CM2W JSC

Patent Trials and Appeals Board

Jan 7, 2021

IPR2020-01636 (P.T.A.B. Jan. 7, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Date: January 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SEKI S.P.A.,
Petitioner,
v.
CM2W JSC,
Patent Owner.

IPR2020-01636
Patent 10,201,263 B2

Before ULRIKE W. JENKS, ROBERT A. POLLOCK, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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Patent 10,201,263 B2
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INTRODUCTION
A. Background and Summary
SEKO S.p.A., (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–20 of U.S. Patent No. 10,201,263 B2 (Ex. 1001, “the
’263 patent”). Paper 1 (“Petition,” “Pet.”). CM2W JSC (“Patent Owner”)
filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). We
denied Petitioner’s request for authorization to file a Reply to the Patent
Owner Preliminary Response. Paper 8.
We have authority, acting on the designation of the Director, to
determine whether to institute an inter partes review under 35 U.S.C. § 314
and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
“the information presented in the petition filed under section 311 and any
response filed under section 313 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.” 35 U.S.C. § 314(a) (2018). A decision to
institute under 35 U.S.C. § 314 may not institute on fewer than all claims
challenged in the Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
(2018).
For the reasons set forth below, upon considering the Petition and the
Preliminary Response, we do not institute an inter partes review of any of
the challenged claims of the ’263 patent.
B. Real Parties in Interest
Petitioner identifies SEKO S.p.A. as the real party in interest. Pet. 2.
Patent Owner identifies CM2W JSC as the real party in interest.
Paper 4, 1 (Patent Owner’s Mandatory Notices).
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Patent 10,201,263 B2
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C. Related Matters
The parties identify Seko S.p.a. v. CM2W JSC, PGR2020-000061
(“’006 PGR”), in which we denied institution of a post-grant review of the
’263 patent. Pet. 2; Paper 4, 1.
D. The ’263 Patent
The ’263 patent, titled “Adaptive Dosing System,” discloses
[a]n adaptive dosing system having a control module, a flow
sensor unidirectionally connected to the control module for
reporting a volume of a fluid passed through the system, a pump
for dosing a required volume of the fluid and being uni-
directionally connected to and controlled by the control module
and a communication module bi-directionally connected with the
control module, the communication module being configured to
connect via Internet with an application server and a database
server.
Ex. 1001, codes (54), (57). Figure 1 is reproduced below.

1 At the time the petition for the ’006 PGR was filed, the ’263 patent was
eligible for post-grant review. Because the 9-month post-issuance period
has expired, the ‘263 patent is no longer eligible for post-grant review. See
35. U.S.C. § 321(c).
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Patent 10,201,263 B2
4

Figure 1 illustrates a schematic diagram of an adaptive dosing system
discussed in the ’263 patent. Ex. 1001, 3:4–5.
According to the ’263 patent, the claimed invention provides a system
“that can be monitored and adjusted remotely to prevent problems before
they occur.” Ex. 1001, 1:27–30. It achieves this result by using a persistent
connection to the internet and generating alarms/notifications based on
measured operational parameters. Id. at 7:16–28.
This way, problems may be prevented before they occur.
For example, when the flow rate gets down more than 30%, the
tubing of pump likely must be replaced or the pump will stop
feeding fluid to the laundry/dishwasher machines; when the
volume of certain chemical gets down the specified limit, an
alarm notification will be sent—must deliver
chemical/detergent; when the valves check fails, then an urgent
alarm notification will be sent and the dosing process will be
stopped. In an example, the dosing process could be terminated
by the dosing controller if for a predetermined period of time the
predetermined amount of fluid has not been delivered. In this
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Patent 10,201,263 B2
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case an alarm notification may be send to the remote monitoring
site to prevent problems related to the dosing process.
Id. at 7:28–42.
E. Illustrative Claims
Petitioner challenges claims 1–20 of the ’263 patent, of which claims
1, 13, and 20 are independent claims. Claim 1 is representative and recites:
1. An adaptive dosing system comprising:
a control module;
a flow sensor uni-directionally connected to the control
module for reporting a volume of a fluid passed through the
system;
at least a pump for dosing a required volume of the fluid
and being uni-directionally connected to and controlled by the
control module;
a communication module bi-directionally connected with
the control module, the communication module being configured
to connect via Internet with an application server and a database
server;
wherein the control module is configured to allow remote
control and configuration via the Internet by receiving and
executing dosing instructions from the application server based
on operational parameters set by a user via a client application;
wherein the control module is monitors the dosing and,
when a deviation from the operational parameters is detected by
the control module, the control module automatically corrects the
dosing by causing an adjustment to the dosing while the dosing
is in progress without stopping the at least a pump;
wherein, when the deviation causes an uncorrectable
dosing error, the control module further automatically interrupts
the dosing by stopping the at least a pump; and
wherein, when the at least a pump is automatically
interrupted due to the uncorrectable dosing error, the control
module sends an alert to a user device via the Internet.
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Patent 10,201,263 B2
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Ex. 1001, 11:21–51.
F. Prior Art and Asserted Ground
Petitioner asserts that claims 1–20 would have been unpatentable on
the following ground:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–20 103 Means2, Binder3
Petitioner relies on the declaration of Arthur Zatarain, PE. Ex. 1003.
ANALYSIS
A. Legal Framework of 35 U.S.C. § 314(a)
35 U.S.C. § 314(a) provides that
The Director [of the USPTO] may not authorize an inter
partes review to be instituted unless the Director determines that
the information presented in the petition filed under section 311
and any response filed under section 313 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.
Section 314(a) does not require the Director to institute an inter partes
review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed.
Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an
IPR proceeding.”). Rather, a decision whether to institute is within the
Director’s discretion, and that discretion has been delegated to the Board.
See 37 C.F.R. § 42.4(a) (2019); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
committed to the Patent Office’s discretion.”).
In General Plastic, the Board articulated a non-exhaustive list of
factors to be considered in evaluating whether to exercise discretion, under

2 US 2005/0166961 A1, published Aug. 4, 2005 (Ex. 1002).
3 US 2013/0201316 A1, published Aug. 8, 2013 (Ex. 1008).
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35 U.S.C. § 314(a), to deny a petition that challenges a patent that was
previously challenged before the Board. General Plastic Industrial Co., Ltd.
v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6,
2017) (Section II.B.4.i precedential). These factors are:
1. whether the same petitioner previously filed a petition directed
to the same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner
knew of the prior art asserted in the second petition or should
have known of it;
3. whether at the time of filing of the second petition the
petitioner already received the patent owner’s preliminary
response to the first petition or received the Board’s decision on
whether to institute review in the first petition;
4. the length of time that elapsed between the time the petitioner
learned of the prior art asserted in the second petition and the
filing of the second petition;
5. whether the petitioner provides adequate explanation for the
time elapsed between the filings of multiple petitions directed to
the same claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which the
Director notices institution of review.
Id. “[A]dditional factors may arise in other cases for consideration, where
appropriate.” Id. at 18.
B. Patent Owner’s 35 U.S.C. § 314(a) Arguments and Our Analysis
Petitioner did not address General Plastic or discretionary denial in
the Petition. See generally Pet.; see also Paper 8. In the Preliminary
Response, however, Patent Owner argues that we should exercise our
discretion to deny institution under 35 U.S.C. § 314(a). See Prelim. Resp.
2–27.
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Patent 10,201,263 B2
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With respect to factor 1, Patent Owner argues that Petitioner
previously filed a petition challenging the challenged claims of the ’263
patent in the ’006 PGR. Prelim. Resp. 4–5. Because the ’006 PGR was filed
by Petitioner and challenges the same claims, this factor weighs strongly in
favor of exercising our discretion to deny institution of the present
proceeding. Compare ’006 PGR, Paper 1 (challenging claims 1–20 of the
’263 patent) with this Petition (challenging claims 1–20 of the ’263 patent).
With respect to factor 2, Patent Owner argues that Petitioner knew of
Means before filing the ’006 PGR—it was the basis of the ’006 PGR—and
that Petitioner either knew of Binder or could have found Binder with
reasonable diligence prior to filing the ’006 PGR. Prelim Resp. 5–10.
According to Patent Owner, Binder is a published patent application and is a
member of a portfolio of ten other continuation and division application with
the same specification. Id. at 6–7. Patent Owner also points out that the
quick turn-around time between the denial of institution in the ’006 PGR and
the filing of this Petition shows the ease in which Binder could have been
located. Id. at 8–9 (citing Valve Corp. v. Electronic Scripting Products, Inc.,
IPR2019-00064, -65, -85, Paper 10 at 11-12 (PTAB May 1, 2019)
(precedential)). Alternatively, Patent Owner argues Petitioner cited
references in the petition of the ’006 PGR that are cumulative of Binder. Id.
at 9–10.
In the ’006 PGR, Petitioner challenged claims 1–20 based on Means.
See generally ’006 PGR, Paper 1. Accordingly, Petitioner knew of Means at
the time it filed the earlier petition.
Although there is no evidence that Petitioner knew of Binder when it
filed the ’006 PGR petition, Binder is a published United States patent
application. See Ex. 1008. Petitioner relies on Binder primarily for its
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“remote control over the Internet system” (Pet. 12–13) and Petitioner has not
sufficiently explained why it could not have been found prior to November
11, 2019 when the ’006 PGR was filed. See General Plastic, Paper 19, 204
(“The relevant issue under factor 2 is not, as Petitioner has framed it,
whether the prior art references relied on in the follow-on petitions constitute
printed publications, but whether they could have been found with
reasonable diligence.”). Accordingly, this factor weighs in favor of
exercising our discretion to deny institution of the present proceeding.
With respect to factor 3, Patent Owner argues that prior to filing the
Petition, Petitioner “already had both (i) CM2W’s PGR Preliminary
Response, which was filed and served on February 19, 2020, and (ii) the
Board’s decision denying institution, which issued May 4, 2020.” Prelim.
Resp. 10–11. According to Patent Owner, “before filing its current petition,
Seko had seven months to consider CM2W’s PGR POPR and over four
months to consider the Board’s non-institution decision.” Id. at 12. Because
Petitioner has Patent Owner’s Preliminary Response and our decision
denying institution in the ’006 PGR for several months before filing the
Petition, factor 3 weighs strongly in favor of exercising our discretion to
deny institution of the present proceeding. Compare ’006 PGR, Paper 11
(Patent Owner’s Preliminary Response, filed February 19, 2020) and Paper
16 (Institution Decision, filed May 4, 2020), with Paper 1 (Petition, filed
September 18, 2020).
With respect to factors 4 and 5, Petitioner does not provide any
explanation as to when it learned of Binder or as to the length of time
elapsed between the filings of the petition in the ’006 PGR and the Petition

4 This portion of General Plastic was not designated precedential.
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Patent 10,201,263 B2
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in the present proceeding. To the extent a reasonable explanation exists for
Petitioner’s delay, it was incumbent upon Petitioner to identify those
circumstances in its Petition. See Paper 8 (explaining that it was reasonably
foreseeable that Patent Owner would argue General Plastic and that
Petitioner should have addressed the factors in the Petition). Thus, factors 4
and 5 weigh in favor of exercising our discretion to deny institution of the
present proceeding.
With respect to factor 6, Patent Owner argues that “efficiency
considerations weigh in favor of denying institution.” Prelim. Resp. 23.
According to Patent Owner, “[a]llowing Seko’s follow-on petition to
proceed to trial would negatively impact the Board’s resources by
incentivizing gamesmanship at the PTAB by both Petitioners and Patent
Owners, resulting in genuine issues regarding the Board’s finite resources.”
Id. We agree. “In general, having multiple petitions challenging the same
patent, especially when not filed at or around the same time as in this case, is
inefficient and tends to waste resources.” Paypal, Inc. v. IOEngine, LLC,
IPR2019-00884, Paper 22 at 17 (PTAB Oct. 3, 2019). In the absence of a
compelling reason to allow Petitioner a second bite at the apple, this factor
weighs strongly in favor of exercising our discretion to deny institution of
the present proceeding.
With regard to factor 7, Patent Owner argues that it “is neutral, as
there is no real argument one way or the other regarding the Board’s ability
to complete its review within the statutory time frame.” Prelim. Resp. 22.
We agree. We know of no reason why we could not meet the requirement of
35 U.S.C. § 316(a)(11) to issue a final determination within one year after
institution. Accordingly, we determine that this factor is neutral to the
analysis.
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We have considered the circumstances and facts before us in view of
the General Plastic factors. Because the analysis is fact driven, no single
factor is determinative of whether we exercise our discretion to deny
institution under § 314(a). However, six of the factors (factors 1, 2, 3, 4, 5,
6) weigh in favor—and several strongly in favor—of exercising our
discretion and only a single factor (factor 7) is neutral. Based on the facts of
this case, we find the first, third, and sixth factors—all of which strongly
weigh in favor of exercising our discretion—the most important.
Accordingly, we determine that the circumstances presented here weigh in
favor of discretion under § 314(a) to deny institution of inter partes review

CONCLUSION
For the foregoing reasons, we exercise our discretion to deny inter
partes review in this proceeding based on 35 U.S.C. § 314(a) and General
Plastic.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s request for inter partes review is denied
and no inter partes review is instituted.
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Patent 10,201,263 B2
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FOR PETITIONER:
Alastair J. Warr
Kevin D. Jablonski
FISHERBROYLES, LLP
alastair.warr@fisherbroyles.com
kevin.jablonski@fisherbroyles.com

FOR PATENT OWNER:
Craig D. Leavell
Kyle A. Forgue
BARNES & THORNBURG LLP
craig.leavell@btlaw.com
kyle.forgue@btlaw.com