Jiaxing Super Lighting Electric Appliance Co., Ltd.

Patent Trials and Appeals Board

Oct 12, 2021

IPR2020-00208 (P.T.A.B. Oct. 12, 2021)

Trials@uspto.gov Paper 32
571-272-7822 Entered: October 12, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MAXLITE, INC.,
Petitioner,
v.
JIAXING SUPER LIGHTING ELECTRIC APPLIANCE CO., LTD.,
Patent Owner.

IPR2020-00208
Patent 9,807,826 B2

Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
MOORE, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request on Rehearing
37 C.F.R. § 42.71(d)

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Patent 9,807,826 B2

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I. INTRODUCTION
A. Background
MaxLite, Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1, 7, and 12–18 (the “challenged claims”) of U.S. Patent
No. 9,807,826 B2 (Ex. 1001, the “’826 patent”). Paper 1 (“Pet.”). Jiaxing
Super Lighting Electric Appliance Co., Ltd. (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). Petitioner filed an
authorized Reply to the Preliminary Response regarding the priority date of
the challenged patent. Paper 7 (“Reply”). Patent Owner filed an authorized
Sur-Reply to the Reply. Paper 9 (“Sur-Reply”).
We denied the Petition and did not institute an inter partes review of
any of the challenged claims. Paper 10. Petitioner filed a Request for
Rehearing. Paper 11. We subsequently granted Petitioner’s Request for
Rehearing and, thus, granted institution of an inter partes review of the
challenged claims. Paper 14 (“Dec.” or “Decision”).
Patent Owner requests rehearing of our Decision to institute review.
Paper 18 (“PO Reh’g Req.”). Specifically, in its Request for Rehearing,
Patent Owner contends that we erred for two reasons. First, Patent Owner
contends that the Board overlooked the Fintiv analysis in reversing the
denial of institution. Id. at 3–12. Second, Patent Owner contends that the
Board “overlooked the fact that Petitioner admitted it had not read the
priority applications and therefore could not possibly meet its initial burden
of production under Dynamic Drinkware.” Id. at 13–15. We address each
of these arguments below. Having considered Patent Owner’s Request for
Rehearing, we determine that Patent Owner has not shown that we abused
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our discretion in instituting this IPR. We deny Patent Owner’s request for
the following reasons.
II. STANDARD OF REVIEW
37 C.F.R. § 42.71(d) provides that:
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.]

See Office Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019)).
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) (citations omitted).
III. THE BOARD DECLINES TO EXERCISE ITS DISCRETION TO
DENY INSTITUTION UNDER § 314(a)
Patent Owner submits that our Decision overlooked Apple Inc. v.
Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
(“Fintiv”), and that we should have conducted a Fintiv analysis and
exercised our discretion to deny institution. PO Reh’g Req. 3–12. Patent
Owner recognizes that the Preliminary Response did not raise Fintiv, but
contends that “the circumstances are now vastly different.” Id. at 4.
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We need not decide whether Fintiv may properly be raised for the first
time in a request for rehearing, a contention for which we express no opinion
at this time, because we conclude for the reasons detailed below that a
holistic assessment of the Fintiv factors does not favor exercise of our
discretion to deny institution.
A. Overview
In assessing whether to exercise such discretion, the Board weighs the
following factors:
1. whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the
parties;
4. overlap between issues raised in the petition and in the parallel
proceeding;
5. whether the petitioner and the defendant in the parallel
proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of
discretion, including the merits.
Fintiv at 6. Recognizing that “there is some overlap among these factors”
and that “[s]ome facts may be relevant to more than one factor,” the Board
“takes a holistic view of whether efficiency and integrity of the system are
best served by denying or instituting review.” Id.
A parallel district court case, Super Lighting Electric Appliance Co.,
Ltd. v. MaxLite, Inc., No. 2:19-cv-04047-PSG-MAA (C.D. Cal.) (“District
Court Case”), which involves the ’826 patent, is pending in the Central
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District of California. See PO Reh’g Req. 3–4. The date for jury trial was
set for June 29, 2021, but has been reset to February 15, 2022, nearly eight
months after the original trial date, and discovery dates were extended
approximately five months. Ex. 3003, 2. The Court entered a Markman
Order on May 27, 2021. Ex. 3002. On July 27, 2021, the parties agreed to
extend discovery deadlines (Ex. 3004), and on August 19, 2021, discovery
dates were further extended (Ex. 3005).
We address each Fintiv factor below.
B. Factor 1 — Stay of Related Litigation Proceeding
The District Court has already denied a motion to stay on June 17,
2020, before the decision denying institution in this case (Paper 10). PO
Reh’g Req. 6. Accordingly, we find that this factor neither favors nor
weighs against discretionary denial of inter partes review.
C. Factor 2 — Proximity of Court’s Trial Date
Patent Owner argues that the Petition should be denied because trial in
the District Court Case is scheduled approximately four months before a
final determination would issue in this case in June 2022. PO Reh’g Req. 6–
7. However, as noted above, the trial date has been delayed once and the
discovery deadline was extended at least six months. Exs. 3003–3005.
Thus, further delay in the trial date is likely.
Given the early trial date but possibility of delay, this factor slightly
favors exercising discretion to deny institution of inter partes review.
D. Factor 3 — Investment in the Parallel Proceeding
It is undisputed that claim construction briefing has been completed in
the District Court Case at this time, and a Markman Order has been entered.
Ex. 3002.
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Nonetheless, based on the record before us, it appears that much work
remains to be completed in this case. For instance, most of the work in a
district court case occurs after the Markman hearing, which in this case
occurred just over four months ago. Ex. 3002. For example, we understand
that as of the date of institution, fact discovery had begun but that it had
been delayed. Ex. 3004. Also, the parties had served infringement and
invalidity contentions, but the parties had not yet started expert discovery.
Ex. 3003.
Patent Owner asserts Petitioner did not diligently file its Petition,
waiting seven months to file the Petition after it was served with the district
court complaint—a petition that Patent Owner suggests is not very
complicated because it involves only one ground of anticipation. PO Reh’g.
Req. 8. We further note that there is no evidence that Patent Owner
responded to Petitioner’s invalidity contentions before the filing of the
Petition, or that Petitioner otherwise took improper advantage by delaying
the filing of the Petition.
We also consider that due to internal scheduling the decision on
rehearing was delayed as much as 11 months.
In view of the work relating to validity that remains to be completed
in the District Court Case, and the unavoidable delay of this case, this factor
weighs against exercising discretion to deny inter partes review.
E. Factor 4 — Overlap With Issues Raised in Parallel Proceeding
Patent Owner asserts that “Super Lighting has asserted claims 1, 9, 10,
and 14 of the ’826 patent, of which claims 1 and 14 are at issue in this
proceeding” with the same theory, i.e. anticipation by Duan. Id. at 8–9.
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Thus, although claim 1 and 14 overlap there are 7 other claims that could
potentially be invalidated in this IPR.
Given the partial but incomplete overlap, we find that this factor
weighs slightly in favor of exercising discretion to deny.
F. Factor 5 — Commonality of Parties in Parallel Proceedings
Patent Owner asserts that the Petitioner is a party to the District Court
Case. PO Reh’g Req. 10. Given the identity of the parties in this
proceeding and District Court case, we find that this factor favors exercising
discretion to deny institution.
G. Factor 6 — Other Circumstances
Patent Owner contends that “Although the Board has found that ‘there
is a reasonable likelihood Petitioner would prevail with respect to at least
one claim challenged in the Petition,’ the weight of this factor should only at
best be neutral.” Id. at 10. Patent Owner bases this assertion on the Board’s
alleged failure to consider that Petitioner did not translate the Chinese
priority documents and the fact that the Board did not assert that the merits
were strong in the Decision that granted institution. Id.
However, we have reviewed Petitioner’s unpatentability arguments
and Patent Owner’s Preliminary Response, and based on the record before
us, we disagree with Patent Owner that the merits are “close[].” See id.
Rather, we find that Petitioner has shown a reasonable likelihood of success
on the merits and do not find any weakness in Petitioners contentions at this
stage. We find the alleged weakness in Petitioner’s showing--the assertion
that the combination of Figures in Duan was improperly done--to be
properly done. Thus, we find for the purpose of this Decision that
Petitioner’s showing is particularly strong so as to weigh against exercising
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discretion to deny under factor 6. See Fintiv, Paper 11 at 14‒15 (noting that
the merits favor institution under factor 6 “if the merits of a ground raised in
the petition seem particularly strong.”).
Additionally, we consider that due to internal Board scheduling the
decision on rehearing, and thus institution, was delayed as much as 11
months by no fault of the parties in this case. Thus, we find that this factor
weighs against exercising discretion to deny. Patent Owner argues that it
was prejudiced by the delay because it “proceeded in the parallel litigation
with the understanding that institution was denied.” PO Reh’g Req. 11.
However, a decision on institution is not final until the ruling on rehearing
so Patent Owner did not have a proper basis for its “understanding that
institution was denied.” For the reasons above, this factor weighs against
exercising discretion to deny inter partes review.
H. Conclusion
The Fintiv factors weigh on both sides, however, much work remains
to be completed in the parallel proceeding, there is less than complete
overlap, strong merits, and significant delay was due to internal Board
delays. These factors favor institution and outweigh other factors favoring
denial. Thus, based on our assessment of the Fintiv factors, we decline to
exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.
IV. THE BOARD DID NOT OVERLOOK RELEVANT FACTS IN ITS
PRIOR REHEARING
Patent Owner asserts that the burden of production regarding priority
of a challenged patent “can only be shifted to [Patent Owner] ‘upon
satisfaction’ of the Petitioner’s ‘initial burden of production . . . [and] the
Board overlooked the fact that . . . Petitioner’s counsel admitted they had not
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read the priority applications, which are all in Chinese and contain dozens of
pages of text.” PO Reh’g Req. 13 (citing Dec. 3). Patent Owner suggests
that by not reading the priority documents, but making assertions about
them, Petitioner was allowed to meet its burden by merely asserting lack of
priority without any basis for that assertion. Id.
We disagree. Under the Federal Circuit precedent we applied, we
made the following determinations: first, Patent Owner “is not presumed to
be entitled to the earlier filing dates of ancestral applications which do not
share the same disclosure” (citing Dec. 8); and second, under Tech.
Licensing, after the party asserting prior art establishes a date prior to the
filing date of the challenged patent, the patent owner “has the [production]
burden of going forward with evidence . . . that the prior art . . . is not prior
art because the asserted claim is entitled to the benefit of a filing date prior
to the alleged prior art.’” Decision at 7–8 (quoting Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). In other words,
Petitioner does not have the initial burden in the Petition to antedate the
filing dates of ancestral applications of the challenged patent.
Thus, to the extent it was unclear in the Decision, the Decision only
required Petitioner to present prior art with “a date prior to the filing date of
the challenged patent,” not prior to any possible date that Patent Owner may
claim prior to the filing date. Accordingly, Patent Owner’s misunderstands
the Decision when it contends that “[t]he Board held that Petitioner met its
initial burden ‘by contending that the challenged patent is not entitled to any
priority date earlier than its filing date’ because none of the priority
applications disclosed a ‘mode determination circuit.’” PO Reh’g Req. 13
(emphasis added) (quoting Dec. 5). The part of the Decision quoted by
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Patent Owner is dicta that was not necessary to resolve the dispute before us
in the Decision.1 Thus, we are not persuaded that we overlooked
Petitioner’s initial burden of production because we do not agree with Patent
Owner’s suggestion of what is necessary to meet that burden.
V. ORDER
Accordingly, it is:
ORDERED that Patent Owner’s Request for Rehearing is denied.

1 The cited statements were made while distinguishing Board cases in which
a petitioner had not discussed priority at all in the relevant petitions.
Importantly, as discussed above, we went on to explain that we were
“resolv[ing] the tension between framing the issue as we did in the Decision
[Denying Institution] and shifting the burdens as Petitioner asserts is
required by Federal Circuit precedent.” Dec. 7.
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For PETITIONER:
Allison Lucier
Robert Hill
William E. Sterling
HOLLAND & KNIGHT LLP
allison.lucier@hklaw.com
robert.hill@hklaw.com
william.sterling@hklaw.com

For PATENT OWNER:

Simon Lu
Matthew Argenti
Michael Rosato
Quincy Lu
WILSON SONSINI GOODRICH & ROSATI
margenti@wsgr.com
mrosato@wsgr.com
qalu@wsgr.com
simon@super-lamps.com