IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`In re Patent of: Cheng et al.
`U.S. Patent No.: 7,970,674
`Issue Date:
`June 28, 2011
`Appl. Serial No.: 11/347,024
`Title:
`AUTOMATICALLY DETERMINING A CURRENT VALUE FOR A REAL
`ESTATE PROPERTY, SUCH AS A HOME, THAT IS TAILORED TO INPUT FROM A HU-
`MAN USER, SUCH AS ITS OWNER
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`In re Patent of: Cheng et al.
`U.S. Patent No.: 7,970,674
`Issue Date:
`June 28, 2011
`Appl. Serial No.: 11/347,024
`Title:
`AUTOMATICALLY DETERMINING A CURRENT VALUE FOR A REAL
`ESTATE PROPERTY, SUCH AS A HOME, THAT IS TAILORED TO INPUT FROM A HU-
`MAN USER, SUCH AS ITS OWNER
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71
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`Pursuant to 37 C.F.R. § 42.71, MicroStrategy Incorporated (“Petitioner” or “Mi-
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`croStrategy”) requests rehearing on the decision by the Board to deny institution of inter
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`partes review of claims 18-25 of the ’674 patent. Petitioner respectfully submits that, when
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`taken as a whole, the revised petition of November 13, 2012 (“the Petition”) addresses how
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`Dugan and Kim disclose all of the limitations of claim 18. Claims 19-25 depend from claim
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`18. Since the Board did not address claims 19-25 separately from claim 18, Petitioner re-
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`spectfully requests that the Board also reconsider instituting inter partes review of claims
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`19-25 in connection with the Board’s reconsideration of instituting inter partes review of
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`claim 18.
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`In the Decision to Institute Inter Partes Review of April 2, 2013 (“the Decision”), the
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`Board found that the Petition failed to address how Dugan and Kim disclose or suggest the
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`following two limitations of claim 18:
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`wherein the adjustment of the obtained user input includes al-
`tering the home attributes indicated by an external data source
`to be possessed by the distinguished home, and
`wherein the determined refined valuation is based at least in
`part on applying the geographically-specific home valuation
`model to the altered attributes
`Decision, p. 20. For this reason, the Board concluded that “MicroStrategy has not demon-
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`strated a reasonable likelihood that it would prevail on the alleged ground that claim[] 18 . . .
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`of the ’674 patent [is] unpatentable for obviousness over Dugan and Kim.” Id.
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`A petition for inter partes review must “[p]rovide a statement of the precise relief re-
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`1
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`quested for each claim challenged.” 37 C.F.R. § 42.104(b). The statement must identify
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`the specific statutory grounds on which the challenge is based and how the claim is un-
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`patentable under the statutory grounds. Id. 37 C.F.R. § 42.104(b)(4) requires that “[t]he
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`petition must specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon.”
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`However, and notably, Part 42 of Title 37, Code of Federal Regulations, which gov-
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`erns proceedings before the Board, does not require that the petition conform to a specific
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`manner or order in demonstrating that each element of a challenged claim is found in the
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`relied upon prior art. Part 42 also does not require that the petition redundantly identify rel-
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`evant teachings from the relied upon prior art in demonstrating how the relied upon prior art
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`satisfies redundant claim features. As such, when the same or similar feature is recited in
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`multiple claims, it is not improper for a petition to establish where the feature is found in the
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`relied upon prior art only a single time instead of redundantly addressing the feature in con-
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`nection with each claim within which it is recited.
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`In accordance with the Part 42, the Petition established that claim 18 was challenged
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`as being “[o]bvious under § 103(a) by Dugan in view of Kim.” Petition, p. 3. Moreover, the
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`Petition included claim charts specifying where all of the elements of claim 18, including the
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`aforementioned “wherein” clauses, are found in the combination of Dugan and Kim. See
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`Petition, pp. 29-30, 33.
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`Specifically, although the subsection of the Petition’s claim charts featuring aspects
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`of claim 18 did not explicitly list the final two “wherein” clauses of claim 18, the claim charts
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`nevertheless addressed these “wherein” clauses in their treatment of claims 30 and 32,
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`which recite two “wherein” clauses that are nearly identical to those recited by claim 18.
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`See id. As such, Petitioner respectfully submits that the Petition, taken as a whole, ad-
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`dressed how Dugan and Kim meet all of the elements of claim 18, including its final two
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`“wherein” clauses.
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`To make this clearer, the following table is provided to facilitate a comparison of the
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`relevant “wherein” clauses found in claims 18 and 32:
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`Claim 18 (Dependent on claim 15)
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`Claim 32 (Dependent on claims 15 and 30)
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`wherein the adjustment of the obtained user
`input includes altering the home
`attributes indicated by an external data
`source to be possessed by the distinguished
`home
`wherein the determined refined valuation is
`based at least in part on applying the geo-
`graphically-specific home valuation model to
`the altered attributes.
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`wherein the adjustment of the obtained user
`input further includes altering the home
`attributes indicated by the external data
`source to be possessed by the distinguished
`home
`wherein the constructed new geographically-
`specific home valuation model is applied to
`altered attributes.
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`From this table, it is evident that the first “wherein” clause of claim 32 is a perfect
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`match of the first “wherein” clause of claim 18, as the exact same words appear in each.
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`Similarly, the second “wherein” clause of claim 32, while using slightly divergent terminolo-
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`gy, also is substantively consistent in scope with the second “wherein” clause of claim 18.
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`Indeed, at their core, these two “wherein” clauses both require the application of a geo-
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`3
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`graphically-specific home valuation model to altered attributes.
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`In fact, the only distinction between these two “wherein” clauses is the suggestion by
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`claim 18 that a valuation is based on application of a geographically-specific home valuation
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`model to the altered attributes. However, this feature is also embodied in claim 32 by virtue
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`of its dependency on claim 30, which recites “wherein the determined refined valuation is
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`based at least in part on the obtained result [from applying the constructed new geograph-
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`ically-specific home valuation model to altered attributes].” At pages 32-33, the Petition
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`demonstrated that this feature is found in the combination of Dugan and Kim. As such, the
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`claim charts clearly demonstrated that both of the final two “wherein” clauses of claim 18 are
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`present in the relied upon prior art.
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`In greater detail, the Petition set forth grounds explaining why these two “wherein”
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`clauses are rendered obviousness by the combination of Dugan and Kim when addressing
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`claims 30 and 32. See Petition, pp. 31-33. In view of this, the Board found that the Petition
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`demonstrated a reasonable likelihood that Petitioner would prevail on the alleged grounds
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`that claims 30 and 32 of the ’674 patent are obvious over the combination of Dugan and
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`Kim. Decision, pp. 13, 20-21. Because the final two “wherein” clauses of claim 18 are
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`found in claims 30 and 32, the grounds of obviousness for claims 30 and 32 set forth in the
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`Petition and endorsed by the Board are equally applicable to the final two “wherein” clauses
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`of claim 18. Thus, the sections of the claim charts devoted to claims 18, 30, and 32 collec-
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`tively demonstrated “[h]ow the [final two ‘wherein’ clauses of] claim [18 are] unpatentable
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`under the statutory grounds,” in accordance with 37 C.F.R. § 42.104(b)(4).
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`Accordingly, Petitioner respectfully requests reconsideration by the Board and insti-
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`tution of trial for claim 18 of the ’674 patent. The requested reconsideration is in the interest
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`of justice at least because the Board earlier and properly found that there is a reasonable
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`likelihood that Petitioner would prevail with regard to claim 18, through the Board’s review of
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`the redundant limitations of claims 30 and 32.
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`In addition to denying inter partes review of claim 18, the Board also denied institu-
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`tion of inter partes review of claims 19-25 because these claims depend from claim 18, find-
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`ing that “MicroStrategy has not addressed how Dugan and Kim disclose or suggest the
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`‘wherein the adjustment. . .’ clause of claim 18.” See Decision, pp. 20, 23-24. However, as
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`described above, the Petition as a whole addressed how Dugan and Kim disclose or sug-
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`gest the features recited in the final two “wherein” clauses of claim 18. Because the Deci-
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`sion does not identify other reasons for why inter partes review of claims 19-25 should not
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`be instituted, Petitioner respectfully requests that the Board reconsider institution of inter
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`partes review of claims 19-25 in light of the foregoing discussion of claim 18 and the
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`grounds set forth on pages 30 and 45-48 of the Petition.
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`Case: IPR2013-00034
`Attorney Docket No.: 30693-0090IP1
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 202-783-5070
`F: 202-783-2331
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`/Thomas A. Rozylowicz/
`Thomas A. Rozylowicz, Reg. No. 50,620
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 202-783-5070
`F: 202-783-2331
`Attorneys for Petitioner
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`Dated: 4/16/2013
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`Dated: 4/16/2013
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.8(b)(4) and 42.105(b), the undersigned certifies
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`that on April 16, 2013, a complete and entire copy of this Request for Rehearing
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`Pursuant to 37 C.F.R. § 42.71 were provided via FedEx, costs prepaid, to the
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`Patent Owner by serving the service address of record as follows:
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`Patent Docketing
`Perkins Coie, LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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