Paper 64
`Entered: February 12, 2018
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`Petitioner,
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC,
`Patent Owner.
`____________
`
`Cases IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)1
`____________
`
`Before SALLY C. MEDLEY, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses issues that are the same in both identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`Entered: February 12, 2018
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`Petitioner,
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC,
`Patent Owner.
`____________
`
`Cases IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)1
`____________
`
`Before SALLY C. MEDLEY, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses issues that are the same in both identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`
` In these related proceedings, the Final Written Decisions were
`entered on January 29, 2015 and January 30, 2015.2 On appeal, the Federal
`Circuit issued a decision affirming-in-part and reversing-in-part the Board’s
`Final Written Decisions. Software Rights Archive, LLC v. Facebook, Inc.,
`659 F. App’x 627, 643 (Fed. Cir. 2016) (nonprecedential). The Federal
`Circuit’s Mandate was entered September 9, 2016.3 On November 20, 2017,
`Patent Owner filed papers titled Requests for Rehearing (“Requests”) in the
`instant proceedings. IPR2013-000480, Paper 62 (“’480 Req. Reh’g.”);
`IPR2013-00481, Paper 63 (“’481 Req. Reh’g.”). Patent Owner requests “to
`institute further inter partes review after return of the mandate from the
`Federal Circuit.” See, e.g., ’480 Req. Reh’g., 1.4
`As an initial matter, no decision has been issued from which rehearing
`can be requested. See 37 C.R.F. § 42.71(d). Patent Owner refers to a
`“Dismissal Decision,” dated October 19, 2017. See, e.g., ’480 Req. Reh’g.,
`1 (citing Ex. 2127). The cited exhibit, however, is only an e-mail
`responding to a status inquiry. IPR2013-00480, Ex. 2127. We previously
`have cautioned against using e-mail for substantive communications to the
`Board. IPR2013-00481, Paper 41, 2 n.1. Accordingly, Patent Owner should
`have sought authorization to file its Requests in these proceedings. See 37
`C.F.R. § 42.20. Patent Owner did not request or receive such authorization.
`Rather than expunge Patent Owner’s unauthorized Requests (37
`C.F.R § 42.7(a)), we treat them as requests for authorization to file
`
`
`2 See IPR2013-00480, Paper 55; IPR2013-00481, Paper 54.
`3 See IPR2013-00480, Paper 60; IPR2013-00481, Paper 61.
`4 For purposes of expediency, for remaining citations, we refer to the papers
`filed in IPR2013-00480. Similar papers were filed in Case IPR2013-00481.
`
`2
`
`
`
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`additional briefing. ’480 Req. Reh’g. For the reasons given, we deny Patent
`Owner’s requests.
`Patent Owner’s Requests are improper and inconsistent with the
`Federal Circuit’s mandate. Patent Owner draws our attention to Standard
`Operating Procedure No. (“SOP”) 9 and, more specifically, to the statement
`“[i]n ex parte appeals and reexamination appeals, reversals at the Federal
`Circuit are considered to be remanded cases to the PTO for further action.”
`’480 Req. Reh’g., 5. Additionally, Patent Owner contends that based on
`Federal Circuit precedent and “[b]ased on the suggestion in PTAB SOP 9
`that the Board ‘consider the scope of the remand,’ it necessarily follows that
`the Board has jurisdiction to resolve any remaining issues that have not yet
`been decided.” Id. (citing Ex. 2129, 6).
`We need not make a determination of whether we have jurisdiction
`because, based on the circumstances and facts in the instant proceedings,
`Patent Owner’s Requests are improper and inconsistent with the Federal
`Circuit’s mandate. Indeed, in Requests for Rehearing submitted to the
`Federal Circuit, Patent Owner took the position that the Federal Circuit’s
`Decision is a reversal, not a remand. IPR2013-00480, Ex. 2128, 1
`(“Respectfully, the Court’s opinion errs because it reverses the PTAB’s
`decision of patentability for lack of substantial evidence without any factual
`determination by the PTAB as to whether the remaining limitations
`unaddressed by the Court are present in the prior art.”); see also id. at 3
`(“Rather, this court must first determine whether the PTAB’s finding was
`supported by substantial evidence . . . and, if unsupported, it must remand
`for the PTAB to decide in the first instance.”).
`Furthermore, Patent Owner’s Requests raise improper arguments. For
`
`3
`
`
`
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`example, Patent Owner provides contentions for “eliminating candidate
`cluster links, wherein the number of candidate cluster links are limited and
`the closest candidate cluster links are chosen over the remaining links,”
`recited in claim 5. ’480 Req. Reh’g. 9-11. This recitation, however, is
`discussed in the Federal Circuit’s Decision. Software Rights Archive, 659 F.
`App’x at 641–42. As an additional example, Patent Owner contends that the
`asserted prior art “never selects a single node for analysis” (’480 Req.
`Reh’g., 12) and contends the deficiency applies to claims 15 and 16. (id. at
`14). However, the “selecting” step is recited in independent claim 14, from
`which claims 15 and 16 depend, directly or indirectly. Ex. 1001, 52:51–
`53:3. In the Final Written Decision, we determined that Petitioner has
`shown by a preponderance of the evidence that claim 14 of the ’494 Patent is
`unpatentable. IPR2013-00480, Paper 55, 2, 24. That determination has not
`been reversed. Software Rights Archive , 659 F. App’x at 643.
`Accordingly, Patent Owner’s Requests are denied.
`
`
`ORDER
`
`It is
`ORDERED that Patent Owner’s Requests, i.e., IPR2013-000480,
`Paper 62 and IPR2013-00481, Paper 63 are denied.
`
`4
`
`
`
`IPR2013-00480 (Patent 5,832,494)
`IPR2013-00481 (Patent 6,233,571)
`
`PETITIONER:
`
`Heidi L. Keefe
`Mark R. Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`mweinstein@cooley.com
`
`David Silbert
`Asim M. Bhansali
`Sharif E. Jacobs
`KEKER & VAN NEST LLP
`djs@kvn.com
`abhansali@kvn.com
`sjacob@kvn.com
`
`
`PATENT OWNER:
`
`Martin M. Zoltick
`Nancy J. Linck
`Soumya P. Panda
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`mzoltick@rfem.com
`nlinck@rfem.com
`sanda@rfem.com
`
`Minghui Yang
`Victor Hardy
`HARDY PARRISH YANG LLP
`myang@hpylegal.com
`vhardy@hpylegal.com
`
`
`5
`
`
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