Prolitec Inc.

Patent Trials and Appeals Board

Jun 24, 2021

IPR2021-00013 (P.T.A.B. Jun. 24, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Date: June 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SCENTAIR TECHNOLOGIES, LLC,
Petitioner,

v.
PROLITEC, INC.,
Patent Owner.

IPR2021-00013
Patent 9,480,767 B1

Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
BRIAN D. RANGE, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing of
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)
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Patent 9,480,767 B1

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I. INTRODUCTION
Petitioner filed a Request for Rehearing (Paper 11, “Rehearing
Request” or “Req. Reh’g”) of the Decision Denying Institution of Inter
Partes Review (Paper 10, “Decision” or “Dec.”) of claims 1–19 (all claims)
of U.S. Patent No. 9,480,757 B1 (“the ‘’757 patent” or “Ex. 1001”). We
refer to the Petition (Paper 2, “Pet.”) and Preliminary Response (Paper 8,
“Prelim. Resp.”).
Upon request for rehearing, we assess a decision on institution “for an
abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a
“decision was based on an erroneous conclusion of law,” “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). Applying that standard, we deny the Rehearing Request.
II. BACKGROUND
The ’767 patent relates to an air treatment appliance having a “cap
assembly” that is “coupled to” a receptacle, which is suitable for containing
“a liquid compound to be aerosolized within an interior thereof.” Ex. 1001,
3:30–34. The ’767 patent describes and claims a cap assembly comprising
three distinct structural features, namely, “a cap, a venturi insert, and a base
attached together” in a manner that, among other things, defines “an aerosol
outlet chamber partitioned from the interior of the receptacle by the base.”
Id. at 3:34–43; see id. at 15:4–13; 16:18–27 (relevant limitations of the
independent challenged claims).
The ’767 patent discloses examples of air treatment appliances
according to the claims, and each requires “a base” that defines “an aerosol
outlet chamber partitioned from the interior of the receptacle by the base.”
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Patent 9,480,767 B1

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See, e.g., id. at 9:57–58 (written description of the invention), 15:7, 15:12–
13 (independent claim 1). As we did in the Decision (Dec. 3), we reproduce
below Figure 8 from the ’767 patent, which illustrates that claimed feature.

Ex. 1001, Fig. 8. Figure 8 is a partial isometric cross-sectional view of a
removable cartridge for an air treatment appliance. Id. at 4:56–57. Notably,
aerosol outlet chamber 166 “is partitioned from the internal cavity 144 of the
receptacle 142 by the cap base 141.” Id. at 9:57–58.
The Petition advances three grounds, each of which is based on
obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We
found in the Decision, and Petitioner does not dispute in the Rehearing
Request, that each ground “depends on Petitioner’s assertion that
Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned

1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004).
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Patent 9,480,767 B1

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from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the
Decision, we refer herein to that feature of the claimed invention as “the
aerosol outlet limitation.” Id. at 6.
Based on the information presented in the Petition and Preliminary
Response, we determined Petitioner did not show sufficiently, for purposes
of trial institution, that Benalikhoudja discloses the aerosol outlet limitation.
Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.
II. DISCUSSION
We deny the Rehearing Request for two independent reasons:
Petitioner’s arguments are untimely, and they are unpersuasive. We organize
our discussion into two sections that address those alternative reasons.
A. Petitioner’s Arguments Are Untimely
Petitioner, in the Petition, consistently and repeatedly identifies
“centering flange 161” as the structure in Benalikhoudja alleged to
correspond to the “base” required by the challenged claims. Pet. 33, 34, 35,
47, 48, 51, 58 (consistently and repeatedly mapping “the base” of the
claimed invention to “centering flange 161” in Benalikhoudja). Nowhere in
the Petition does Petitioner argue that any other structure in Benalikhoudja
corresponds to the specified “base,” which, according to each challenged
claim, must partition the interior of the receptacle from the aerosol outlet
chamber of the air treatment appliance. See generally Pet.
In the Rehearing Request, for the first time, Petitioner argues that
“vertical walls of cylindrical chamber 180,” as illustrated in Figure 6 of
Benalikhoudja, “extend from – and are part of – the centering flange 161.”
Req. Reh’g 4. Petitioner asserts that these walls “partition[] chamber 180
from the interior of liquid container 100” and, thereby, satisfy the aerosol
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outlet limitation of the challenged claims. Id. at 4; see id. at 3–6 (for similar
arguments). By way of support, Petitioner refers us to the following cropped
and annotated version of Figure 6 from Benalikhoudja:

Req. Reh’g 3. The above illustration is a cropped and annotated version of
Figure 6 from Benalikhoudja, which is a cross-sectional view of an
embodiment of a nebulization device. Ex. 1004 ¶ 35. Petitioner crops
Figure 6 to exclude approximately two-thirds of the device, leaving only the
upper third in view. Compare Ex. 1004, Fig. 6. Petitioner also annotates the
cropped illustration to include a blue-shaded numeral“180” that, according
to Petitioner, emphasizes “a cylindrical chamber 180 . . . bottoming the cap,”
that is, element “164” (Req. Reh’g 4–5).
Petitioner submits that the “Petition correctly pointed to the entirety of
centering flange 161, including its incorporation into the sidewalls of
chamber 180 of venturi device 160, as disclosing the claimed ‘base’” that
must partition the aerosol outlet from the interior of the receptacle. Req.
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Patent 9,480,767 B1

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Reh’g 1. For support, Petitioner directs us to eight pages of the Petition that,
in Petitioner’s view, map the “base” of the challenged claims to structure in
Benalikhoudja that includes both centering flange 161 and the sidewalls of
cylindrical chamber 180. Id. 1–2. (citing Pet. 20, 33, 34, 43, 44, 47, 53, 54).
We have reviewed the pages cited by Petitioner (id.) and, in addition, we
have undertaken to reread the entirety of the Petition, but find no
information supporting Petitioner’s view that this assertion previously was
advanced in the Petition.
The Petition nowhere identifies the sidewalls of chamber 180 as part
of the “base” that separates the aerosol outlet from the interior of the
receptacle in Benalikhoudja. See generally Pet. On the contrary, the Petition
consistently and repeatedly identifies “centering flange 161” as the sole
structure in Benalikhoudja that corresponds to the specified “base.” Pet. 33,
34, 35, 47, 48, 51, 58 (consistently and repeatedly mapping “the base” of the
claimed invention to “centering flange 161” in Benalikhoudja). To be clear,
Petitioner identifies “centering flange 161” in Benalikhoudja as the specified
“base” of the challenged claims no less than seven times in the Petition, and
never once refers to the sidewalls of cylindrical chamber 180 as
representing, or forming part of, the specified “base.” Id. To the extent any
doubt remains, Petitioner, in the Petition, expressly emphasizes that
centering flange 161 and the sidewalls of chamber 180 are separate and
distinct structural features by shading one blue and the other purple. Pet. 33.
A request for rehearing is not an opportunity to present new
arguments or evidence that could have been presented in a petition. We
could not have misapprehended or overlooked matters or arguments that
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were not asserted in the Petition. We deny the Rehearing Request because it
is based on new arguments that Petitioner did not present in the Petition.
B. Petitioner’s Arguments Are Unpersuasive
Alternatively, even if we consider the new arguments raised for the
first time in the Rehearing Request, we find none persuasive to show
reversible error in the Decision. The ’767 patent describes and claims “a cap
assembly” that is characterized by three distinct structures, namely, “a cap, a
venturi insert, and a base attached together without welds or separate
fasteners to define . . . an air outlet chamber” that is “partitioned from the
interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1)
(emphasis added); see id. at 3:30–43, 9:45–62 (written description).
The Rehearing Request blurs together those distinctly claimed
structures. Req. Reh’g 1–6. For example, Petitioner blurs together the
“venturi insert” and the “cap” required by claim 1 when describing
“cylindrical chamber 180” as “bottoming the cap” 164 (id. at 3). See
Ex. 1004, Fig. 6, ¶ 54). Petitioner argues, “cap 164 also includes a
flange 161,” thereby blurring the distinction between the “cap” and asserted
“base” in Benalkihoudja’s device. Req. Reh’g 4; compare Pet. 33, 34, 35,
47, 48, 51, 58 (consistently and repeatedly mapping “the base” of the
claimed invention to “centering flange 161” in Benalikhoudja).
The Rehearing Request miscasts, as Patent Owner’s error, Petitioner’s
own consistent and repeated assertion that Benalikhoudja’s “blue-shaded
base element 161” corresponds to the “base” structure required by the
challenged claims. Req. Reh’g 4 (miscasting this as Patent Owner’s
“incorrect argument”). Petitioner, not Patent Owner, introduced and
emphasized the argument that “centering flange 161” represents the “base”
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of the claimed invention. Pet. 33, 34, 35, 47, 48, 51, 58. We find no merit in
Petitioner’s new argument that “‘blue-shaded base element 161’ indicates
only the uppermost portion of the centering flange 161 and not its entirety.”
Req. Reh’g 4. That argument contradicts information asserted in the Petition.
See, e.g., Pet. 33 (indicating that blue shaded element 161 is the “centering
flange” and purple shaded element 195, including the sidewalls of
cylindrical chamber 180, is a “nebulisate discharge conduit”). We see no
reason, on this record, why we should view blue shaded element 161 as
anything less than the “entirety” of centering flange 161, where Petitioner
reasonably identifies it as such by its own annotations in the Petition. Pet. 33
(annotated version of Ex. 1004, Fig. 6). Those annotations are consistent
with Benalikhoudja, which expressly identifies element 161 as “a centering
flange” and element 195 as “a nebulisate discharge conduct.” Ex. 1004 ¶ 54.
In the Rehearing Request, without adequate explanation, Petitioner
blurs together features required by the challenged claims, for example, “a
cap, a venturi insert, and a base,” which are specified as distinct structural
components that comprise the “cap assembly.” Ex. 1001, 15:6–7; 16:20–21
(independent claims 1 and 16). The claims expressly require that “the base”
(not “the cap” or some structural component of “the venturi insert” itself) is
the structure that must partition the aerosol outlet chamber from the interior
of the receptacle. Id. at 15:4–13; 16:18–27 (relevant limitations of the
independent challenged claims). None of the arguments presented in the
Rehearing Request demonstrate that the Board overlooked or
misapprehended any structure in Benalikhoudja’s device that suggests the
aerosol outlet limitation of the claimed invention. Req. Reh’g 1–6.
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Accordingly, we find Petitioner’s new arguments are unpersuasive to
show reversible error in the Decision. Req. Reh’g 1–6.
IV. CONCLUSION
For the above reasons, we find that Petitioner does not show “an
abuse of discretion” in the Decision. See 37 C.F.R. § 42.71(c). Accordingly,
we deny the Rehearing Request.
V. ORDER
It is
ORDERED that the Petitioner’s Rehearing Request for Rehearing of
the Decision Denying Institution of Inter Partes Review is denied.

For PETITIONER:
Joshua B. Pond
Vincent J. Galluzzo
Crowell & Morning LLP
jpond@crowell.com
vgalluzzo@crowell.com

For PATENT OWNER:

Cory C. Bell
Biju Chandran
Finnegan, Henderson, Farabow,
Garrett, & Dunner LLP
cory.bell@Finnegan.com
biju.chandran@finnegan.com