ; and (3) did not identify the relevance of the evidence to the § 103 challenge raised, as required by 37 C.F.R. § 42.104(b)(5)[.]”  The Board then went on to discuss in greater detail “two specific examples of where the evidence and argument in the Petition did not meet the requirements of the rules” which were a first example concerning the recited “power switching circuit” and a second example concerning recited “current sensing circuit.”

Petitioners then asserted that the non-institution in the instant case was inconsistent with the Board’s institution of inter partes review in IPR2015-00609, which Petitioner alleged to “[involve] the same petition format, style of argument, and expert declarant the Board found deficient here.” The Board disagreed, stating that IPR2015-00609 “involved a different patent, different references[,] and different issues” and that the instant “Petition was not denied because of its format, style of argument, or expert declarant.” (Italics in original.)

Petitioners also asserted that the Board abused its discretion “in the application of the law of obviousness by refusing to acknowledge express teachings in the prior art as a motivation to combine references.” In this regard, Petitioners had essentially argued that “[i]t is a matter of simple design choice to use the current sensing circuit of Eccleston with the microprocessor of McGrath to display the sensed current.” But the Board, in response, found that “the Petition did not provide a persuasive fact-based analysis as towhy it would have been a ‘simple design choice’ and how the ‘simple’ proposed modification would have met the specific microcontroller limitations of the challenged claims.” (Italics in original.)

As for Petitioner’s request for an expanded panel, the Board began by noting that parties “are not permitted to request panel expansion.” The Board then effectively treated Petitioners’ request as a suggestion, but nevertheless determined that the panel would not be expanded.

Hopkins Manufacturing Corporation and The Coast Distribution System, Inc. v. Cequent Performance Products, Inc., IPR2015-00616

Paper 11: Decision Denying Request for Rehearing

Dated: November 4, 2015

Patent: 6,068,352

Before: William V. Saindon, Barry L. Grossman, and Jeremy M. Plenzler Written by: Grossman