Histologics, LLCv.CDx Diagnostics, Inc.

Patent Trial and Appeal Board

Oct 16, 2014

09360425 (P.T.A.B. Oct. 16, 2014)

Trials@uspto.gov Paper No. 9
571-272-7822 Entered: October 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HISTOLOGICS, LLC,
Petitioner,

v.

CDX DIAGNOSTICS, INC. and
SHARED MEDICAL RESOURCES, LLC,
Patent Owners.
____________

Case IPR2014-00779
Patent 6,258,044 B1
____________

Before PHILIP J. KAUFFMAN, SCOTT E. KAMHOLZ, and
BARRY L. GROSSMAN, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

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

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Patent 6,258,044 B1

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I. INTRODUCTION
Histologics, LLC filed a Request for Rehearing (Paper 7, “Req.”) of
our Decision (Paper 6, “Dec.”) to deny institution of an inter partes review.
Histologics contends that 35 U.S.C. § 315(b) does not bar this inter partes
review. We have considered the Request for Rehearing but decline to
modify the Decision.
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.” An abuse of
discretion occurs when a “decision was based on an erroneous conclusion of
law or clearly erroneous factual findings, or . . . a clear error of judgment.”
PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565,
1567 (Fed. Cir. 1988). See also 37 C.F.R. § 42.71(d). In its request for
rehearing, the dissatisfied party must identify the place where in the record it
previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d).
III. DISCUSSION
A. Background
Shared Medical Resources, LLC (“SMR”), co-owner of U.S. Patent
No. 6,258,044, filed and served a complaint against Histologics in a civil
action for infringement of the ’044 patent in the U.S. District Court for the
Central District of California (“the ’612 action”). Dec. 2. The other
co-owner, CDx Diagnostics, Inc., did not join the ’612 action because it was
in bankruptcy proceedings at the time. Id. The Court dismissed the ’612
action, without prejudice, for failure to join CDx but stayed the ’612 action
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pending resolution of the bankruptcy proceeding. Id. at 3. CDx eventually
emerged from bankruptcy, and the Court lifted the stay. Id. Meanwhile,
SMR and CDx had jointly brought a second action against Histologics for
infringement of the ’044 patent in another court, and that action was
transferred to the U.S. District Court for the Central District of California.
Id. at 3-4. The ’612 action was consolidated into the transferred action and
dismissed in favor of the transferred action. Id. at 4.
B. Analysis
Histologics argues that we committed legal error in determining that
service of the complaint in the ’612 action triggered the one-year deadline
under 35 U.S.C. § 315(b). Req. 1. In particular, Histologics argues that (a)
the complaint in the ’612 action was a nullity, because SMR lacked standing
to bring the complaint alone and without co-owner CDx; (b) SMR’s
complaint was dismissed without prejudice, and it was only the underlying
civil action that was stayed; and (c) the subsequent lifting of the stay did not
revive the dismissed complaint. Id.
We gave Histologics’s arguments and evidence complete
consideration and addressed them fully in the Decision. As we explained,
the issue in this case was whether service of SMR’s complaint was nullified
by the Court’s dismissal of the ’612 action. Dec. 5. We explained that
service was not nullified, because Histologics remained answerable to the
Court for the allegations made in the original ’612 action complaint, and that
the parties were not left in the same legal position as if the ’612 action had
never been filed. Id. Histologics does not address this determination or
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explain how it was in error, other than by advancing alternative legal
theories.
A Request for Rehearing is not an opportunity to re-argue old
arguments or to present new evidence or arguments. Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet
Histologics does all of these, by repeating its Petition arguments, amplifying
them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without
showing good cause why the evidence should be considered. See id. As to
the old arguments, we addressed them fully in the Decision. As to the new,
we cannot have misapprehended or overlooked arguments and evidence not
presented in the Petition.
We gave Histologics’s Petition full consideration and explained the
reasoning underlying our determinations. A request for rehearing is not a
second chance for a party to present its case. We are not persuaded of an
abuse of discretion.
IV. ORDER
Accordingly, it is
ORDERED that the Request for Rehearing is denied.

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For Petitioner:

Rudolph Telscher
Bryan Wheelock
Greg Meyer
HARNESS, DICKEY & PIERCE, PLC
rtelscher@hdp.com
bwheelock@hdp.com
gmeyer@hdp.com

For Patent Owner:

Peter Berger
LEVISOHN BERGER LLP
pberger@llbl.com