Willis Electric Co., Ltd.

Patent Trials and Appeals Board

Oct 22, 2020

IPR2019-01484 (P.T.A.B. Oct. 22, 2020)

Trials@uspto.gov Paper 10
571-272-7822 Entered: October 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

EVERSTAR MERCHANDISE CO., LTD.,
Petitioner,
v.
WILLIS ELECTRIC CO., LTD.,
Patent Owner.

IPR2019-01484
Patent 9,671,097 B2

Before DEBRA K. STEPHENS, STACEY G. WHITE, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
CORRECTED DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Everstar Merchandise Co., Ltd. (“Petitioner”) filed a petition for inter
partes review (Paper 1 (“Pet.”)) challenging claims 1–30 (the “challenged
claims”) of US Patent 9,671,097 B2 (Ex. 1001 (“the ’097 Patent”)). Willis
Electric Co., Ltd. (“Patent Owner”) timely filed a Preliminary Response.
Paper 6 (“Prelim. Resp.”). On February 20, 2020, we issued a Decision
denying institution of inter partes review. Paper 7 (“Decision” or “Dec.”).
Petitioner filed a Request for Rehearing of our Decision. Paper 8
(“Rehearing Request” or “Req. Reh’g”).
On June 30, 2020, we issued a Decision Denying Petitioner’s Request
for Rehearing. Paper 9 (“Rehearing Denial”). Subsequently, Petitioner
contacted the Board by email seeking authorization to file a renewed request
for rehearing of our Rehearing Denial, specifically seeking clarification for a
single narrow issue on page 6 of the Rehearing Denial relating to our
discussion of Figure 5 of the ’097 patent. Ex. 3002. After considering
Petitioner’s email, we recognized that clarification of our discussion of
Figure 5 on page 6 of our Rehearing Denial is not necessary, as it would not
change the outcome of our Rehearing Denial. Specifically, we note that our
discussion of Figure 5 on page 6 of the Rehearing Denial relates to a new
argument, improperly raised for the first time in Petitioner’s Rehearing
Request. See Rehearing Denial 3. Accordingly, it was not the basis for our
decision to deny Petitioner’s Rehearing Request. Nevertheless, we issue this
Corrected Decision Denying Petitioner’s Rehearing Request to clarify our
discussion of Figure 5 on page 6 and to address Petitioner’s assertion that
our Rehearing Denial “overlooks or misapprehends critical portions of the
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’097 Patent, and further reconsideration and clarification of the record is
necessary.” Ex. 3002.1
For the reasons that follow, Petitioner’s Rehearing Request is denied.
II. STANDARD OF REVIEW
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
(2019). A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed.” 37 C.F.R. § 42.71(d). When
rehearing a decision on a petition, the decision will be reviewed for an abuse
of discretion. 37 C.F.R. § 42.71(c).
III. DISCUSSION
Petitioner contends that we “overlooked critical portions of the
’097 Patent and its prosecution history, thereby adopting the Patent Owner’s
narrow claim construction, and improperly resolved factual disputes in favor
of the Patent Owner.” Req. Reh’g 1.
1. Construction of “disposed at a central portion”
Independent claims 1 and 9 recite a wire having a plurality of
conductor strands and require that “one or more of the plurality of conductor
strands is disposed at a central portion of the wire.” In our Decision, we
construed this phrase to require one or more of the plurality of conductor
strands to be positioned in the wire so as to occupy at least the center of the

1 Other than the addition of this paragraph, and changes made to the
paragraph below bridging pages 6–7, which addresses Figure 5 in the
context of written description support, this Corrected Decision is identical to
our Rehearing Denial.
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wire. Dec. 10–11. In its Rehearing Request, Petitioner argues we
overlooked a contradiction between our construction and the ’097 patent
specification, claims, and prosecution history. Req. Reh’g 2–8. For the
reasons set forth below, we disagree.
We first note that Petitioner presents new evidence for the first time in
the Request for Rehearing. Pursuant to 37 C.F.R. § 42.104(b)(3), a petition
must set forth how the challenged claims are to be construed. In this
proceeding, the Petition contains one paragraph addressing claim
construction. Pet. 7. In the paragraph, Petitioner states a claim should be
“accorded its ‘ordinary and customary meaning . . . as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent’”
and, in a single sentence within that paragraph, indicates that “no terms
require a specific construction.” Pet. 7. Petitioner thus had the opportunity
to present its claim construction arguments and supporting evidence in its
Petition, and chose not to do so. By way of contrast, in the Request for
Rehearing, Petitioner allocates seven pages to the construction of the term
“disposed at a central portion.” Req. Reh’g. 2–8. Petitioner is attempting to
use the Request for Rehearing as an opportunity to reply to our Decision and
present new arguments and evidence on claim construction. A request for
rehearing, however, is not an opportunity merely to disagree with the
Board’s assessment of the arguments or weighing of the evidence, or for
Petitioner to present new arguments or evidence.
Nevertheless, we disagree with Petitioner’s contention that our
construction is inconsistent with the ’097 patent specification. Req. Reh’g
4–5. Petitioner directs us to Figure 5 of the ’097 patent, and provides an
annotated version of Figure 5, which is reproduced below. Req. Reh’g 4.
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Figure 5 provides a cross-sectional view of wire 100 having three
reinforcing strands 102a, 102b, and 102c, surrounded by conductor strands
104 forming conductor layers 108 and 110. Ex. 1001, 11:36–38, 14:52–62.
Petitioner’s annotated Figure 5 highlights the conductor strands in red, and
the reinforcing strands in blue. Req. Reh’g 4.
As Petitioner points out, the ’097 patent characterizes reinforcing
strands 102a–c as “extend[ing] axially through the center portion of wire
10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central
portion,” which requires strands to be positioned in the wire so as to occupy
at least the center of the wire, is consistent with both the description of
strands 102a–c as extending through the center portion of the wire in the
’097 patent specification and the depiction of strands 102a–c in the center of
wire 100 in Figure 5.
Petitioner appears to argue that because reinforcing strands 102a–c
occupy a space that is larger than “simply the central axis of the wire,” any
strands disposed inside the wire (i.e., within the outer insulating layer of the
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wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5.
Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however,
supports a construction of “disposed at a central portion” that means simply
“disposed inside the wire.” To the contrary, Petitioner’s argument is
undermined by the fact that the ’097 patent expressly refers to the
reinforcing strands 102a–c as extending through the central portion, but does
not use the same language to characterize the position of conducting strands
104.
Petitioner also argues that our construction is inconsistent with the
’097 patent claims because the claims recite “one or more” conductor
strands disposed at a central portion of the wire, whereas our construction
allegedly “eviscerates the ‘or more’ claim language.” Req. Reh’g 5–6.
Additionally, Petitioner asserts that several claims “would lack adequate
written description under the Board’s adopted construction, because the
specification fails to provide any support for ‘more’ than one conductor
‘disposed at a central portion’ under the Board’s construction.” Req. Reh’g
6. Petitioner’s arguments are not persuasive because they ignore the fact
that our construction explicitly refers to one or more of the plurality of
conductor strands positioned in the wire so as to occupy at least the center of
the wire. Dec. 10–11. Accordingly, our construction does not eviscerate the
“or more” claim language.
Nor does our construction raise a “fatal Section 112 deficiency” for
claims that require more than one conductor strand disposed at a central
portion of the wire. Req. Reh’g 6. As discussed above, our construction is
consistent with the wire depicted in Figure 5, which shows a configuration
wherein one or more strands can be positioned in the wire so as to occupy at
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least the center of the wire. This, in combination with Figure 6, which
shows one or more conductor strands positioned in the wire so as to occupy
at least the center of the wire, and the statement in the ’097 patent that
“[e]mbodiments of the invention are not intended to be limited to the
specific patterns and structures depicted in FIGS. 3–6” provide written
description support for claims requiring more than one conductor strand
disposed at the central portion of the wire. Ex. 1001, 15:24–26.
We are also not persuaded by Petitioner’s argument that our
construction is inconsistent with the prosecution history of the ’097 patent.
Req. Reh’g 7–8. Petitioner argues that in rejecting the claims in view of
Johnson,2 the Examiner considered wires 12 in Johnson to be conductor
strands and found conductor strands 12 to be “disposed at a central portion
of the wire” even though they do not occupy the central axis of the wire.
Req. Reh’g 7–8 (citing Ex. 1002, 65). Petitioner’s argument, however,
overlooks that the applicant understood the Examiner to consider both wires
12 and 12a of Johnson to be conductor strands. Ex. 1002, 49 (stating that
“the Office Action cites elements 12 (and 12a) as disclosing conductor
strands”). Petitioner does not direct us to any portion of Johnson that
differentiates wires 12 and 12a based on their composition. Instead, Johnson
appears to differentiate the wires based solely on their location in wire 10.
See, e.g., Ex. 2006, 5:22–27. As shown in Figure 1 of Johnson (reproduced
on page 8 of the Rehearing Request), conductor strand 12a is disposed at the
central portion of the wire. Ex. 2006, Fig. 1; Req. Reh’g 8.

2 US 6,559,385 B1, issued May 6, 2003 (Ex. 2006).
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For all of the foregoing reasons, we are not persuaded that our
construction of “disposed at a central portion” contradicts the ’097 patent
specification, claims, and prosecution history.
2. Construction of “plurality of reinforcing strands”
Petitioner contends that we overlooked that our adopted claim
construction of “plurality of reinforcing strands” contradicts the ’097 patent
specification. Req. Reh’g 10–12. In our Decision, however, we never
expressly construed this term. Instead, we noted that the ’097 patent
addresses the possibility that yarn, which itself comprises multiple strands,
can be used to form a single reinforcing strand. Dec. 34–35. We did not, as
Petitioner contends, determine that “twisted strands must only be one
reinforcing strand.” Req. Reh’g 10–11. To the contrary, as Petitioner itself
points out, we expressly noted that the ’097 patent distinguishes between
embodiments having a single reinforcing strand and those having multiple
reinforcing strands. Req. Reh’g 10; Dec. 35.
In view of this, we are not persuaded by Petitioner’s argument that we
adopted a claim construction of “plurality of reinforcing strands” that
contradicts the ’097 patent’s specification, which in turn “led to a clearly
erroneous Institution Decision with respect to claims 16–22.” Req. Reh’g
12.
3. Alleged Failure to Resolve Factual Disputes in Favor of Petitioner
Petitioner contends that in our Decision, we “improperly resolved an
important and contested issue of material fact regarding construction of the
’097 Patent’s claims.” Req. Reh’g 13. According to Petitioner, the record
contains conflicting testimony from the parties’ declarants regarding how the
claim terms should be construed. Req. Reh’g 13–14. Petitioner contends
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that, pursuant to 37 C.F.R. § 42.108(c), we should resolve this dispute of
material fact in favor of Petitioner, and, therefore, “resolve the claim
construction issue regarding the disputed term ‘one or more of the plurality
of conductor strands is disposed at a central portion of the wire’ in favor of
Petitioner.” Req. Reh’g 15.
We are not persuaded by Petitioner’s argument that a genuine dispute
of material fact exists with regard to the parties’ proposed construction of
“disposed at a central portion.” Petitioner acknowledges that its declarant,
Dr. Fantone, testified that none of the claim terms required a specific
construction and that the claim terms “would be understood by one of
ordinary skill in the art.” Req. Reh’g 13–14 (citing Ex. 1009 ¶ 22). As
Petitioner points out, Dr. Brown, Patent Owner’s declarant, did not offer any
“statement of disagreement with Petitioner’s position that the terms should
be afforded their ordinary and customary meaning.” Req. Reh’g 14. As a
result, there is no “conflicting” testimony from the declarants on this point.
Nor is there any conflicting testimony from the declarants regarding
the ordinary and customary meaning of “disposed at a central portion.”
Although Dr. Fantone testified generally that a person of ordinary skill in the
art would understand what “disposed at a central portion” means,
Dr. Fantone never explained what that understanding would be. Thus, there
is no dispute of material fact on this record regarding the plain and ordinary
meaning of the claim term.
Accordingly, we are not persuaded by Petitioner’s argument that we
should “resolve the claim construction issue regarding the disputed term
‘one or more of the plurality of conductor strands is disposed at a central
portion of the wire’ in favor of Petitioner.” Req. Reh’g 15.
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IV. CONCLUSION
For all of the foregoing reasons, Petitioner has not demonstrated that
we abused our discretion in not instituting inter partes review of claims
1–30 of the ’097 patent.

V. ORDER
For the reasons given, it is:
ORDERED that Petitioner’s Request for Rehearing is denied.
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FOR PETITIONER:
Barry J. Herman
Preston H. Heard
WOMBLE BOND DICKINSON (US) LLP
barry.herman@wbd-us.com
preston.heard@wbd-us.com

FOR PATENT OWNER:
John P. Fonder
Doug J. Christensen
CHRISTENSEN, FONDER, DARDI & HERBERT, PLLC
fonder@cfpatlaw.com
christensen@cfpatlaw.com

Timothy E. Bianchi
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
tbianchi@slwip.com