UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`
`Petitioners,
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC,
`
`Patent Owner.
`
`____________
`
`Case 2013-00480
`Patent 5,832,494
`____________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`
`Petitioners,
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC,
`
`Patent Owner.
`
`____________
`
`Case 2013-00480
`Patent 5,832,494
`____________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Table of Contents
`
`Table of Contents ....................................................................................................... i
`
`Table of Authorities .................................................................................................. ii
`
`I.
`
`II.
`
`Summary of Issues for Rehearing ................................................................... 1
`
`Argument ......................................................................................................... 1
`
`A.
`
`B.
`
`The Federal Circuit’s Failure to Explicitly Order a Remand
`Does Not Preclude Further Consideration of SRA’s
`Unaddressed Arguments. ...................................................................... 1
`
`The Board Must Consider SRA’s Unaddressed Arguments in a
`Final Decision before Invalidating Any Pending Claims. .................... 5
`
`C.
`
`Unresolved Factual Issues Remain Concerning Claim 5 ...................... 9
`
`D. Unresolved Factual Issues Remain Concerning the Selection of
`a Node and Claimed Alignment of Steps with Respect to a
`Selected Node found in Claims 1, 5, 15, and 16 ................................. 11
`
`E.
`
`Nothing can be Inferred from the Federal Circuit’s Denial of
`SRA’s Combined Petition for Panel Rehearing and Rehearing
`En Banc. .............................................................................................. 14
`
`III. Conclusion ..................................................................................................... 15
`
`i
`
`
`
`Table of Authorities
`
`Cases
`Ariosa Diagnostics v. Verinata Health, Inc.,
` 805 F.3d 1359 (Fed. Cir. 2015).............................................................................. 8
`Conway v. Chemical Leaman Tank Lines, Inc.,
` 644 F.2d 1059 (5th Cir. 1981) ............................................................................... 5
`Exxon Chem. Patents, Inc. v. Lubrizol Corp.,
` 64 F.3d 1553 (Fed. Cir. 1995)................................................................................ 2
`In re Lee,
` 277 F.3d 1338 (Fed. Cir. 2002)..........................................................................7, 8
`In re Nuvasive, Inc.,
` 841 F.3d 966 (Fed. Cir. 2016)................................................................................ 6
`Laitram Corp. v. NEC Corp.,
` 115 F.3d 9471 (Fed. Cir. 1997)..................................................................... 4, 6, 8
`Laitram Corp. v. NEC Corp.,
` 62 F.3d 1388 (Fed. Cir. 1995)................................................................................ 4
`Shinn Fu Co. of Am. v. The Tire Hanger Corp.,
` No. 2016-2250, 2017 U.S. App. LEXIS 11787 (Fed. Cir. Jul. 3, 2017) ............... 6
`United States v. Cote,
` 51 F.3d 178 (9th Cir. 1995) ................................................................................. 15
`Regulations
`37 C.F.R. § 42.2 ......................................................................................................... 1
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`
`
`
`
`
`I. Summary of Issues for Rehearing
`Pursuant to 37 C.F.R. § 42.71(d), Software Rights Archive, LLC (“SRA” or
`
`“Patent Owner”) requests rehearing of the Board’s refusal to institute further inter
`
`partes review after return of the mandate from the Federal Circuit, as reflected in
`
`electronic correspondence dated October 19, 2017. Ex. 2127 at 1. (“Dismissal
`
`Decision”). The Dismissal Decision held that, “In light of the Federal Circuit's
`
`decision to affirm-in-part and reverse-in-part, the panel did not take further action,
`
`as the further actions proposed by Patent Owner are not consistent with the Federal
`
`Circuit's mandate.” Id. As the Dismissal Decision indicates that the Board will
`
`take no further action with respect to this inter partes review, it constitutes a final
`
`decision within the meaning of 37 C.F.R. § 42.71(d) as well as a denial to “institute
`
`a trial” under that section. 37 C.F.R. § 42.2 (“A decision is final only if it disposes
`
`of all necessary issues with regard to the party seeking judicial review, and does
`
`not indicate that further action is required.”). As detailed below, the Board has
`
`failed to properly interpret the scope of the mandate in this action. Patent Owner
`
`respectfully requests that the Board withdraw the Dismissal Decision, and resolve
`
`the remaining factual issues as discussed below.
`
`II. Argument
`A. The Federal Circuit’s Failure to Explicitly Order a Remand
`Does Not Preclude Further Consideration of SRA’s
`Unaddressed Arguments.
`
`On October 19, 2017, the Board declined to address pending issues that were
`
`
`
`
`
`
`
`not addressed in the Federal Circuit’s opinion (“Appeal Decision”, Paper 60)
`
`regarding the appeal of the Board’s Final Written Decision (“Final Decision”,
`
`Paper 55). See Appellant’s Combined Petition for Panel Rehearing and Rehearing
`
`En Banc, Docket No. 2015-1649 (Fed. Cir. Oct. 11, 2016) (“’480 Rehearing
`
`Petition”) (explaining in greater detail the arguments of Patent Owner that were not
`
`considered)(attached as Exhibit 2128). The Board did not articulate the reasoning
`
`for its Dismissal Decision, but Patent Owner’s understanding is the Board adopted
`
`Petitioners’ position that the Appeal Decision’s failure to explicitly “remand” this
`
`proceeding deprives the Board jurisdiction for further proceedings on the merits.
`
`With the upmost respect, Patent Owner submits that it was clear legal error
`
`for the Board to terminate this proceeding without addressing the arguments of
`
`Patent Owner that have yet to be considered. The Federal Circuit has squarely
`
`addressed the issue of a lower tribunal’s jurisdiction in the absence of an explicit
`
`remand instruction after a reversal. In Exxon Chem. Patents, Inc. v. Lubrizol
`
`Corp., 64 F.3d 1553 (Fed. Cir. 1995) (“Exxon I”), the Federal Circuit reversed a
`
`District Court’s finding of literal infringement without explicitly including a
`
`“remand” for further proceedings on unaddressed issues. Exxon I, 64 F.3d at 1561
`
`(stating that the decision was a “reversal without remand….”). Exxon petitioned
`
`the Federal Circuit for rehearing to “clarify its opinion regarding Exxon’s right to
`
`move for a new trial on doctrine-of-equivalents infringement.” Exxon Chem.
`
`
`
`
`
`
`
`Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475, 1477 (Fed. Cir. 1998) (“Exxon II”).
`
`Exxon’s petition was denied without clarification. Id. Exxon subsequently filed a
`
`motion in the District Court for a new trial on infringement under the doctrine-of-
`
`equivalents. Id. The District Court denied the motion in a one-page order stating
`
`that the Federal Circuit’s decision left him with “no authority to grant a new trial.”
`
`In Exxon II, the Federal Circuit reversed the District Court's order,
`
`concluding that the District Court erred in interpreting the Exxon I decision as
`
`encompassing an issue that was not presented to the court, namely infringement
`
`under the doctrine-of-equivalents. Exxon II, 137 F.3d at 1478. Even though Exxon
`
`I explicitly stated that its reversal was “without remand for a second trial,” it was
`
`error for the District Court to interpret that statement as precluding a trial on issues
`
`other than literal infringement. Id. The mere fact the judgment was simply
`
`“reversed,” rather than “reversed and remanded’” did not resolve the case because
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`“[i]nterpretation of an appellate mandate entails more than examining the language
`
`of the court's judgment in a vacuum.” Id. at 1483. Simply stated, “a judgment that
`
`does not specifically provide for a remand is not necessarily incompatible with
`
`further proceedings to be undertaken in the district court.” Id. Further, the Federal
`
`Circuit held that “no inferences can be drawn from the court's silence in response
`
`to Exxon’s request for rehearing/clarification.” Exxon II, 137 F.3d at 1479.
`
`The Federal Circuit in Laitram Corp. v. NEC Corp., 115 F.3d 947, 951 (Fed.
`
`
`
`
`
`
`
`Cir. 1997) (“Laitram II”) reached a similar decision on this issue. In a prior
`
`appeal, the Federal Circuit reversed the District Court’s grant of a JMOL of non-
`
`infringement in an opinion that lacked an instruction to “remand.” Laitram Corp. v.
`
`NEC Corp., 62 F.3d 1388 (Fed. Cir. 1995) (“Laitram I”). However, NEC had also
`
`filed JMOLs on willfulness that neither the District Court nor the Federal Circuit
`
`had addressed in the prior appeal. Laitram II, 115 F.3d at 949. NEC requested
`
`clarification of the mandate with respect to willfulness, but the request was denied
`
`without opinion. Id. at 950. The District Court denied NEC’s renewed motion for
`
`JMOL of willfulness relying upon the fact that the opinion only reversed the lower
`
`decision without any specific reference to a “remand” for further issues. Id. at 951.
`
`Despite the lack of a specific remand instruction, the Federal Circuit
`
`reversed the district for failing to conduct further proceedings on the unresolved
`
`issues that is the subject of the JMOLs.
`
`interpretation of our mandate was
`the district court's
`While
`reasonable, particularly in light of our refusal to clarify the issue when
`asked, the district court's reasoning was in error. . . . [W]hile this court
`could have remanded with explicit instructions to decide the JMOL
`motions, the failure to do so is not dispositive.
`
`Id. at 951. The denial of NEC’s motions for rehearing/clarification carried “no
`
`inferential weight.” Id. Instead, the Federal Circuit confirmed that the mandate in
`
`the prior appeal was “applicable only to those issues decided by necessary
`
`implication.” Id. (emphasis in original) (citing Conway v. Chemical Leaman Tank
`
`
`
`
`
`
`
`Lines, Inc., 644 F.2d 1059, 1062 (5th Cir. 1981)). In other words, the mandate
`
`only restricts considerations necessarily decided by the Federal Circuit opinion. Id.
`
`A lower tribunal may properly decide issues that are not “necessarily implicated”
`
`by the opinion. Id. In the case of Laitram II, the District Court erred by failing to
`
`consider motions that had been dismissed as moot and therefore had not been
`
`previously appealed. Laitram II, 115 F.3d at 952. Thus, the Federal Circuit has
`
`clearly established that the mere failure to include a specific instruction for remand
`
`does not divest the Board of jurisdiction to take any further action of consideration
`
`of arguments that were not addressed in the Court’s opinion.
`
`This is further confirmed by the operating procedures of the PTO with
`
`respect to reexaminations and ex parte prosecution which explicitly address the
`
`issue of when an appellate reversal fails to include a specific remand instructions
`
`and instructs the examiner to treat them as “remanded” nonetheless. (“PTAB SOP
`
`9”) (“[R]eversals at the Federal Circuit are considered to be remanded cases to the
`
`PTO for further action.”) (attached as Exhibit 2129). Based 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. Ex. 2129 at 6.
`
`B. The Board Must Consider SRA’s Unaddressed Arguments in a
`Final Decision before Invalidating Any Pending Claims.
`
`Patent Owner’s due process rights require that the Board must consider and
`
`
`
`
`
`
`
`address all of Patent Owner’s arguments regarding patentability on the merits
`
`before the claims can be invalidated. Shinn Fu Co. of Am. v. The Tire Hanger
`
`Corp., No. 2016-2250, 2017 U.S. App. LEXIS 11787 (Fed. Cir. Jul. 3, 2017) (“The
`
`Board does have an obligation, however, to address the arguments that the parties
`
`present to it”); In re Nuvasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016); see
`
`Laitram II, 115 F.3d at 953 (“[B]ecause the issues were no longer moot … the
`
`district court was obligated to rule on them.”). The mere fact the Federal Circuit
`
`did not explicitly order a remand does not absolve the Board of its obligation to
`
`consider Patent Owner’s remaining arguments consistent with Patent Owner’s due
`
`process rights under the Administrative Procedure Act.
`
`Here, while Patent Owner advanced several arguments for patentability with
`
`respect to each claim in the Patent Owner’s Response (“Response,” Paper No. 29),
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`the Final Written Decision only addressed one of Patent Owner’s arguments. See
`
`Paper 55 at 14-17. Because it was the Petitioners’ burden to establish
`
`unpatentability, the Board did not need to find all deficiencies in the Petition
`
`(Paper No. 1) as a single deficiency was enough to rule in favor of Patent Owner.
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`Indeed, the Board explicitly did not address the arguments and limitations of claim
`
`5 made by patent owner because it found independent claim 1 patentable. Paper 55
`
`at 17 (“Because claim 5 depends from claim 1, we also determine that Petitioner
`
`has not established by a preponderance of the evidence that claim 5 is anticipated
`
`
`
`
`
`
`
`by Fox SMART.”). However, because the Board found the claims patentable
`
`based on one argument, it did not make any further findings as to whether any of
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`Patent Owner’s remaining arguments. E.g., Ex. 2128 at 3-7 (discussing
`
`deficiencies in the Petition with respect to the additional limitations of claim 5).
`
`Other unaddressed arguments will be discussed below.
`
`As noted in its opinion, the Federal Circuit confined its review to the
`
`specific grounds relied upon by the Board in the Final Decision. Paper 60 at 27
`
`((“[R]eview of an administrative decision must be made on the grounds relied on
`
`by the agency,” citing In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002)).
`
`Importantly,
`
`the Appeal Decision never affirmatively
`
`found any claim
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`“unpatentable,” but merely stated that the Board erred in its grounds finding
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`patentability: “We conclude, therefore, that the board erred in confirming the
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`patentability of claims 1 and 5 over Fox SMART.” (emphasis added). Paper 60 at
`
`25. A finding of error in an argument confirming patentability is not the same as
`
`finding of unpatentability. It does not follow that the Federal Circuit intended to
`
`express an opinion on determinations that the Board has not made. See Laitram II,
`
`115 F.3d at 952. Thus, it is clear that the mandate did not purport to resolve this
`
`entire proceeding—only those issues relied upon by the Board and were before the
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`panel. See Laitram II, 115 F.3d at 952.
`
`The Federal Circuit’s opinion did not and could not address other arguments
`
`
`
`
`
`
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`by the Patent Owner that were not relied upon by the Board in its decision. An
`
`appellate court lacks the jurisdiction to make factual determinations as to
`
`arguments that have not been passed on by the lower court as a matter of first
`
`impression. In this case, only the Board could make such findings. Ariosa
`
`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (“But
`
`we must not ourselves make factual and discretionary determinations that are for
`
`the agency to make.”); Lee, 277 F.3d at 1345 (explaining that “review of an
`
`administrative decision must be made on the grounds relied on by the agency”).
`
`Thus, the Appeal Decision cannot be construed as a decision on the merits of the
`
`unaddressed arguments because the Federal Circuit lacked jurisdiction to consider
`
`those arguments in the first instance.
`
`The Federal Circuit has issued its mandate and with the issuance of the
`
`mandate jurisdiction returns to this Board. The Board is authorized to take any
`
`action that is consistent with the mandate (i.e., does not necessarily conflict with
`
`the opinion) as part of its exercise of jurisdiction, even without a specific order of
`
`remand. See MPEP § 1216.011; Ex. 2129.2 Accordingly, Patent Owner’s due
`
`
`1 Following a Federal Circuit decision in which the Board is reversed, the MPEP
`explicitly authorizes an examiner to take appropriate action, including, for
`example, reopening prosecution to consider the merits of claims that had not been
`previously considered on the merits. MPEP § 1216.01(I)-C,D.
`
`2 It is important to note that the Appeal Decision was not an affirmance. It was a
`reversal and thus need not resolve all issues. For example, after an appeal in ex
`
`
`
`
`
`
`
`process rights compel the Board to examine these issues before issuing any order
`
`invalidating the claims.
`
`C. Unresolved Factual Issues Remain Concerning Claim 5
`In its papers, Patent Owner previously argued that:
`
`[C]laim 5 requires that in the generating step of claim 1, “the number
`of candidate cluster links are limited” and requires the step of
`‘eliminating candidate cluster links,” wherein “the closest candidate
`cluster links are chosen over the remaining links.”. . . Then the
`remaining links. . . are subjected to a further deriving step. . . Fox
`SMART does not teach these features.
`
`Paper 31 at 44. The Board’s final decision never reached these arguments because
`
`it found independent claim 1 patentable. Paper 55 at 17 (“Because claim 5 depends
`
`from claim 1, we also determine that Petitioner has not established by a
`
`preponderance of the evidence that claim 5 is anticipated by Fox SMART.”).
`
`The Petitioners’ anticipation theory with respect to claim 1 is erroneous with
`
`respect to disclosing the limitations of claim 5. Claim 5 modifies the generating
`
`step—not the deriving step. Paper 31 at 45-46, 8-10, Ex. 2113(¶91). It requires the
`
`generating step to eliminate candidate links based upon whether they are “the”
`
`
`parte examination, proceedings are terminated only with respect to affirmed
`rejections. MPEP § 1216.01(I)-A,B. In contrast, “The Board’s reversal of a
`rejection should not be interpreted as an instruction to the Examiner to allow the
`claims so rejected.” MPEP § 1213.02; see also Ex. 2129 at 9 (“In ex parte appeals
`and reexamination appeals, reversals at the Federal Circuit are considered to be
`remanded cases to the PTO for further action.”). Because the Appeal Decision
`reversed a finding of patentability, the Board should not interpret this a mandate to
`reject the claims that were previously found patentable.
`
`
`
`
`
`
`
`closest among the candidates “for the selected node.” Paper 31 at 45. To
`
`“eliminate” a candidate cluster link, one must first generate it. The mere creation
`
`of the similarity matrix relied upon by Petitioners as meeting the generating step
`
`cannot meet this limitation as it does not eliminate (or select) any generated link,
`
`evaluate them with respect to their “closeness” to any one single selected node, or
`
`subject the candidates of a single selected node to a numerical limit. Id. at 45-46.
`
`The remaining language of claim 1 separates the “deriving” step from the
`
`“generating” step (an antecedent reference) to make it clear that these steps claim
`
`two different operations with one following the other. Id. at 9-10. Claim 1, as a
`
`whole, requires selection and elimination of cluster links in forming the candidate
`
`link set and selection of candidate links in the subsequent deriving step. Thus,
`
`there must be two separate actions of selecting and eliminating cluster links for the
`
`same selected node (one as part of generating and one as part of deriving steps).
`
`Id. Petitioners’ theory only identifies one such action. The selection of “highly
`
`correlated pairs” at issue in the Appeal Decision cannot disclose claim 5’s
`
`limitations to the generating step because it is not followed by any process that
`
`further derives similarity links (i.e., evaluates links against criteria) as actual
`
`cluster links for the selected node. Id. at 45-46, Ex. 2113(¶¶91, 183-184). Nor
`
`does the selection of highly correlated pairs being done with respect to their
`
`proximity to a single selected node. Paper 31 at 44-46, Ex. 2113(¶¶180-184). It
`
`
`
`
`
`
`
`should be further noted that the “uncour” or overlap test cannot serve as a deriving
`
`step because it does not evaluate the links of a selected node against any criteria.
`
`Ex. 2113(¶156). Thus, there is no consistent way to view Fox’s clustering process
`
`as meeting the limitations of claim 5, which require selection and elimination of
`
`cluster links in two distinct steps (generating and deriving).
`
`For additional illustrations, claim construction and discussion regarding this
`
`factual issue and the Petitioners’ failure to shoulder their burden, please review
`
`pages 3-7 of the ’480 Rehearing Petition. Ex. 2128 at 3-7. As explained below, no
`
`inferences can be drawn from the denial of the ’480 Rehearing Petition.
`
`D. Unresolved Factual Issues Remain Concerning the Selection of
`a Node and Claimed Alignment of Steps with Respect to a
`Selected Node found in Claims 1, 5, 15, and 16
`
`Patent Owner argued that the Petitioners have failed to show how Fox
`
`“selects a node” and then performs the remaining steps specified in the claim to the
`
`links of that same selected node. Paper 31 at 43; Paper 53 at 99-100. Neither the
`
`Appeal Decision nor Petitioners’ papers address the claimed alignment of steps
`
`with respect to a single selected node and this argument remains unaddressed.
`
`The specification states that “the goal is to select the top or strongest cluster
`
`links 2004 for each N0 [i.e., a selected node].” Ex. 1001 at 22:60-63. Accordingly,
`
`claim 1 requires the (1) selection of a node, (2) the generation of candidate links
`
`for that node and (3) the deriving of actual links from the candidates of the same
`
`
`
`
`
`
`
`selected node. Paper 31 at 31. Claim 1 recites in this order: (i) “selecting a node for
`
`analysis”; (ii) “generating candidate cluster links for the selected node”; and (iii)
`
`“deriving actual cluster links from the candidate cluster links [for the selected
`
`node].” Ex. 1001 at 51:38-49. Fox Smart never selects a single node for analysis,
`
`much less performs each of the steps in relation to the links of the same node.
`
`Paper 31 at 31-39, 43; Paper 53 at 99-100. The similarity matrix relied upon by
`
`Petitioners for the generating step generates a similarity score for each pair of
`
`documents in a cluster to be split. The clusters of Fox Smart, however, has
`
`unrelated documents that are not linked to each other. Unrelated documents can be
`
`found in the same cluster because (1) they each have some similarity with some
`
`other document in the cluster but still have no similarity with each other; Paper 31
`
`at 48, Ex. 2113 (¶205) (2) they are reassigned orphans from deleted garbage
`
`clusters; Paper 31 at 58, Ex. 2113 (¶¶82-87, 244) (3) they were randomly assigned
`
`through “initialization” “without heuristics”; Ex. 2113(¶68) and (4) they were
`
`placed in the same cluster because of semantical similarity but have not direct or
`
`indirect citation relationship between them; Ex. 2113(¶179); and (5) centroid
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`similarity Ex. 2113 (¶80). Fox recognizes there are “zero similarity links” in the
`
`matrix, thus, reflecting unrelated document pairs. Ex. 2113(¶279). Since the
`
`clusters have unrelated documents, the similarity matrix generated for a single
`
`cluster to be split will have links of documents that are not related to any one
`
`
`
`
`
`
`
`selected node. Thus, the similarity matrix cannot be viewed as the candidate set of
`
`links for a selected node. Paper 31 at 43; Paper 53 at 99-100.
`
`Equally important, is the fact that Fox Smart’s selection of “highly
`
`correlated pairs” from the matrix will not produce an actual cluster link set for a
`
`selected node, as claimed. Paper 31 at 43, Ex. 2113(¶¶133, 143, 147-149, 161).
`
`Because the derived actual cluster links must come from the generated candidates
`
`for a selected node (“deriving actual cluster links from the candidate cluster
`
`links”), the derived actual cluster links must be links of the same selected node.
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`There is no teaching in Fox to derive “actual cluster links from the candidate[s]”
`
`of a selected node. Id. Rather, Fox teaches a different deriving step where one
`
`derives links from the matrix as a whole, irrespective of whether they are links of
`
`the same node. Petitioners rely this passage for meeting the deriving step:
`
`The splitting by "cleave" could employ single link or other methods
`but presently is based on the similarity distribution. By comparing the
`similarity of a pair of children [i.e. documents of the same cluster
`to be split] to the average off diagonal similarity value and seeing if it
`is a sufficient number of standard deviations away from the mean,
`highly correlated pairs are
`identified. Candidate clusters which
`pass the concentration test are those formed by having enough highly
`correlated pairs in the proposed cluster.
`
`Ex. 1005 at 54. However, neither this passage nor any other portion of Fox
`
`SMART teaches that the selection of the “highly correlated pairs” based on
`
`similarity scores of this operation must come from the candidate links for any one
`
`node, as claimed. Indeed, Fox never selects a single node for analysis. Paper 31 at
`
`
`
`
`
`
`
`41. Rather, it teaches to select any highly correlated similarity values within the
`
`matrix for a cluster to be split regardless of whether they a links of the same node.
`
`Paper 31 at 45. Nor could it so teach because the clusters contain unrelated
`
`nodes/documents. Paper 31 at 34-35. Fox examines all “pair[s]” in the similarity
`
`matrix and selects similarity scores in the matrix for the cluster as a whole not with
`
`respect to any selected node. This is non-trivial shortcoming in the Fox prior art.
`
`Its failure to select a node and conduct the steps in relation to the same selected
`
`node prevents Fox from achieving the stated goal of the invention of selecting “the
`
`top or strongest cluster links 2004 for each N0.” Paper 31 at 43; Paper 53 at 99-
`
`100. At the end of the Fox method, one cannot identify the strongest links for any
`
`single node which is necessary for the inventive search algorithms.
`
`This deficiency applies to claims 5, 15 and 16 as well and therefore presents
`
`a factual dispute for these claims as well. For additional illustrations, claim
`
`construction and discussion regarding this factual issue and the Petitioners’ failure
`
`to shoulder their burden, please review pages 7-15 of the ’480 Rehearing Petition.
`
`Ex. 2128 at 7-15.
`
`E. Nothing can be Inferred from the Federal Circuit’s Denial of
`SRA’s Combined Petition for Panel Rehearing and Rehearing
`En Banc.
`
`Patent Owner filed a rehearing brief directed to some but not all of the
`
`arguments not considered by the Board in view of the Court’s opinion. Ex. 2128.
`
`
`
`
`
`
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`The petition were denied without opinion or explanation on the merits. Contrary to
`
`Petitioners’ suggestion in the Appeal Correspondence, the Federal Circuit did not
`
`rule on the merits of those arguments. Ex. 2127 at 2. The denial of the ’480
`
`Rehearing Petition is entirely consistent with the fact that those arguments were
`
`not considered or relied upon by the Board, and therefore did not need to be taken
`
`up in the appeal. Paper 60 at 27; Exxon II, 137 F.3d at 1479 (“Courts normally do
`
`not respond to petitions for rehearing and it would be a mistake to conclude that a
`
`court's nonresponse to an argument made in a rehearing petition necessarily means
`
`that the court has rejected that argument on the merits.”); United States v. Cote, 51
`
`F.3d 178, 181 (9th Cir. 1995) (“summary denial of the [rehearing] petition does not
`
`indicate the court considered and decided the issue presented[.]”). Nowhere in the
`
`Final Decision or the Appeal Decision were these arguments addressed.
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`III. Conclusion
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`The Board is both authorized and required to consider the arguments of
`
`Patent Owner that have not been considered on the merits. Accordingly, Patent
`
`Owner requests reconsideration and withdrawal of the Board's Dismissal Decision.
`
`Patent Owner further requests that the Board consider the merits of its
`
`unconsidered arguments and find the remaining claims patentable in view of those
`
`arguments. Patent Owner also requests that it be given an opportunity to identify
`
`all of its unaddressed arguments and to submit additional briefing.
`
`
`
`
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`
`
`Date: November 20, 2017
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By:/ s / Minghui Yang
`Minghui Yang, Reg. No.
`71,989
`Hardy Parrish Yang, LLP
`4412 Spicewood Springs Rd Suite 202
`Austin, TX 78759
`Phone: 512-520-9407
`Email: myang@hpylegal.com
`
`Counsel for Patent
`Owner
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 20th day of November, 2017, a true and
`
`correct copy of the foregoing PATENT OWNER’S REQUEST FOR
`
`REHEARING UNDER 37 C.F.R. § 42.71(d) was served by electronic mail,
`
`upon the following lead and backup counsel of record for Petitioners Facebook,
`
`Inc., LinkedIn Corp. and Twitter, Inc.:
`
`Heidi L. Keefe – Lead Counsel for all Petitioner
`Cooley LLP
`1299 Pennsylvania Ave., N.W., Suite 700
`Washington, DC 20004
`Ph: 650-843-5001
`Fax: 650-849-7400
`E-mails: hkeefe@cooley.com
`
`Mark R. Weinstein – Backup Counsel for Facebook, Inc.
`Cooley LLP
`1299 Pennsylvania Ave., N.W., Suite 700
`Washington, DC 20004
`Ph: 650-843-5007
`Fax: 650-849-7400
`E-mail: mweinstein@cooley.com
`
`David Silbert – Backup Counsel for LinkedIn Corp. and Twitter, Inc.
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, CA 94111
`Ph: 415-391-5400
`Fax: 415-397-7188
`E-mail: djs@kvn.com
`
`
`
`
`
`
`
`Date: November 20, 2017
`
`By:/ s / Minghui Yang
`Minghui Yang, Reg. No.
`
`
`
`
`
`
`
`
`
`
`
`
`
`71,989
`Hardy Parrish Yang, LLP
`4412 Spicewood Springs Rd Suite 202
`Austin, TX 78759
`Phone: 512-520-9407
`Email: myang@hpylegal.com
`
`Counsel for Patent
`Owner
`
`
`
`
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