UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONAL WEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`Case IPR2013-00596
`Patent 7,802,310
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`PETITIONER APPLE INC.'S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c) AND (d)
`
`Mail Stop ((PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`PERSONAL WEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`Case IPR2013-00596
`Patent 7,802,310
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`PETITIONER APPLE INC.'S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c) AND (d)
`
`Mail Stop ((PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
`
`TABLE OF CONTENTS
`
`I. Standard of Review ............................................................................................ 1
`II. The Board abused its discretion by not instituting inter partes review on the
`basis ofWoodhill under 35 U.S.C. §§ 102(e)/(b) and 103(a) ................................... 2
`III. The Board abused its discretion by not instituting inter partes review on the
`basis ofFarberunder 35 U.S.C. § 102(b) ................................................................. 5
`IV. Conclusion ....................................................................................................... 10
`
`1
`
`
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`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
`
`On March 26, 2014, the Board instituted inter partes review of claims 24,
`
`32, 70, 81, 82, and 86 under 35 U.S.C. § 103(a) over the combination ofWoodhill
`
`and Stefik (Ground 6). The Board declined to institute inter partes review on any
`
`of the eight additional grounds.
`
`Petitioner Apple Inc. respectfully requests rehearing under 3 7 C.F .R. §
`
`42.71(c) and (d) of the Board's decision not to institute inter partes review of
`
`claims 24, 32, 70, 81, 82, and 86 of the '310 patent on several grounds. Prior
`
`authorization is not required for filing this request. 37 C.F.R. § 42.71(d). The
`
`grounds that are the subject of this request for rehearing are as follows:
`
`Ground Basis
`
`Reference( s)
`
`4
`
`5
`
`9
`
`35 U.S.C. § 102(e)/(b) Woodhill
`
`35 U.S.C. § 103(a)
`
`Woodhill
`
`35 U.S.C. § 1 02(b)
`
`Farber
`
`This
`
`request
`
`seeks
`
`reconsideration of the
`
`foregoing grounds of
`
`unpatentability as discussed in detail below.
`
`I.
`
`Standard of Review
`
`Apple's review of the Board's decision of March 26, 2014 is authorized
`
`under 37 C.F.R. § 42.71(c) and (d). Under 37 C.F.R. § 42.71(c), "[w]hen rehearing
`
`a decision on petition, a panel will review the decision for an abuse of discretion."
`
`An abuse of discretion occurs when a "decision was based on an erroneous
`
`1
`
`
`
`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
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`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`
`judgment." PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d
`
`1565, 1567 (Fed. Cir. 1988). See also 37 C.F.R. § 42.71(d) ("The request must
`
`specifically identify all matters the party believes the Board misapprehended or
`
`overlooked").
`
`II.
`
`The Board abused its discretion by not instituting inter partes review on
`
`the basis ofWoodhill under 35 U.S.C. §§ 102(e)/(b) and 103(a).
`
`The Board provides no rationale indicating that any consideration has been
`
`given to the proposed grounds of invalidity on the basis of Woodhill alone under
`
`pre-AlA 35 U.S.C. §§ 102(e)/(b)1 and 103(a). The merits ofthese separate grounds
`
`of invalidity have been overlooked by the Board. The Board's failure to institute
`
`on these grounds amounts to an abuse of discretion.
`
`Institution of inter partes review on the basis of these further grounds of
`
`invalidity is consistent with the "just, speedy, and inexpensive resolution" of the
`
`proceeding as required under 37 C.F.R. § 42.1(b). Apple has fully briefed these
`
`arguments and presented rationale for their separate consideration. Failing to
`
`1 As discussed in detail with regard to Farber, below, the Board erred in its
`
`conclusion regarding the priority date of the '310 patent. Under the correct priority
`
`date, both Woodhill and Stefik are 1 02(b) references, rather than 1 02( e).
`
`2
`
`
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`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
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`institute on these grounds would unjustly prejudice Apple. Moreover, instituting on
`
`these grounds would still result in a speedy and inexpensive resolution of trial, as
`
`most of the issues are the same as those that would be briefed on the basis of the
`
`instituted ground.
`
`The Board has agreed to institute inter partes review of the challenged
`
`claims on the basis of pre-AlA 35 U.S.C. § 103(a) over Woodhill in view ofStefik.
`
`Demonstrating invalidity under pre-AlA 35 U.S.C. §§ 102 (Woodhill) or 103
`
`(Woodhill alone) would inherently show invalidity under 35 U.S.C. § 103 based on
`
`the combination ofWoodhill in view ofStefik. However, even though Woodhill is
`
`part of the adopted ground of invalidity, Apple does not want to assume that the
`
`Board would allow an argument that W oodhill teaches every element of the
`
`petitioned claims at Trial. Apple should not have to address issues relating to the
`
`appropriateness of combining W oodhill or issues of secondary considerations if it
`
`can adequately demonstrate at Trial that Woodhill teaches each feature of the
`
`claims, and thus requests that the Board specifically institute trial on the additional
`
`basis ofWoodhill alone under pre-AlA 35 U.S.C. §§ 102 or 103.
`
`The instituted ground of invalidity is not redundant with the additional
`
`grounds on the basis of Woodhill alone. As discussed at p. 59 of the Petition,
`
`Stefik provides the strength of additional teachings regarding the claimed
`
`"selective access". However, Stefik has a later priority date than Woodhill -
`
`3
`
`
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`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
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`November 23, 1994 (Stefik) versus July 1, 1993 (Woodhill). (see Petition, pp. 28-
`
`29, 40, and 41 (see alsop. 26).) A ground of invalidity based on the combination of
`
`Woodhill and Stefik therefore has a later effective priority than a ground of
`
`invalidity based on Woodhill alone. Apple would be prejudiced by the Board's
`
`failure to additionally institute trial on the basis Woodhill alone.
`
`Nowhere does the Board address the invalidity of claims 24, 32, 70, 81, 82,
`
`and 86 as either anticipated or obvious by Woodhill alone. Nor does the Board
`
`address that the grounds of invalidity over Woodhill alone are not redundant with
`
`Woodhill in view of Stefik. (see Decision, pp. 18-20 (discussing only Browne and
`
`Langer).) As a result, Apple is prejudiced even in its preparation of this request,
`
`having no guidance of the Board's misapprehension of the facts that led to its
`
`dismissal of these additional grounds. The grounds of invalidity over Woodhill
`
`alone are proper even in light of the Board's claim construction. But the Board has
`
`provided no guidance whether these grounds have been incorrectly dismissed as
`
`not meeting the standard for institution, because the Board believes them to be
`
`redundant, or for some other unspecified reason.
`
`As required under 37 C.F.R. § 42.71(d), Apple notes that these arguments
`
`were previously presented in the petition, including p. 59 (discussing the separate
`
`benefits of Stefik in addition to Woodhill) and at pp. 28-29, 40, and 41 (see alsop.
`
`26) (discussing priority dates).
`
`4
`
`
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`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
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`Institution of inter partes review on the additional grounds of invalidity over
`
`Woodhill alone is proper. The additional grounds are not cumulative based at least
`
`on the benefits of the additional Stefik reference in contrast with the relative
`
`priority dates of Woodhill and Stefik. Moreover, Apple has demonstrated a
`
`reasonable likelihood of prevailing on the additional grounds, as shown in the
`
`original petition, and the Board has presented no rationale to the contrary.
`
`lll. The Board abused its discretion by not instituting inter partes review on
`
`the basis of Farber under 3 .... U.S.C. § 102(b).
`
`The Board has misapprehended the facts regarding the ground for invalidity
`
`on the basis of the Farber prior art under pre-AlA 35 U.S.C. § 102(b). Apple
`
`respectfully requests that the Board reconsider its decision not to institute inter
`
`partes review based on the Farber prior art. The Board's failure to institute on this
`
`ground amounts to an abuse of discretion.
`
`Each of the claims for which Apple proposed a rejection requires the use of
`
`a "message digest function" or a "hash function." As with any two features, there
`
`can be only five possible relationships between a message digest function (MDF)
`
`and a hash function (HF), as shown in the table below:
`
`5
`
`
`
`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
`
`Relationship
`
`Result
`
`MDF and HF mean the same thing One or the other of MDF or HF could be
`
`eliminated from the claim without affecting
`
`the scope. This cannot be the proper claim
`
`construction, and would be invalid under 3 5
`
`U.S.C. § 112.
`
`MDF is a subset ofHF
`
`MDF could be eliminated from the claim
`
`without affecting the scope. This cannot be
`
`proper claim construction, and would be
`
`invalid under 35 U.S.C. § 112.
`
`HF is a subset of MDF
`
`HF could be eliminated from the claim
`
`without affecting the scope. This cannot be
`
`the proper claim construction, and would be
`
`invalid under 35 U.S.C. § 112.
`
`HF and MDF do not overlap
`
`Although the word "hash function" does not
`
`appear in the specification, Apple concedes
`
`that some of the examples of MDF could
`
`inherently be characterized as HF. Therefore,
`
`this claim construction is probably not
`
`6
`
`
`
`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
`
`appropriate.
`
`HF and MDF overlap
`
`This is the only interpretation of the
`
`relationship between HF and MDF without
`
`clearly violating pre-AlA 35 U.S.C. § 112,
`
`second paragraph.
`
`The Board appears to have understood this relationship. But the Board
`
`incorrectly leapt to the conclusion that because the specification provides an
`
`example message digest function (MD5 or SHA) that is inherently a hash function,
`
`that the specification provides section 112 support in the priority document for any
`
`hash function. The question the Board must consider is not whether a hash function
`
`is inherently disclosed by the priority document, but whether there is a written
`
`description for the "hash functions" of a type that are not also message digest
`
`functions.
`
`A simple way of looking at this issue is to consider the following Venn
`
`diagram.
`
`Message
`Digest
`
`Hash
`
`7
`
`
`
`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
`
`The broadest reasonable interpretation of the language "message digest
`
`function or hash function" is represented by the area within the two intersecting
`
`circles. This identical scope can be alternatively represented as follows:
`
`Message
`Digest
`
`Hash (not
`Me~sage
`Digest
`Function)
`
`This second Venn diagram shows the scope of the language "message digest
`
`function or hash function" as having two parts, message digest functions (including
`
`some hash functions), and hash functions that are not also message digest
`
`functions. This Venn diagram illustrates the precise and exact claim scope as
`
`illustrated by the first Venn diagram.
`
`Hash functions that are not also message digest functions are not disclosed
`
`by the priority document. Therefore, the full scope of the claim is not described in
`
`the priority document as required by 35 U.S.C. § 112. The word "hash" does not
`
`even appear in the priority document. It is not credible to suggest that the priority
`
`document has a written description for scope of the claim represented by the right
`
`circle in the above Venn diagram because the priority document does not describe
`
`or even mention hash functions that are nqt also message digest functions.
`
`8
`
`
`
`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
`
`As a result, claims 24, 32, 70, 81, 82, and 86 of the '31 0 patent lack priority
`
`to the original Farber filing of April 11, 1995 for the claim limitation "a message
`
`digest or a hash function." However, the Farber prior art does disclose message
`
`digest functions, some of which are inherently hash functions, but are not
`
`separately described as such (only the left circle in the above Venn diagram).
`
`In short, because the Farber priority document does not provide written
`
`description support for the right circle of the Venn diagram, the claims are not
`
`entitled to the Apri111, 1995 priority date, making Farber prior art under 35 U.S.C.
`
`§ 102(b)2
`
`• And because Farber discloses a species of the claim (the left circle ofthe
`
`Venn diagram), it anticipates the generic claim (both circles).
`
`As required under 37 C.P.R. § 42.71(d), Apple notes that these arguments
`
`were previously presented in the petition, including pp. 53-58 (discussing priority
`
`in relation to Farber) and pp. 26, 28, and 29 (discussing priority in relation to
`
`Stefik and Woodhill).
`
`Institution of inter partes review on the additional ground of invalidity over
`
`Farber is proper. The additional ground is not cumulative, nor does the Board
`
`present any rationale that it would be cumulative. Moreover, Apple has
`
`2 As noted above, both Woodhill and Stefik are prior art under pre-AlA 35
`
`U.S.C. § 102(b) when the proper benefit date is applied to the '310 patent.
`
`9
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`
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`Case IPR20 13-00596 of
`U.S. Patent No. 7,802,310
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`demonstrated a reasonable likelihood of prevailing on the additional ground, as
`
`shown in the original petition, and as clarified by the foregoing remarks.
`
`IV. Conclusion
`
`For at least the foregoing reasons, Apple respectfully requests that the Board
`
`additionally institute inter partes review of claims 24, 32, 70, 81, 82, and 86 of the
`
`'310 patent on the basis ofWoodhill under 35 U.S.C. §§ 102(e)/(b) and 103(a), and
`
`further institute inter partes review of claims 24, 32, 70, 81, 82, and 86 of the '31 0
`
`patent on the basis ofFarber under 35 U.S.C. § 102(b).
`
`Respectfully submitted,
`
`April 9, 2014
`
`By:
`David K.S. Cornwell, Registration No. 31,944
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`1100 NEW YORK A VENUE NW
`WASHfNGTON,D.C.20005
`(202) 371-2600
`
`Lead Attorney for Petitioner Apple Inc.
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2013-00596 of
`U.S. Patent No. 7,802,310
`
`The undersigned hereby certifies that a true and correct copy of the enclosed
`
`PETITIONER APPLE INC.'S REQUEST FOR REHEARING UNDER 37
`
`C.F.R. § 42.71(c) AND (d) was served electronically via e-mail on April 9, 2014,
`
`in its entirety on Attorneys for Patent Owners PersonalWeb Technologies, LLC
`
`and Level 3 Communications, LLC:
`
`Joseph A. Rhoa (Lead Counsel)
`Updeep S. Gill (Back-up Counsel)
`Nixon & Vanderhye P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`
`jar@nixonvan.com
`usg@nixonvan.com
`
`By:
`
`David K.S. Cornwell, Registration No. 31,944
`
`STERNE, KESSLER, GOLDSTEIN & FOX P .L.L.C.
`1100 NEW YORK AVENUE, NW
`WASHINGTON,D.C.20005
`(202) 371-2600
`
`Lead Attorney for Petitioner Apple Inc.
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