Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: May 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG
`ELECTRONICS CO., LTD.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00200
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Petitioners’ Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: May 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG
`ELECTRONICS CO., LTD.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00200
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Petitioners’ Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`CBM2014-00200
`Patent 8,336,772 B2
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. and Samsung Electronics Co. Ltd.
`
`(“Petitioner”) request rehearing (Paper 10, “Req. Reh’g”) of the Board’s
`
`Decision (Paper 9, “Dec.”) denying covered business method patent review
`
`of claims 5, 10, 14, 26, and 32 (“challenged claims”) of US Patent 8,336,772
`
`B2 (’772 patent). In its Corrected Petition (Paper 4, “Pet.”), Petitioner
`
`alleged the challenged claims were all anticipated by Ginter (Ex. 1023)
`
`under 35 U.S.C. § 102. Pet. 4, 26–80.
`
`In the Decision, the Board concluded Petitioner did not present
`
`sufficient evidence that Ginter disclosed “use rules” as recited in claims 25
`
`and 30. Thus, Ginter does not anticipate challenged claims 26 and 32, which
`
`depend from claims 25 and 30. Claim 25 specifically recites the “use rules”
`
`limitation as follows:
`
`code to read use status data and use rules from said non-volatile
`memory pertaining to said second selected one or more items of
`retrieved multimedia content; and
`
`code to evaluate said use status data and use rules to determine
`whether access is permitted to said second selected one or
`more items of retrieved multimedia content. Emphasis added.
`
`Ex. 1001, 30:27–34. In the Decision, we construed “use rule” as a
`
`rule specifying a condition under which access to content is permitted.
`
`Dec. 7.
`
`The Board also concluded that Petitioner did not present sufficient
`
`evidence to support Petitioner’s contention that Ginter discloses “code to
`
`request identifier data identifying one or more items of multimedia content
`
`stored in the non-volatile memory” as recited in claim 1. Dec. 13–14. The
`
`2
`
`
`
`CBM2014-00200
`Patent 8,336,772 B2
`
`challenged claims all include the “code to request identifier data” limitation.
`
`Id. at 13–15.
`
`As a result of the conclusions summarized above, the Board did not
`
`institute covered business method patent review of any of the challenged
`
`claims. Dec. 17. Petitioner requests reconsideration of our determination
`
`that Ginter does not disclose either of the following two limitations: (1) “use
`
`rules” (Req. Reh’g 3–6); and (2) “code to request identifier data” (Req.
`
`Reh’g 7–10).
`
`Petitioner contends the grounds asserted in the Petition “were denied
`
`due to misapprehension or oversight of uncited Petition content that
`
`addressed features said to distinguish claims 5, 10, 14, 26, and 32 from
`
`Ginter.” Req. Reh’g 2. As to the “use rules” limitation, Petitioner alleges
`
`the Board “failed to address” pages 16–26 of the Petition. Id. at 4.
`
`Concerning the “code to request identifier data” limitation, Petitioner argues
`
`the Board overlooked explicit disclosure in Ginter cited in the Petition. Id.
`
`at 8.
`
`II. ANALYSIS
`
`When rehearing a decision on institution, the Board reviews the
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The request for
`
`rehearing must identify, specifically, all matters the party believes the Board
`
`misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`A. Alleged Misapprehension or Oversight Relating to “use rules”
`
`Petitioner presumes that the failure of the Decision to cite to or
`
`specifically address pages 16–26 of the Petition is the equivalent of
`
`“misapprehension or oversight.” Req. Reh’g 3–4. The Board, however, is
`
`not required to comb through the Petition and comment on every portion that
`
`3
`
`
`
`CBM2014-00200
`Patent 8,336,772 B2
`
`might have relevance to the decision. What is required is that the Petition
`
`“must specify where each element of the claim is found in the prior art.” 37
`
`C.F.R. § 42.304(b)(4).
`
`With the preceding in mind, the allegedly overlooked pages 16–26 of
`
`the Petition are all in a section under the heading “Overview of Ginter.” Pet.
`
`16. The entire section lacks reference to any claim of the ’772 patent.
`
`Nothing in the overview section specifies where Ginter discloses any
`
`element of any specific claim. Thus, the overview section does not comply
`
`with what is required under 37 C.F.R. § 42.304(b)(4).
`
`Beginning at page 26 of the Petition, under the heading “Ginter
`
`Anticipates claims 5, 10, 14, 26, and 32,” the Petition does attempt to point
`
`out where each claim element is allegedly present in Ginter. The
`
`anticipation section analyzes the challenged claims on an element-by-
`
`element basis, as required under our rules. Pet. 26–80. Pages 70–73 of the
`
`Petition address the “use rules” limitation of claim 25. Page 79 addresses
`
`summarily claim 30’s “use rules” limitation by referring to the analysis of
`
`claim 25. The Request for Rehearing acknowledges that the Decision
`
`focused exclusively on these pages. Req. Reh’g 3 (citing Dec. 16).
`
`Petitioner does not contend that we overlooked or misapprehended this
`
`portion of the Petition, which complied with our rules.
`
`Even were we to consider the overview section on a substantive basis,
`
`our Decision would not change. Petitioner argues in the Request for
`
`rehearing that “access limits” described in the overview section specify a
`
`condition on which access to content is permitted, thus meeting our
`
`4
`
`
`
`CBM2014-00200
`Patent 8,336,772 B2
`
`construction of “use rules.” Req. Reh’g 5–6 (citing Pet. 25–271). The
`
`discussion on pages 25–27 relates to the “billing method MDE and budget
`
`method UDE being used to specify and enforce a condition under which
`
`access to content is permitted.” Id. This same argument was made in the
`
`anticipation section of the Petition and analyzed in the Decision. Dec. 162
`
`(citing Pet. 71). Repeating arguments previously made does not establish a
`
`basis for rehearing.
`
`B. Alleged Misapprehension or Oversight Relating to “code to
`request user identifier data”
`
`
`Petitioner alleges the Board overlooked citations in the Petition to
`
`disclosure in Ginter of the “code to request identifier data” limitation. Req.
`
`Reh’g 8. Petitioner first cites to an annotated version of Figure 72D of
`
`Ginter and related argument from the Petition. Id. at 9 (citing Pet. 36).
`
`Petitioner acknowledges the Decision specifically discusses Figure 72D and
`
`accompanying disclosure in Ginter. What “may have been overlooked,”
`
`according to Petitioner, is the caption of Figure 72D, i.e., “YOU HAVE
`
`REQUESTED THESE PROPERTIES.” Id. Petitioner next contends we did
`
`not cite two relevant portions of Ginter that it alleges disclose the “code to
`
`request identifier limitation,” including: (1) “the user may begin
`
`manipulating and directing their user interface software to browse through a
`
`
`1 Page 27 is in the anticipation section, not the overview section. Nothing on
`page 27 discusses “access limits” disclosed by Ginter.
`2 “Petitioner does not explain sufficiently, however, why a price list (billing
`method map MDE) and/or limitations on information content usage (budget
`method UDE), for example, discloses, teaches, or suggests a rule specifying
`a condition under which access to content is permitted.” Dec. 16.
`
`5
`
`
`
`CBM2014-00200
`Patent 8,336,772 B2
`
`repository content catalog 3322”; and (2) “use the search mechanism to help
`
`locate content of interest.” Id. at 9–10 (citing Ex. 1023, 289:27–35).
`
`Concerning Petitioner’s first contention, pages 35–37 of the Petition,
`
`including annotated Figure 72D, do not present an argument that the caption
`
`of annotated Figure 72D, “YOU HAVE REQUESTED THESE
`
`PROPERTIES,” discloses the “code to request” limitation. A request for
`
`rehearing is not an opportunity to present new arguments or evidence that
`
`could have been presented in the Petition. 37 C.F.R. § 42.71(d). Further,
`
`even if that argument were properly presented, the mere presence of the
`
`word “request” in both the caption of Figure 72D and the limitation is
`
`insufficient for us to conclude the entire limitation, “code to request
`
`identifier data,” is disclosed. For example, the Petition does not explain
`
`what the requested “properties” are or how they might disclose the
`
`“identifier data” portion of the limitation.
`
`Similarly, the citation to lines 27–35 of column 289 of Ginter was not
`
`discussed in the Petition in connection with the “code to request identifier
`
`data” limitation. Petitioner recognizes this, acknowledging column 289 was
`
`quoted only at pages 23–24 of the Petition. Req. Reh’g 9. Pages 23 and 24
`
`are in the Ginter overview section and, as discussed in II.A., fail to comply
`
`with what is required in a Petition. Regardless, the disclosure in lines 27–35
`
`of column 289 relates, at most, to browsing or searching content. See Ex.
`
`1023, 289:27–35. The limitation at issue is “code to request identifier data.”
`
`We are not persuaded the disclosure shows a “request” as recited in the
`
`limitation.
`
`6
`
`
`
`CBM2014-00200
`Patent 8,336,772 B2
`
`III. CONCLUSION
`
`For the foregoing reasons, the Board did not abuse its discretion when
`
`it determined that Petitioner did not demonstrate more likely than not that
`
`claims 5, 10, 14, 26, and 32 are unpatentable based on Ginter. Accordingly,
`
`Petitioner’s request for rehearing is denied.
`
`IV. ORDER
`
`Petitioner’s Request for Rehearing is denied.
`
`
`
`PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`axf@fr.com
`CBM39843-0008CP2@fr.com
`Fish & Richardson P.C.
`
`PATENT OWNER:
`
`Michael R. Casey
`mcasey@dbjg.com
`
`J. Scott Davidson
`jsd@dbjg.com
`docket@dbjg.com
`Davidson Berquist Jackson & Gowdey, LLP
`
`
`7
`
`
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