Schrader-Bridgeport International, Inc.v.Wasica Finance GmbH

Patent Trial and Appeal Board

Jun 1, 2015

08137155 (P.T.A.B. Jun. 1, 2015)

Trials@uspto.gov Paper 17
Tel: 571-272-7822 Entered: June 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SCHRADER-BRIDGEPORT INTERNATIONAL,
SENSATA TECHNOLOGIES HOLDING N.V., and
SI INTERNATIONAL (TOPCO), INC.,
Petitioner,
v.
WASICA FINANCE GMBH & BLUEARC FINANCE AG,
Patent Owner.
_______________

Case IPR2015-00272
Patent 5,602,524
_______________

Before RAMA G. ELLURU, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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2

I. INTRODUCTION
A. Background
Schrader-Bridgeport International, Inc., Sensata Technologies
Holding N.V., and SI International (Topco), Inc. (collectively, “Petitioner”)
filed a corrected Petition to institute an inter partes review of claims 1, 10,
and 11 of U.S. Patent No. 5,602,524 (Ex. 1001, “the ’524 patent”). Paper 9
(“Pet.”). Patent Owners Wasica Finance GmbH and BlueArc Finance AG
(collectively, “Patent Owner”) filed a Preliminary Response. Paper 11
(“Prelim. Resp.”). Pursuant to Board authorization (Paper 13), Petitioner
and Patent Owner each filed supplemental briefing on the application of
35 U.S.C. § 325(d) to the instant proceeding. Paper 14 (“Pet. 325(d) Br.”);
Paper 16 (“PO 325(d) Br.”). We have jurisdiction under 35 U.S.C. § 314(a),
which provides that an inter partes review may not be instituted “unless . . .
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” For the reasons given
below, we do not institute an inter partes review in this proceeding.
B. Related Proceedings
Petitioner and Patent Owner indicate that the ’524 patent is the subject
of the following co-pending federal district court cases: Wasica Fin. GmbH
v. Cont’l Auto. Sys. US, Inc., Case No. 1-13-cv-01356 (D. Del.) and Wasica
Fin. GmbH v. Schrader Int’l, Inc., Case No. 1-13-cv-01353 (D. Del.). Pet.
2; Paper 7, 2. The parties also indicate that the ’524 patent is involved in
three additional inter partes review proceedings: IPR2014-00295 (“IPR
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3

295”); IPR2014-01454 (“IPR 1454”)
1
; and IPR2014-00476 (“IPR 476”)
2
.
Pet. 1–2; Paper 7, 2; Prelim. Resp. 1.
C. Asserted Grounds of Unpatentability and Evidence of Record
Petitioner contends that claims 1, 10, and 11 are unpatentable under
35 U.S.C. § 102 as anticipated by Oselin
3
and under 35 U.S.C. § 103 as
obvious over Oselin, and that claim 11 is unpatentable under 35 U.S.C.
§ 103 as obvious over Oselin and Nowicki
4
. Pet. 18–47.

II. ANALYSIS
A. Background
In IPR 476, Petitioner challenged claims 1, 10, and 11 as anticipated
by Oselin and as obvious over Oselin, and challenged claims 10 and 11 as
obvious over Oselin and Nowicki. IPR 476, Paper 1 at 17–29, 31–32, 35–
39, 45–48. In that proceeding, we instituted inter partes review for claims 1
and 10 on those grounds, but not claim 11. IPR 476, Paper 7 at 12–19, 25–
26. In IPR 295, we instituted an inter partes review of claim 11 based on
obviousness over Oselin. IPR 295, Paper 11, 17–18. The trials for IPR 295
and IPR 476 are in their final stages (oral hearing has been completed in
each case).

1
Continental Automotive Systems, Inc. is the petitioner in IPR 295 and IPR
1454. We denied institution of IPR 1454.
2
Schrader-Bridgeport International, Inc., Sensata Technologies Holding
N.V., and SI International (Topco), Inc. are the petitioner in IPR 476.
3
Italian Patent No. 1219753, published May 24, 1990 (Ex. 1004, “Oselin”).
Citations to this reference refer to its English translation (Ex. 1003).
4
U.S. Patent No. 5,285,189, issued Feb. 8, 1994 (Ex. 1005, “Nowicki”).
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B. Discussion
In the Preliminary Response, Patent Owner argues that the Board
should exercise its discretion to deny the Petition under 35 U.S.C. § 325(d).
Prelim. Resp. 1–9; PO 325(d) Br. 1–2. We have reviewed the Petition, the
Patent Owner Response, and the supplemental briefing on 35 U.S.C.
§ 325(d) provided by the parties, as well as the relevant evidence discussed
in those papers. Based on the specific facts of this case, we exercise our
discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review
in this proceeding.
A petitioner is not entitled to unlimited challenges against a patent:
In determining whether to institute or order a proceeding under
. . . chapter 31, the Director may take into account whether, and
reject the petition or request because, the same or substantially
the same prior art or arguments previously were presented to
the Office.
35 U.S.C. § 325(d). Further, in construing our discretion to institute inter
partes review (see 35 U.S.C. § 314(a); 37 C.F.R. § 42.108), we are mindful
of the guidance provided in § 42.1(b): “[37 C.F.R. § 42] shall be construed
to secure the just, speedy, and inexpensive resolution of every proceeding.”
Id.; see also ZTE Corp. v. ContentGuard Holdings, Inc., Case IPR2013-
00454, slip op. at 5–6 (PTAB Sept. 25, 2013) (Paper 12) (“The Board is
concerned about encouraging, unnecessarily, the filing of petitions which are
partially inadequate.”).
Petitioner contends, generally, that this Petition, and in particular the
challenge to claim 11, is not redundant with the review of claim 11 instituted
in IPR 295 because “Nowicki [asserted here] is not a reference in the 295
IPR, and it is not cumulative,” without further explanation. Pet. 325(d) Br.
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1. Petitioner also does not address any differences between the review of
claim 11 instituted in IPR 295 and the challenge to claim 11 in the instant
Petition based on Oselin alone.
With respect to IPR 476 and the challenge to claim 11 in particular,
Petitioner simply notes that Nowicki
5
is now relied on for the first part of
claim 11, rather than Oselin. Id. Even if the arguments in this proceeding
differ in a meaningful way from those presented in IPR 295 and IPR 476,
Petitioner offers no explanation as to why these arguments could not have
been made in IPR 476. Instead, Petitioner contends that “more than just
overlap must be considered.” Id. We have considered all of the facts
pertaining to this proceeding. We are not persuaded that the particular facts
of this case warrant another trial, particularly when the references asserted
against the claims are the same references that were asserted in the earlier
petition filed in IPR 476, which was filed by the same petitioner as this
proceeding.
Petitioner argues that “if institution is denied, then claim 11’s validity
will be disputed (at a much greater cost) in the co-pending District Court
litigation.” Id. Petitioner fails to address, however, that final decisions for
IPR 295 and IPR 476 are due around the same time as our decision on
institution in this proceeding, which is due on June 17, 2015. Specifically,
the final decision in IPR 295 is due on June 27, 2015, and that in IPR 476 is
due on August 4, 2015. Instituting trial in this proceeding would extend
review of the ’524 patent by almost one year. Further, as noted above, the
trial for IPR 295 includes a challenge to claim 11 based on obviousness over

5
Nowicki was asserted against claim 11 in combination with Oselin in IPR
476.
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Oselin, and Petitioner does not identify meaningful differences between the
challenges based on Oselin in this proceeding and that in IPR 295.
For the reasons set forth above, we are not apprised of a reason that
merits subjecting Patent Owner to further defense of claim 11 on a ground
that could have been brought in IPR 476, particularly when the same
references were asserted against claim 11 in that proceeding, where one of
the asserted grounds in this proceeding (obviousness of claim 11 over
Oselin) is currently under review in IPR 295, and where such a trial would
extend review of the ’524 patent by almost one year. Accordingly, as
indicated above, we exercise our discretion under 35 U.S.C. § 325(d) to
deny the Petition and decline to institute inter partes review with respect to
the challenge asserted in the Petition, because it presents merely “the same
or substantially the same prior art or arguments” already presented to us.

III. ORDER
For the reasons given, it is
ORDERED that no trial is instituted.

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For PETITIONER:

Bryan P. Collins
Robert M. Fuhrer
PILLSBURY WINTHROP SHAW PITTMAN LLP
bryan.collins@pillsburylaw.com
robert.fuhrer@pillsburylaw.com

For PATENT OWNER:

Michael T. Hawkins
Patrick J. Bisenius
Michael J. Kane
FISH & RICHARDSON P.C.
Hawkins@fr.com
IPR2015-00272@fr.com