Trial@uspto.gov
`571-272-7822
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` Paper 16
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` Entered: June 25, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALWEB TECHS., LLC and LEVEL 3 COMMS., LLC,
`Patent Owner.
`
`____________
`
`Case IPR2013-00596
`Patent 7,802,310 B2
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`571-272-7822
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` Paper 16
`
`
` Entered: June 25, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALWEB TECHS., LLC and LEVEL 3 COMMS., LLC,
`Patent Owner.
`
`____________
`
`Case IPR2013-00596
`Patent 7,802,310 B2
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. §§ 42.71
`
`
`
`Case IPR2013-00596
`Patent 7,802,310 B2
`
`I. INTRODUCTION
`Apple Inc. (“Apple”) filed a Request for Rehearing (Paper 11, “Req.”) of the
`decision on institution (Paper 9, “Dec.”), which instituted inter partes review of
`claims 24, 32, 70, 81, 82, and 86 of U.S. Patent 7,802,3101 B2 (“the ’310 Patent”).
`In its request, Apple essentially contends that the Board abused its discretion by
`not instituting inter partes review on the bases of Woodhill and Farber. Req. 1.
`The request for rehearing is denied.
`
`II. ANALYSIS
`When rehearing a decision on institution, the Board will review the decision
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
`determined if a decision is based on an erroneous interpretation of law, if a factual
`finding is not supported by substantial evidence, or if the decision represents an
`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S.,
`393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338,
`1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
`2000).
`In determining whether to institute an inter partes review of a patent, the
`Board may “deny some or all grounds for unpatentability for some or all of the
`challenged claims.” 37 C.F.R. § 42.108(b). Rules for inter partes review
`proceedings were promulgated to take into account the “regulation on the economy,
`the integrity of the patent system, the efficient administration of the Office, and the
`ability of the Office to timely complete proceedings.” 35 U.S.C. § 316(b). In
`addition, as mandated by 35 U.S.C. § 316(a)(11), 37 C.F.R. § 42.100(c) was
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`promulgated to require that the final written determination in an inter partes review
`to be issued one year after the date of institution, except that the review may be
`extended by not more than six months for good cause shown.
`In the decision on institution for the instant proceeding, we granted Apple’s
`petition to institute an inter partes review of challenged claims 24, 32, 70, 81, 82,
`and 86 of the ’310 Patent —specifically, as unpatentable under 35 U.S.C. § 103(a)
`over Woodhill and Stefik. Dec. 20. In rendering the decision on institution, we
`exercised our discretion in denying many other asserted ground as being redundant
`in light of the ground for which review was instituted. Dec. 18-19. We also
`indicated that the subject claims were entitled to the benefit of the filing date of the
`earliest priority application under 35 U.S.C. § 120, such that Faber cannot be
`applied against the instant claims as prior art. Dec. 11-13.
`Apple argues that “[t]he Board provides no rationale indicating that any
`consideration has been given to the proposed grounds of [unpatentability] on the
`basis of Woodhill alone.” Req. 2. Based on this, Apple alleges that we overlooked
`the grounds based on Woodhill alone, under anticipation and obviousness, and our
`failure to institute on such grounds amounts to an abuse of discretion. Id. We
`disagree.
`The grounds that Apple alleges we overlooked are listed as alleged grounds
`of unpatentability in the decision on institution. Dec. 5. As such, the latter
`grounds were not overlooked; rather we applied our discretion in not instituting all
`of the grounds of unpatentability asserted by Apple in its Petition. While the
`grounds over Woodhill alone are not discussed in a separate section, as the grounds
`applying Browne and Langer were (Dec. 18-19), we did discuss the specific
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`Patent 7,802,310 B2
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`teachings of Stefik and agreed with Apple that the “selective access features of
`Stefik [would have been] used with Woodhill’s content-dependent identifiers
`feature.” Dec. 16. Therefore, the Decision clearly provided a basis for instituting
`the ground based on Woodhill and Stefik, and a rationale for not instituting on the
`basis of Woodhill alone, under anticipation or obviousness. While the selection
`was implicit, we find that the selection of an obviousness ground over an
`anticipation ground necessarily provides a judgment on the relative strengths of
`those grounds. Additionally, given the discussion of the claim limitations
`“selectively permit” and “selectively allow” (Dec. 10-11), it should have been clear
`that we did not consider Woodhill alone as disclosing all of the elements of the
`challenged claims.
`Apple also argues that it is prejudiced by the Board’s failure to additionally
`institute trial on the basis of Woodhill alone. Req. 4. This prejudice is alleged
`because the combination of Woodhill and Stefik “has a later effective priority than
`a ground of invalidity based on Woodhill alone.” Id. We are not persuaded that
`Apple is prejudiced.
`Apple fails to appreciate fully that the Board is charged with securing the
`just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`In its Petition, Apple does not explain that any of the denied grounds are any more
`relevant than the grounds on which the review was instituted. We can find no
`mention in the Petition of the relative strengths of the different grounds submitted
`therewith. Apple’s allegations of the benefits of the application of Woodhill alone
`over the combination of Woodhill and Stefik (Req. 4), being made now, cannot
`supplement the original Petition or ascribe misapprehension to the Board.
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`Patent 7,802,310 B2
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`Additionally, Apple also argues that “Apple does not want to assume that the
`Board would allow an argument that Woodhill teaches every element of the
`petitioned claims at Trial.” Req. 3. Indeed, the basis for the trial in this
`proceeding is the ground provided in the decision on institution. See 35 U.S.C.
`§ 316(a)(2); 37 C.F.R. § 42.108. Arguments addressed to the teachings of
`Woodhill alone would be outside the scope of the trial without some change in the
`scopes of the instituted claims, i.e., the filing of a motion to amend the claims.
`Apple also argues that we erred in not instituting based on the Farber prior
`art reference because we improperly found support for specific claim terms in the
`priority document, and thus found that Farber could not be applied against the
`instant claims as prior art. Req. 5-7; Dec. 11-13. The claims recite the use of a
`“message digest function” or a “hash function,” and Apple argues that, while there
`is support for a message digest function in the priority document, there is no
`support for a hash function that is not a message digest function. Req. 7-10.
`Because both are not disclosed explicitly in the priority document, as argued by
`Apple, “the full scope of the claim is not described in the priority document as
`required by 35 U.S.C. § 112.” Req. 8. We do not agree.
`If a skilled artisan would have understood the inventor to be in possession of
`the claimed invention at the time of filing, even if every nuance of the claims is not
`explicitly described in the specification, then the adequate description requirement
`is met. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
`“[T]he description need not be in ipsis verbis to be sufficient.” Martin v. Johnson,
`454 F.2d 746, 751 (CCPA 1972). As we stated in our decision to institute: “we are
`persuaded that the disclosure of a known hash function, along with the disclosure
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`of digest functions, is sufficient to support the limitation ‘a message digest function
`or a hash function.’” Dec. 12. The disclosure of a Secure Hash Algorithm in the
`priority document was acknowledged by Apple (Pet. 55). Even though it is
`disclosed as being in a family of message digest functions, that does not mean that
`the disclosure of a hash function would not have been understood by ordinarily
`skilled artisans. The disclosure of a hash algorithm, even in a different context,
`does not render that disclosure null and void, given what one of ordinary skill in
`the art would have understood to be in the possession of the inventor. We remain
`unpersuaded that the claims are not supported by the priority document such that
`Faber can and should have been applied as prior art.
`In addition, the Board’s rules for the America Invents Act (“AIA”) post-
`grant proceedings, including those pertaining to institution, are “construed to
`secure the just, speedy, and inexpensive resolution of every proceeding.” 37
`C.F.R. § 42.1(b); see also 35 U.S.C. § 316(b) (regulations for AIA post-grant
`proceedings take into account “the efficient administration of the Office” and “the
`ability of the Office to timely complete [instituted] proceedings”). Therefore, we
`exercised our discretion and did not institute a review based on the other asserted
`grounds for reasons of administrative necessity to ensure timely completion of the
`instituted proceeding. See 37 C.F.R. § 42.108(a). Thus, we are not persuaded that
`the decision on institution should be altered to encompass additional grounds of
`unpatentability.
`
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`For the foregoing reasons, Apple has not shown that the Board abused its
`discretion in denying the additional grounds as the basis for the instant proceeding.
`
`III. CONCLUSION
`Apple’s Request for Rehearing is denied.
`
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`7
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`Case IPR2013-00596
`Patent 7,802,310 B2
`
`For PETITIONER:
`David K.S. Cornwell
`Mark W. Rygiel
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`davidc-PTAB@skgf.com
`mrygiel-PTAB@skgf.com
`
`
`
`For PATENT OWNER:
`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`8
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