Merck Patent GmbH

Patent Trials and Appeals Board

Oct 21, 2021

PGR2021-00054 (P.T.A.B. Oct. 21, 2021)

Trials@uspto.gov Paper 16
571.272.7822 Date: October 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CQV CO., LTD.,
Petitioner,

v.

MERCK PATENT GMBH,
Patent Owner.
____________

PGR2021-00054
Patent 10,647,861 B2
____________

Before ERICA A. FRANKLIN, JO-ANNE M. KOKOSKI, and
JON B. TORNQUIST, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

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

PGR2021-00054
Patent 10,647,861 B2
2
INTRODUCTION
Merck Patent GMBH (“Patent Owner”) requests a rehearing of the
Decision Granting Institution (“Decision”) of a post-grant review of claims
1–22 of U.S. Patent No. 10,647,861 B2 (Ex. 1001, “the ’861 patent”) entered
on August 13, 2021 (Paper 7, “Dec.”). Paper 9 (“Reh’g Req.”).
Independent claims 1 and 18 are illustrative and read as follows:
1. Al2O3 flakes having a particle thickness of 130-400 nm,
a D50-value of 15-30µm, a D90-value of 30-45 µm, a D10-value of
<9.5µm and wherein the flakes are α-alumina flakes.

18. Al2O3 flakes having a particle thickness of 130-400 nm,
a D50-value of 15-30µm, a D90-value of 30-45 µm, a D10-value of
<9.5µm, which are doped with TiO2, ZrO2, SiO2, SnO2, In2O3, or
ZnO or a combination thereof and wherein the flakes are α-
alumina flakes.

Ex. 1001, 13:53–56, 15:19–23.
The claims are challenged based on the following six grounds:

1 Xirallic® product in public use prior to the effective filing date. See
Petition (Paper 2, “Pet.”) 11–25.
2 Masuko, JP2001-232284A, published Aug. 28, 2001 (Certified English
Translation). (“Masuko,” Ex. 1029).
3 Pfaff, Special Effect Pigments: Technical Basics and Applications, 2d Rev.
Ed. 2008, EUROPEAN COATINGS TECH FILES, 72–75. (“Pfaff,” Ex. 1034).
4 Teaney et al., New Effect Pigments Using Innovative Substrates: Silica and
alumina flakes extend the product variety and performance range of
pearlescent pigments, 4 EUROPEAN COATINGS JOURNAL, 90 (1990)
(“Teaney,” Ex. 1032).
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–13, 15–17, 21 103 Xirallic® product,1 Masuko,2
Pfaff,3 Teaney4
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Patent 10,647,861 B2
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Pet. 5–6; Dec. 7–8.
Upon consideration of the Petition, Preliminary Response, and
evidence of record, we determined that Petitioner demonstrated that, if
unrebutted, it is more likely than not that at least one of the claims
challenged in the Petition is unpatentable. Dec. 2. In particular, we found
such was the case regarding the two grounds relying on the Xirallic®

5 Shimizu et al., WO 2012/084097 A1, published Jun. 28, 2012. (“Shimizu,”
Ex. 1030).
6 Schumacher et al., US 2011/0226161 A1, published Sep. 22, 2011
(“Schumacher,” Ex. 1035).
7 Lee et al., US 2009/0320719 A1, published Dec. 31, 2009 (“Lee-719,” Ex.
1042).
8 Prosecution History of the ’861 patent, Appeal Brief for Application No.
14/264,431, filed Apr. 29, 2014, (“Applicant’s Admissions,” Ex. 1003).
9 Petitioner argues this Ground based upon Pfaff, Masuko, Applicant’s
Admissions, and Xirallic® product. See Pet. 85–88. We consider that
combination rather than the combination set forth in the list of challenges at
page 5 of the Petition.
10 Lee et al., US 2010/0015445 A1, published Jan. 21, 2010 (“Lee-445,” Ex.
1043).
11 Lee et al., US 2009/0186225 A1, published Jul. 23, 2009 (“Lee-225,” Ex.
1044).

1–3, 5–13, 15–17, 21 103 Masuko, Shimizu,5 Teaney, Pfaff,
Schumacher6
4 103 Masuko, Shimizu, Teaney, Pfaff,
Schumacher, Lee-7197
14 103 Pfaff, Masuko, Applicant’s
Admissions,8 Xirallic® product9
18–20 103 Masuko, Shimizu, Teaney, Pfaff,
Schumacher, Lee-445,10 Lee-225,11
Lee-719
22 103 Lee-225
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Patent 10,647,861 B2
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product. Dec. 25, 28. In the Rehearing Request, Patent Owner seeks a
reconsideration of that determination for those grounds.12 See Reh’g Req. 1.
II. DISCUSSION
“When rehearing a decision on petition, a panel will review the
decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” Id.
§ 42.71(d). Because Patent Owner has not met its burden, as discussed
below, the Rehearing Request is denied.
The challenged claims require that the recited Al2O3 flakes are “α-
alumina flakes.” See, e.g., Ex. 1001, 13:53–56, 15:19–23. In the Decision,
we determined that Petitioner demonstrated sufficiently for institution that “a
person of ordinary skill in the art would have understood that, prior to the
effective filing date, Xirallic® comprised α-alumina flakes.” Dec. 16. In
other words, we determined that Petitioner had shown sufficiently at that
stage in the proceeding that commercially available Xirallic® pigment
products based on aluminum oxide flakes, such as those sampled and tested
by Petitioner’s expert, Mr. Mo, were based on α-alumina flakes, as required
by the challenged claims. See id. at 22.
In reaching that finding, we considered Petitioner’s showing that the
’861 patent statement that “[p]earlescent pigments based on α-Al2O3 flakes

12 Patent Owner notes that we determined in the Decision that Petitioner had
not shown sufficiently that the Petition demonstrates that it is more likely
than not that the claims challenged are unpatentable based on the remaining
grounds. Reh’g Req. 2; See Dec. 27, 29.
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Patent 10,647,861 B2
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are well-known in the literature and commercially available under the
trademark XIRALLIC® from Merck KGaA.” Id. at 16 (quoting Ex. 1001,
1:10–12 (emphasis added)). We also considered Petitioner’s documentary
and testimonial evidence that the Xirallic® pigments products that it sampled
and tested were commercially available under the trademark Xirallic® from
Merck. Id. at 22. Additionally, we considered Pfaff’s description that
Xirallic® pigments available on the market as alumina flakes were “formed
in the corundum structure (α-Al2O3).” Id. at 16–17 (citing Ex. 1034, 72–73);
id. at 22 (citing Ex. 1018 ¶ 5, 1004 ¶¶ 6–7) (declaration testimony of Mr. Mo
and Mr. Choi).
In the Rehearing Request, Patent Owner asserts that the Board appears
to have overlooked or misapprehended Patent Owner’s argument that
“nowhere does Petitioner establish that the materials it tested were, in fact,
α-Al2O3 flakes.” Reh’g Req. 3 (quoting Prelim. Resp. 31). According to
Patent Owner, the statements in Pfaff and in the Specification of the ’861
patent relied upon by Petitioner were “insufficient to prove that the alumina
in all Xirallic® products, including the product tested by Petitioner, is α–
alumina.” Id. at 1–2. In particular, Patent Owner refers to its assertion in
the Preliminary Response that the Specification statement does not refer “to
the specific flakes that were the subject of Mr. Mo’s analysis,’ nor does this
‘imply that only α-Al2O3 flakes were sold under this trademark.’” Id. at 4
(quoting Prelim. Resp. 34). Patent Owner reiterates that argument by
asserting in the Rehearing Request that the cited statement in the
Specification “says that some products are α-Al2O3 flakes, it does not say
that all Xirallic® products α-Al2O3 flakes.” Id. According to Patent Owner,
the Specification statement “would need to say that all Xirallic® products are
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Patent 10,647,861 B2
6
α-Al2O3 flakes to support the Decision’s finding that this limitation of claim
1 is met.” Id.
Patent Owner also refers to its argument in the Preliminary Response
that Pfaff’s description of effect pigments based on alumina flakes and
“formed in the corundum structure (α-Al2O3)” are “available on the market
as ‘Xirallic’ pigments” does not “imply that only α-Al2O3 flakes were sold
under this trade name.” Id. at 4–5 (quoting Ex. 1034, 72–73, Prelim. Resp.
35). As with the Specification statement, Patent Owner adds again here that
Pfaff was saying that “some Xirallic® products are α-Al2O3 flakes, but not
that all Xirallic® products are α-Al2O3 flakes.” Id. at 5.
According to Patent Owner, the Board’s Decision does not address
either of those arguments. Id. at 5. We disagree. In the Decision, under the
header “Patent Owner’s Contentions,” we set forth the arguments by Patent
Owner that it asserts that we overlooked. Dec. 17–24. In that same section
of the Decision, we explained why we found those arguments to be weak
and to lack merit based on the current record. Id. at 22–23. In particular, we
explained that based upon the description of Xirallic® pigments in the
Specification and in Pfaff, we determined that Petitioner had shown
sufficiently at this stage that it was known in the art that Xirallic® aluminum
oxide flakes, such as those sampled and tested by Mr. Choi and Mr. Mo,
were α-Al2O3 flakes. Id. at 22; see also id. at 16–17.
Rather than demonstrating that we overlooked or misapprehended the
arguments to the contrary, it appears that Patent Owner relies on its
rehearing request as a means to urge the Board reach a different conclusion.
Having appropriately considered and addressed Patent Owner’s arguments
in the Decision, any reconsideration of the same record here leads to the
same determination, i.e., Petitioner demonstrated sufficiently for institution
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Patent 10,647,861 B2
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that the Xirallic® pigments that it sampled were pearlescent pigments
commercially available under the trademark Xirallic® from Merck KGaA,
which the Specification describes as being “well-known in the literature”
and “based α-Al2O3 flakes.” Ex. 1001, 1:10–12.
III. CONCLUSION
Because Patent Owner has not demonstrated that we misapprehended
or overlooked matters raised in the Preliminary Response, we conclude
Patent Owner has not shown that the Board abused its discretion in granting
institution of the challenged claims. See 37 C.F.R. § 42.71(d).
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s Request for Rehearing is denied.

PGR2021-00054
Patent 10,647,861 B2
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PETITIONER:
Andrew C. Ryan
Grant M. Ehrlich, Ph.D.
CANTOR COLBURN LLP
ryan@cantorcolburn.com
gehrlich@cantorcolburn.com

PATENT OWNER:
Joshua A. Griswold
Christopher C. Bowley, Ph.D.
Kim Leung
FISH & RICHARDSON P.C.
griswold@fr.com
ccb@fr.com
leung@fr.com