Standard Innovation Corporationv.LELO, Inc.

Patent Trial and Appeal Board

Aug 13, 2015

11344987 (P.T.A.B. Aug. 13, 2015)

Trials@uspto.gov Paper 44
Tel: 571-272-7822 Entered: August 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

STANDARD INNOVATION CORPORATION,
Petitioner,

v.

LELO, INC,
Patent Owner.

_______________

Case IPR2014-00148
Patent 7,749,178 B2
_______________

Before PHILLIP J. KAUFFMAN, JACQUELINE WRIGHT BONILLA,
and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71
IPR2014-00148
Patent 7,749,178 B2

2
I. OVERVIEW
Petitioner, Standard Innovation Corporation, requests rehearing (Paper
43, “Req. Reh’g”) of the Board’s Final Decision (Paper 42, “Dec.”), dated
April 23, 2015. In our Final Decision, we concluded that Petitioner had not
demonstrated by a preponderance of the evidence that claims 1–20 and 22–
27 of the ’178 patent were unpatentable based on two grounds that relied on
LILY.1 Dec. 28. For the reasons that follow, Petitioner’s Request for
Rehearing is denied.

II. BACKGROUND
In its Request for Rehearing, Petitioner contends that our Final
Decision rests on the finding of fact that Leloi AB is not the parent company
of Patent Owner (Lelo, Inc.). Req. Reh’g 2. According to Petitioner, this
finding is clearly erroneous as evidenced by Patent Owner’s statement in
related litigation that Leloi AB of Sweden is the parent corporation of Patent
Owner. Id. at 1–5. Petitioner contends that had Patent Owner provided the
correct information to the Board, as required to do, we “would have denied
the motion to exclude Exhibit 1002 [LILY] and would have examined that
the substantive disclosure of that evidence as a prior art printed publication.”
Id. at 9.

1 Ex. 1002, Specification Sheet, LELOi AB, Introducing LILY,
http://www.lelo.com/staticPage.php?page=10years screenshots. We use
“LILY” to refer to Exhibit 1002 and “Lily” to refer to the device described
in that exhibit.
IPR2014-00148
Patent 7,749,178 B2

3
A. Supplemental Information Regarding Leloi AB
On February 11, 2015, after oral hearing, but prior to entry of the
Final Decision, Petitioner requested authorization to file a motion to submit
supplemental information under 37 C.F.R. § 42.123(b). See Paper 39 (order
denying such authorization). In that request, Petitioner proffered
information indicating that “Leloi AB is the Swedish company behind Lelo
[Patent Owner]”. Paper 39, 2 (quoting Ex. 3003). Patent Owner countered
that this information was available in a press release from March of 2013.
Id. at 2–3.
We denied Petitioner’s request because Petitioner had not explained
adequately why it did not obtain or offer to submit this information earlier,
or why consideration of this information at such late stage of the trial
process would be in the interests˗of˗justice. Id. at 3. Petitioner did not
request rehearing of this determination.
In this Request for Rehearing of the Final Decision, Petitioner
suggests that Patent Owner characterized the March 2013 press release (Ex.
3003) in a manner contrary to Patent Owner’s prior representation regarding
the relationship between Patent Owner and Leloi AB. See Req. Reh’g 3–4
(referring to Patent Owner’s argument in Paper 39). Petitioner elaborates
that because the press release was information inconsistent with a position
advanced by Patent Owner, that information was required to be served on
Petitioner at the time that Patent Owner first asserted in this proceeding that
Patent Owner and Leloi AB, “were not intimately related companies.” Id. at
4.
Petitioner’s contention raises numerous questions. Petitioner does not
identify at what time, or where it is reflected in the record that, Patent Owner
IPR2014-00148
Patent 7,749,178 B2

4
asserted that Leloi AB and Patent Owner “were not intimately related
companies.” Further, even if Petitioner had made such an assertion,
associations between corporations are complex legal relationships, and it is
not clear that Petitioner’s statement that “Leloi AB is the Swedish company
behind Lelo” means the companies are “intimately related.” It is not
apparent from the record before us, and our Order does not reflect, that the
press release is inconsistent with Patent Owner’s prior representations
regarding the relationship to Leloi AB. Id.
B. Final Decision
A summary of our Decision follows.
We instituted trial on two grounds, each based in part on LILY
(Exhibit 1002). Dec. 2. Patent Owner objected to the admissibility of LILY,
and Petitioner did not respond. Id. at 7. Instead, Petitioner submitted
Exhibits 1013–1022, 1031, and 1032 along with Petitioner’s Reply, and used
these exhibits as support for the admissibility of LILY. Id. at 8–9. We did
not consider these exhibits with regard to the admissibility of LILY because
they were not submitted as supplemental evidence, thereby avoiding the
proper procedure to address admissibility of evidence. Id. at 9.
In our Final Decision, we determined that LILY and Exhibits 1013–
1023 were inadmissible for lack of sufficient authentication under Federal
Rules of Evidence 901 and 902, and to the extent dates depicted on these
exhibits were relied upon to prove publication dates of the references, the
dates were inadmissible hearsay. Id. at 10–22. Given our determination that
LILY (Ex. 1002) was inadmissible, we concluded that Petitioner had not
demonstrated by a preponderance of the evidence that claims 1–20 and 22–
IPR2014-00148
Patent 7,749,178 B2

5
27 of the ’178 patent were unpatentable over LILY and other cited
references. Id. at 24.
Despite having determined that LILY (Ex. 1002) and Exhibits 1013–
1023 were inadmissible, our Decision went on to evaluate, in the alternative,
whether LILY was prior art as a printed publication considering all evidence
provided by Petitioner, including Exhibits 1013–1023. Id. at 24–28. Even
upon considering all of Petitioner’s evidence, we determined that Petitioner
had not established sufficiently that LILY (Exhibit 1002) constituted prior
art as a printed publication under 35 U.S.C. § 102 as of a relevant critical
date.
C. Post Final Decision
Petitioner contends that in the related litigation, Patent Owner stated
that Leloi AB is Patent Owner’s parent corporation.2 Req. Reh’g. 5.
According to Petitioner, this demonstrates that, at oral argument in this
proceeding, Patent Owner’s counsel misleadingly represented that Leloi AB
was not Patent Owner’s parent corporation. Id. at 5–6 (quoting from the
Oral Hearing Transcript, Paper 38 at 29).
The record is not as clear-cut as Petitioner alleges. We do not have
Patent Owner’s brief in the related ligation before us, however we note that
the Federal Circuit did not find that Leloi AB was the parent corporation of
Lelo (Patent Owner). Rather, the Federal Circuit’s decision states that Leloi
AB was the “majority shareholder” of Patent Owner. Lelo Inc. and Leloi AB
v. ITC, 786 F.3d 879, 881 (Fed. Cir. 2015). As we stated above, associations

2 Citing, but not providing, PACER Docket Doc. 36, filed on January 28,
2015, in the case of Lelo Inc. and Leloi AB v. ITC, 786 F.3d 879 (Fed. Cir.
2015).
IPR2014-00148
Patent 7,749,178 B2

6
between corporations are complex legal relationships. Without more facts,
we cannot conclude that Leloi AB’s status as a majority shareholder
necessarily makes it a “parent corporation.” Patent Owner’s statement in
this proceeding, therefore, does not appear to be inconsistent with the record
of the related litigation.

III. ANALYSIS
A. Assuming Petitioner’s Contentions are Correct
As explained above, Petitioner contends that Patent Owner admitted
that Leloi AB is Patent Owner’s parent corporation. Petitioner elaborates
that this admission demonstrates that Patent Owner failed to turn over
discovery and made a misleading statement to the Board at oral hearing. As
explained above, the record does not establish that any such misleading
statement was made.
In any event, we need not address Petitioner’s contention regarding
the relationship between Patent Owner and Leloi AB to resolve this Request
for Rehearing. As explained below, contrary to Petitioner’s assertion, our
Final Decision does not rest on the factual finding that Leloi AB is not the
parent company of Patent Owner. In other words, we may resolve this
Request for Rehearing even assuming that Petitioner’s contentions regarding
Patent Owner’s relationship to Leloi AB are correct. We emphasize,
however, that this assumption permits resolution of the Request for
Rehearing upon assuming the disputed fact in Petitioner’s favor, and is not a
determination regarding the truth of the underlying contention.
IPR2014-00148
Patent 7,749,178 B2

7
B. Alleged Abuse of Discretion
According to Petitioner, if our Final Decision had been made on a
record that established Leloi AB was the parent corporation of Patent
Owner, Patent Owner’s motion to exclude evidence would have been
denied, and we would have evaluated Petitioner’s ground of unpatentability
based upon all of Petitioner’s evidence. Req. Reh’g 1–10.
Our Final Decision includes, as part of its analysis, the very thing
Petitioner contends we should have done. That is, our Decision evaluated,
as an alternative basis for our conclusions, whether LILY was prior art as a
printed publication considering all of the evidence provided by Petitioner.
See Req. Reh’g 9; Dec. 24–28. We restate portions of that determination
here.
LILY is not a single document; rather, page 1 is one document and
pages 2–4 are another document. Dec. 19–21. Regarding pages 2–4, we
determined that those pages were not a printed publication, both because
these pages were created after the relevant critical date, and because these
pages do not describe the Lily device sufficiently. Id. at 24–25. None of
this analysis would be altered by whether or not Leloi AB is Patent Owner’s
parent corporation.
Regarding page 1 of Exhibit 1002, we explained why neither the
copyright date nor the proffered proof of availability on-line demonstrated
that this page of the exhibit was “sufficiently accessible to the public
interested in the art” before the critical date. Id. at 23 (citing In re Cronyn,
890 F.2d 1158, 1160 (Fed. Cir. 1989)), 25–28. In particular, we noted that:
Petitioner never stated the source of page 1 of Exhibit 1002, the copyright
date alone did not demonstrate sufficient public accessibility, the copyright
IPR2014-00148
Patent 7,749,178 B2

8
date was not demonstrated to be before the critical date, and Petitioner’s
other exhibits did not change these determinations. Id. at 26–28. None of
this analysis would be altered by whether or not Leloi AB is Patent Owner’s
parent corporation.
C. Conclusion
In sum, Petitioner asks that we consider the substantive disclosure of
Petitioner’s evidence. We did so in our Final Decision, and Petitioner has
not carried its burden of demonstrating that the Board misapprehended or
overlooked any matters in rendering that determination. See 37 C.F.R.
§ 42.71(d). The Request for Rehearing is denied.

V. ORDER
Accordingly, it is
ORDERED that the Request for Rehearing is denied.

IPR2014-00148
Patent 7,749,178 B2

9
FOR PETITIONER:

Robert P. Lord
Tammy Terry
Lisa E. Margonis
OSHA LIANG LLP
lord@oshaliang.com
terry@oshaliang.com
margonis@oshaliang.com

FOR PATENT OWNER:

Robert A. Hulse
Hector J. Ribera
FENWICK & WEST LLP
rhulse@fenwick.com
hribera@fenwick.com