Plastipak Packaging, Inc.

Patent Trials and Appeals Board

Jan 7, 2021

IPR2020-00431 (P.T.A.B. Jan. 7, 2021)

Trials@uspto.gov Paper 27
571-272-7822 Date: January 7, 2021

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HUSKY INJECTION MOLDING SYSTEMS, LTD. and
HUSKY INJECTION MOLDING SYSTEMS, INC.,
Petitioner,

v.

PLASTIPAK PACKAGING, INC.,
Patent Owner.
____________

IPR2020-00428 (Patent 8,857,637 B2)
IPR2020-00429 (Patent 9,033,168 B2)
IPR2020-00430 (Patent 9,139,326 B2)
IPR2020-00431 (Patent 9,403,310 B2)
IPR2020-00432 (Patent 9,522,759 B2)
IPR2020-00433 (Patent 9,850,019 B2)
IPR2020-00434 (Patent 9,738,409 B2)
IPR2020-00435 (Patent 10,023,345 B2)
IPR2020-00436 (Patent 10,266,299 B2)
IPR2020-00437 (Patent 10,214,311 B2)
IPR2020-00438 (Patent 10,214,312 B2)
IPR2020-00439 (Patent 10,457,437 B2)1

Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK, and
ERIC C. JESCHKE, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

1 Petitioner filed identical Requests for Rehearing in each of IPR2020-
00428 to IPR2020-00439. We, therefore, issue one Decision.
IPR2020-00428 (Patent 8,857,637) IPR2020-00429 (Patent 9,033,168)
IPR2020-00430 (Patent 9,139,326) IPR2020-00431 (Patent 9,403,310)
IPR2020-00432 (Patent 9,522,759) IPR2020-00433 (Patent 9,850,019)
IPR2020-00434 (Patent 9,738,409) IPR2020-00435 (Patent 10,023,345)
IPR2020-00436 (Patent 10,266,299) IPR2020-00437 (Patent 10,214,311)
IPR2020-00438 (Patent 10,214,312) IPR2020-00439 (Patent 10,457,437)

DECISION
Denying Petitioner’s Request for Rehearing of Institution Decision
37 C.F.R. § 42.71(d)

INTRODUCTION
Husky Injection Molding Systems, Ltd. and Husky Injection Molding
Systems, Inc. (collectively “Petitioner”) filed a Request for Rehearing (Paper
252, “Req. Reh’g”) of the Institution Decision (Paper 24, “Inst. Dec.”),
which discretionarily denies institution under 35 U.S.C. § 325(d) because
“the same or substantially the same prior art or arguments previously were
presented to the Office.” For the reasons discussed below, Petitioner’s
request for rehearing is denied.

STANDARD
A party requesting rehearing bears the burden of showing that a
decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
all matters it believes the Board misapprehended or overlooked, and the
place where each matter was addressed previously in a motion, an
opposition, or a reply. Id. When rehearing a decision, we review the
decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d).
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

2 We cite to the paper numbers in IPR2020-00428.
IPR2020-00428 (Patent 8,857,637) IPR2020-00429 (Patent 9,033,168)
IPR2020-00430 (Patent 9,139,326) IPR2020-00431 (Patent 9,403,310)
IPR2020-00432 (Patent 9,522,759) IPR2020-00433 (Patent 9,850,019)
IPR2020-00434 (Patent 9,738,409) IPR2020-00435 (Patent 10,023,345)
IPR2020-00436 (Patent 10,266,299) IPR2020-00437 (Patent 10,214,311)
IPR2020-00438 (Patent 10,214,312) IPR2020-00439 (Patent 10,457,437)

judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d
1565, 1567 (Fed. Cir. 1988) (citations omitted).

DISCUSSION
We have discretion to deny review when “the same or substantially
the same prior art or arguments previously were presented to the Office.” 35
U.S.C. § 325(d). In that respect, section 325(d) provides that the Director
may elect not to institute a proceeding if the challenge to the patent is based
on matters previously presented to the Office. Advanced Bionics, LLC v.
Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7
(PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).
In evaluating the parties’ contentions concerning section 325(d), we
applied the two-part framework set forth in Advanced Bionics. Inst. Dec.
8–20. The two-part framework is: (1) determining whether the same or
substantially the same art previously was presented to the Office or whether
the same or substantially the same arguments previously were presented to
the Office; and (2) if either condition of the first part of the framework is
satisfied, determining whether the petitioner has demonstrated that the
Office erred in a manner material to the patentability of challenged claims.
Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we
considered several nonexclusive factors, including:
(a) the similarities and material differences between the asserted
art and the prior art involved during examination; (b) the
cumulative nature of the asserted art and the prior art evaluated
during examination; (c) the extent to which the asserted art was
IPR2020-00428 (Patent 8,857,637) IPR2020-00429 (Patent 9,033,168)
IPR2020-00430 (Patent 9,139,326) IPR2020-00431 (Patent 9,403,310)
IPR2020-00432 (Patent 9,522,759) IPR2020-00433 (Patent 9,850,019)
IPR2020-00434 (Patent 9,738,409) IPR2020-00435 (Patent 10,023,345)
IPR2020-00436 (Patent 10,266,299) IPR2020-00437 (Patent 10,214,311)
IPR2020-00438 (Patent 10,214,312) IPR2020-00439 (Patent 10,457,437)

evaluated during examination, including whether the prior art
was the basis for rejection; (d) the extent of the overlap between
the arguments made during examination and the manner in which
Petitioner relies on the prior art or Patent Owner distinguishes
the prior art; (e) whether Petitioner has pointed out sufficiently
how the Examiner erred in its evaluation of the asserted prior art;
and (f) the extent to which additional evidence and facts
presented in the Petition warrant reconsideration of the prior art
or arguments.
Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first
paragraph) (“Becton, Dickinson”). After review of factors (a), (b), and (d),
we determined that the same or substantially the same art or arguments
previously were presented to the Office, and addressed factors (c), (e), and
(f) as to whether Petitioner demonstrated that the Office erred in a manner
material to the patentability of the challenged claims. See Advanced Bionics,
Paper 6 at 10.
According to Petitioner, “[s]everal errors led the Board to make an
unreasonable judgement in weighing the Becton, Dickinson[] factors
underlying Advanced Bionics’[s] framework and thus abuse its discretion.”
Req. Reh’g. 1. We have considered all of Petitioner’s allegations of error,
but are not persuaded that we abused our discretion by denying institution
pursuant to section 325(d). The alleged errors amount to no more than mere
disagreement with our weighing of the Becton, Dickinson factors in the
Advanced Bionics’s framework. Mere disagreement is not a proper basis for
rehearing.
IPR2020-00428 (Patent 8,857,637) IPR2020-00429 (Patent 9,033,168)
IPR2020-00430 (Patent 9,139,326) IPR2020-00431 (Patent 9,403,310)
IPR2020-00432 (Patent 9,522,759) IPR2020-00433 (Patent 9,850,019)
IPR2020-00434 (Patent 9,738,409) IPR2020-00435 (Patent 10,023,345)
IPR2020-00436 (Patent 10,266,299) IPR2020-00437 (Patent 10,214,311)
IPR2020-00438 (Patent 10,214,312) IPR2020-00439 (Patent 10,457,437)

For example, Petitioner contends that we misapprehended Becton,
Dickinson factor (c) (the extent to which the asserted art was evaluated
during examination, including whether the prior art was the basis for
rejection). Req. Reh’g. 3–6. Petitioner argues that we should have weighed
this factor in favor of institution because the Office never applied asserted
art Colloud3 to reject a claim. See id. Petitioner’s argument merely
disagrees with our determination that the examiner sufficiently evaluated
Colloud to weigh this factor in favor of denial. Inst. Dec. 16–18. As pointed
out in the Institution Decision, the prosecution history contains a European
search report, which sets forth an explanation, in English, of why the claims
would have been obvious over Colloud. Inst. Dec. 16–17 (citing Ex. 2011).
The examiner annotated an Information Disclosure Statement, which lists
Colloud and the European search report, indicating that both had been
considered. Inst. Dec. 17. Based on this, we determined that the examiner
sufficiently evaluated Colloud during examination. Mere disagreement with
our determination of sufficient evaluation is not a proper basis for rehearing.
Petitioner additionally contends, “the Decision did not address all of
the Petition’s grounds, including one ground that relied on a base reference
indisputably not considered previously.” Req. Reh’g. 3. Petitioner argues:
The Petition’s last ground argued the claims would have
been obvious over a reference—the US Standard—not before the
examiner. Colloud was relied on only for its teachings of
how/why to lower a container’s neck, not its specific neck

3 French Patent FR 2,846,946 B1, published Mar. 4. 2005 (Ex. 1005)
(“Colloud”).
IPR2020-00428 (Patent 8,857,637) IPR2020-00429 (Patent 9,033,168)
IPR2020-00430 (Patent 9,139,326) IPR2020-00431 (Patent 9,403,310)
IPR2020-00432 (Patent 9,522,759) IPR2020-00433 (Patent 9,850,019)
IPR2020-00434 (Patent 9,738,409) IPR2020-00435 (Patent 10,023,345)
IPR2020-00436 (Patent 10,266,299) IPR2020-00437 (Patent 10,214,311)
IPR2020-00438 (Patent 10,214,312) IPR2020-00439 (Patent 10,457,437)

heights. The Decision overlooked this new art and argument in
its analysis.
Id. at 15.
Contrary to Petitioner’s assertion, we did not overlook the ground that
included The US Standard. The Petition’s ground 8 alleges that claims 1–34
are unpatentable over The US Standard and Colloud. Paper 1, 72–75. The
Institution Decision indicates that ground 8 “combines The US Standard
with Colloud and relies mainly upon Colloud’s teachings” and states “[a]s
do the parties, we focus our analysis on Colloud.” Inst. Dec. 10 n.10. As
the Institution Decision points out, the Petition incorporates much of its
analysis from the other grounds based on Colloud into the analysis of ground
8. See Paper 1, 72–75 (relying on “the reasons set forth above in the
sections of the petition discussing each respective claim”). For example,
Petitioner presents ground 8 as a four-page claim chart that states,
“COLLOUD teaches all the limitations of claim 1. Section 10.6.” Id. at 72.
Thus, Petitioner does not persuade us that we overlooked ground 8, which
included The US Standard.
Further, we note that Petitioner argued that discretionary denial was
unwarranted under § 325(d) in its Reply to Patent Owner’s Preliminary
Response. See e.g., Paper 17, 1–6. These arguments focused on Colloud
and did not mention The US Standard. See id. We could not have abused
our discretion by overlooking an argument that discretionary denial was
unwarranted based on the inclusion of The US Standard, when Petitioner did
not make such an argument in its Reply.
IPR2020-00428 (Patent 8,857,637) IPR2020-00429 (Patent 9,033,168)
IPR2020-00430 (Patent 9,139,326) IPR2020-00431 (Patent 9,403,310)
IPR2020-00432 (Patent 9,522,759) IPR2020-00433 (Patent 9,850,019)
IPR2020-00434 (Patent 9,738,409) IPR2020-00435 (Patent 10,023,345)
IPR2020-00436 (Patent 10,266,299) IPR2020-00437 (Patent 10,214,311)
IPR2020-00438 (Patent 10,214,312) IPR2020-00439 (Patent 10,457,437)

CONCLUSION
For the foregoing reasons, Petitioner’s Request for Rehearing is
denied.

ORDER
Accordingly, it is:
ORDERED that Petitioner’s Request for Rehearing is denied.

IPR2020-00428 (Patent 8,857,637) IPR2020-00429 (Patent 9,033,168)
IPR2020-00430 (Patent 9,139,326) IPR2020-00431 (Patent 9,403,310)
IPR2020-00432 (Patent 9,522,759) IPR2020-00433 (Patent 9,850,019)
IPR2020-00434 (Patent 9,738,409) IPR2020-00435 (Patent 10,023,345)
IPR2020-00436 (Patent 10,266,299) IPR2020-00437 (Patent 10,214,311)
IPR2020-00438 (Patent 10,214,312) IPR2020-00439 (Patent 10,457,437)

PETITIONER:
Matthew Cutler (lead counsel)
Richard Musgrave
Glenn Forbis
Neil Ferraro
mcutler@hdp.com
rmusgrave@husky.ca
gforbis@hdp.com
NFerraro-PTAB@WolfGreenfield.com

PATENT OWNER:
W. Karl Renner (lead counsel)
Whitney A. Reichel
David L. Holt
Roberto J. Devoto
PTABInbound@fr.com
axf-ptab@fr.com
wreichel@fr.com
holt2@fr.com
devoto@fr.com