Johnson Controls, Inc.v.Wildcat Licensing WI, LLC

Patent Trial and Appeal Board

Aug 29, 2014

09992326 (P.T.A.B. Aug. 29, 2014)

Trials@uspto.gov Paper 18
571-272-7822 Entered: August 29, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JOHNSON CONTROLS, INC.,
Petitioner,

v.

WILDCAT LICENSING WI, LLC,
Patent Owner.
____________

Case IPR2014-00304
Patent 6,763,573 B2
____________

Before JAMES B. ARPIN, CARL M. DEFRANCO, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

MITCHELL, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71
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Patent 6,763,573 B2

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I. INTRODUCTION
Patent Owner, Wildcat Licensing WI, LLC, requests reconsideration
of our decision (Paper 8, “Dec.”) instituting inter partes review of claims 24
and 25 (“the challenged claims”) of Patent No. US 6,763,573 B2 (Ex. 1001,
“the ’573 patent”). Paper 12 (“Req. Reh’g”). For the reasons discussed
below, we deny the request for rehearing.
II. DISCUSSION
When rehearing a decision on petition, the Board reviews the decision
for an abuse of discretion. 37 C.F.R. § 42.71(c). 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., 840 F.2d 1565, 1567 (Fed.
Cir. 1988) (citations omitted) . A request for rehearing “must specifically
identify all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was previously addressed.”
37 C.F.R. § 42.71(d).
The contention at the heart of Patent Owner’s request for rehearing is
that we overlooked controlling case law and arguments made by Patent
Owner by adopting a claim construction that encompasses a “fasten it wrong
and fix it later” system, which Patent Owner asserts “was affirmatively
given up during prosecution.” Req. Reh’g 1. Specifically, Patent Owner
asserts that our application of the transitional phrase, “comprising,” in the
challenged claims overlooks, and is inconsistent with, the intrinsic evidence;
that we overlooked Patent Owner’s arguments concerning how Gass fails to
teach the “predetermined sequence” and the “output” features of the
challenged claims; and that we overlooked Patent Owner’s arguments
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Patent 6,763,573 B2

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concerning the “torque monitor” feature of the challenged claims. Id. at 1-2
(citing In re Suitco Surface, Inc. 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
We did not overlook Patent Owner’s arguments; we considered them,
but were not persuaded by them. For instance, Patent Owner argues that
the only reason the challenged claims were allowed to issue was
because they were expressly limited only to read on a “fasten it
right the first time” system such as, for example, the Figure 4
embodiment when taken in combination with the disclosure
provided by the originally filed claims and the predetermined
sequence program embodiment mentioned at col. 7, lines 48-57.
Id. at 4 (citation omitted). In our decision to institute inter partes review, we
addressed these arguments, but found them unpersuasive. See Dec. 10–16
(addressing claim construction). We stated that, as Patent Owner admitted,
Figure 4 of the ’573 patent and its description “is an express teaching that it
is possible to incorrectly insert fasteners in the fastening locations 52a-52c.”
Id. at 11. We also stated that the originally-filed claims and the ordinary
meaning of the claim term “indicating” “does not limit or negate the
admittedly express teaching of a ‘fasten it wrong and fix it later’ system, as
depicted in Figure 4 and described in the ’573 patent.” Id. at 12. Finally, as
we noted in the decision on institution and as Patent Owner expressly
acknowledges, the Specification of the ’573 patent uses the permissive
“may” when referring to the electronic controller as including the
predetermined sequence program embodiment. Req. Reh’g. 4; Dec. 5.
To the extent that Patent Owner argues that it “affirmatively gave up”
the ability to have a claim with the scope to cover a “fasten it wrong and fix
it later” system (see Req. Reh’g 1, 4), that argument does not appear to have
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Patent 6,763,573 B2

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been made in Patent Owner’s Preliminary Response.1 A request for
rehearing is not an opportunity to present new arguments or evidence that
could have been presented and developed in the petition. See 37 C.F.R.
§ 41.104(b)(4) (stating “[t]he petition must specify where each element of a
challenged claim is found in the prior art patents or printed publications
relied upon”). We could not have overlooked or misapprehended arguments
or evidence not presented and developed by Patent Owner in the first
instance.
In any event, we are not persuaded that the prosecution history of the
’573 patent shows that Patent Owner affirmatively relinquished claim scope
that would encompass a “fasten it wrong and fix it later” system. We did
consider the Examiner’s statement for allowance (see Ex. 1007, 3–4; Prelim.
Resp. 12–13, 33–34, 36) and the general statement in the Specification of the
’573 patent concerning the goal of providing “a more reliable and more fool-
proof way to conduct fastening operations” (see Ex. 1001, col. 2, ll. 39-40,
Abstract; Prelim. Resp. 6, 26–27), along with Figure 4 and its description,
the meaning of the claim term “indicating,” and the predetermined sequence
program embodiment. Dec. 25. We are unpersuaded on this record,
however, that Patent Owner affirmatively surrendered claim scope that
would encompass a “fasten it wrong and fix it later” system.
Our decision that additional fastening operations between the first and
second fastening operations are not excluded because claim 24 uses the
transitional term “comprising” is not inconsistent with controlling precedent

1 Patent Owner also makes another argument that was not made in its
Preliminary Response. See Req. Reh’g 8 (arguing Patent Owner’s proffered
constructions for a “fasten it right the first time” system giving effect to the
transition phrase, “comprising.”).
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Patent 6,763,573 B2

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because we do not agree that the prosecution history of the ’573 patent
“compels the conclusion that the claims be construed to only cover a ‘fasten
it right the first time’ system.” Req. Reh’g 7-8 (citing Suitco Surface, 603
F.3d at 1260) (emphasis added). We have construed the claims consistently
with the Specification of the ’573 patent. Suitco Surface, 603 F.3d at 1260.
Finally, we did not overlook Patent Owner’s arguments concerning the Gass
reference; we simply were not persuaded by them because we do not agree
that Patent Owner’s claim construction was the broadest reasonable
construction in light of the Specification. See Req. Reh’g 8–9.2
III. CONCLUSION

For the foregoing reasons, we did not abuse our discretion when
determining that Petitioner demonstrated a reasonable likelihood of
prevailing on its assertion that claims 24 and 25 of the ’573 patent are
unpatentable. Accordingly, Patent Owner’s request for rehearing is denied.

2 Because we did not institute inter partes review on any ground based on
the Wilhelm reference, we need not address Patent Owner’s argument as to
this reference. See Req. Reh’g 13.
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PETITIONER:

George C. Beck
Chase J. Brill
FOLEY & LARDNER LLP
gbeck@foley.com
cbrill@foley.com

PATENT OWNER:

Thomas G. Pasternak
Stephanie L. Schonewald
STEPTOE & JOHNSON LLP
tpastern@steptoe.com
sschonew@steptoe.com