Trial@uspto.gov
`571-272-7822
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` Paper 29
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` Entered: June 5, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION AND VMWARE, INC.
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case IPR2013-00083 (JYC)
`U.S. Patent No. 6,415,280
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge
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`
`
`DECISION
`EMC Request for Rehearing
`37 C.F.R. § 42.71
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`
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`571-272-7822
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` Paper 29
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`
` Entered: June 5, 2013
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION AND VMWARE, INC.
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case IPR2013-00083 (JYC)
`U.S. Patent No. 6,415,280
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge
`
`
`
`DECISION
`EMC Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`Case IPR2013-00083
`U.S. Patent No. 6,415,280
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`I. INTRODUCTION
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`EMC Corporation and VMware, Inc. (“EMC”) filed a request for rehearing
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`(Paper 27, “Req.”) of the decision on institution (Paper 19, “Dec.”), which
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`instituted inter partes review of claims 36 and 38 of U.S. Patent 6,415,280 (“the
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`’280 patent”). In its request, EMC essentially contends that the Board should
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`authorize certain grounds of unpatentability that were denied as redundant, but
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`hold those grounds in abeyance “until and unless the course of the Trial causes one
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`of them to become non-redundant.” Req. 3-4. The request for rehearing is denied.
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`II. ANALYSIS
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`When rehearing a decision on institution, the Board will review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
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`determined if a decision is based on an erroneous interpretation of law, if a factual
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`finding is not supported by substantial evidence, or if the decision represents an
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`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
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`393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
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`1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
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`2000).
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`In determining whether to institute an inter partes review of a patent, the
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`Board may “deny some or all grounds for unpatentability for some or all of the
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`challenged claims.” 37 C.F.R. § 42.108(b). Rules for inter partes review
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`proceedings were promulgated to take into account the “regulation on the economy,
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`the integrity of the patent system, the efficient administration of the Office, and the
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`ability of the Office to timely complete proceedings.” 35 U.S.C. § 316(b). In
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`2
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`Case IPR2013-00083
`U.S. Patent No. 6,415,280
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`addition, as mandated by 35 U.S.C. § 316(a)(11), 37 C.F.R. § 42.100(c) was
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`promulgated to require that the final written determination in an inter partes review
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`to be issued one year after the date of institution, except that the review may be
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`extended by not more than six months for good cause shown.
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`In the decision on institution for the instant proceeding, the Board granted
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`EMC’s petition to institute an inter partes review of all of the challenged claims of
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`the ’280 patent—namely (1) claims 36 and 38 as anticipated under 35 U.S.C.
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`§ 102(e) by Woodhill; and (2) claims 36 and 38 as unpatentable under 35 U.S.C.
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`§ 103(a) over Woodhill. In rendering the decision on institution, the Board
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`exercised its discretion in denying all other asserted ground as being redundant in
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`light of the two grounds for which review was instituted. Dec. 18-19.
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`EMC seeks reconsideration of the decision on institution denying those
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`grounds. In particular, EMC argues that the references are not redundant in all
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`respects and for all purposes. Req. 1. According to EMC, each of the references
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`has different technical teachings, and PersonalWeb may present declarations,
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`propose claim amendments, or propose new claims “that would make these
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`references non-redundant.” Req. 2. EMC also urges the Board to balance the
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`concerns for a focused, efficient proceeding with the concerns of prejudice to EMC
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`by authorizing certain denied grounds, but hold those grounds in abeyance “until
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`and unless the course of the Trial causes one of them to become non-redundant.”
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`Req. 3-4.
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`EMC’s arguments are not persuasive. The proper focus of a redundancy
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`designation is not whether the applied prior art disclosures have differences, for it
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`is rarely the case that the disclosures of different prior art references will be
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`3
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`Case IPR2013-00083
`U.S. Patent No. 6,415,280
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`literally identical. Rather, the focus is on whether the petitioner articulated a
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`meaningful distinction in terms of relative strengths and weaknesses with respect
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`to application of the prior art disclosures to one or more claim limitations. See
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`Liberty Mutual Ins. Co. v. Progressive Casualty Inc. Co., CBM2012-00003 (Paper
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`No. 7), at *2 (PTAB, Oct. 25, 2012). Furthermore, the possibility that
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`PersonalWeb may amend a challenged claim or add a new claim to recite
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`something other than what EMC has cited initially does not generally present a
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`genuine need for granting redundant grounds. EMC may oppose a motion to
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`amend and respond to new issues arising from the amendment including evidence
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`supporting their opposition. See 37 C.F.R. § 42.23 and Section H of the Office
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`patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
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`EMC fails to appreciate fully that the Board is charged with securing the
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`just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
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`In its petition, EMC does not explain that any of the denied grounds are any more
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`relevant than the grounds on which the review was instituted. In fact, EMC agrees
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`“that the references are redundant insofar as each ground of unpatentability is
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`sufficient to invalidate the claims.” Req. 1. Thus, we are not persuaded that the
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`decision on institution should be altered in any way so that EMC may be in a better
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`position to prevail.
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`With respect to EMC’s proposal of holding certain denied grounds in
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`abeyance, such a serial procedure would introduce unnecessary, significant delays
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`and inefficiencies. Notably, under such a procedure, if EMC loses the instituted
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`grounds on appeal, the case would return to the Board to determine the denied
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`grounds, which would require a second deposition of the same witnesses, a second
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`4
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`Case IPR2013-00083
`U.S. Patent No. 6,415,280
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`patent owner’s response, and a second reply. In that situation, the final written
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`determination most likely would not be issued within one year after the date of
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`institution. Accordingly, we decline to adopt such a serial procedure that would
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`cause unnecessary delays and inefficiencies.
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`For the forgoing reasons, EMC has not shown that the Board abused its
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`discretion in denying the redundant grounds.
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`III. CONCLUSION
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`EMC’s request for rehearing is denied.
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`5
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`Case IPR2013-00083
`U.S. Patent No. 6,415,280
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`PETITIONER:
`Peter M. Dichiara, Esq.
`David L. Cavanaugh, Esq.
`WILMER CUTLER PICKERING HALE & DORR LLP
`peter.dichiara@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`
`
`PATENT OWNER:
`Joseph A. Rhoa, Esq.
`Updeep. S. Gill, Esq.
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`6
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