Trial@uspto.gov
`571-272-7822
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` Paper 35
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`Entered: August 3, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC, and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`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(c) and (d)
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`571-272-7822
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` Paper 35
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`
`Entered: August 3, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC, and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`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(c) and (d)
`
`
`
`
`
`
`
`Case IPR2013-00596
`Patent 7,802,310 B2
`
`
`INTRODUCTION
`
`PersonalWeb Technologies, LLC and Level 3 Communications, LLC
`(collectively “PersonalWeb”) filed a Request for Rehearing (Paper 34, “Req.”) of
`the Final Written Decision (Paper 33, “Dec.”), which found that Apple, Inc.
`(“Apple”) had shown by a preponderance of the evidence that all challenged
`claims in the instituted proceeding, claims 24, 32, 70, 81, 82, and 86 of U.S. Patent
`No. 7,802,310 B2 (“the ’310 Patent,” Ex. 1001), are unpatentable. In its request,
`PersonalWeb contends that we applied the wrong claim construction standard to
`the challenged claims, that we overlooked and misapprehended the legal
`significance of PersonalWeb’s nonobviousness arguments, and that we failed to
`address all of the factors considered in Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17–18 (1966) (“Graham”). Req. 1–9.
`The Request for Rehearing is denied.
`
`ANALYSIS
`
`A request for rehearing must identify specifically all matters the party
`believes we misapprehended or overlooked, and the place where each matter was
`addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d);
`see also 37 C.F.R. § 42.120(a) (stating that a patent owner response is filed as an
`opposition). 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);
`
`2
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`Patent 7,802,310 B2
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`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).
`PersonalWeb alleges that we applied the wrong claim construction standard to
`the challenged claims, arguing that we misapprehended the issue in our Final
`Written Decision. Req. 1, citing Dec. 5–6. We disagree.
`A Request for Rehearing naturally must evaluate the priority of a decision at
`the time it was issued. We concluded that we “construe the challenged claims
`according to the broadest reasonable claim construction standard.” Dec. 6. The
`fact that the ’310 Patent expired on April 11, 2015, does not alter whether the
`correct standard was applied at the time that Final Written Decision was issued, on
`March 25, 2015. We agree with PersonalWeb that any document “authored or
`generated by the USPTO after the ’310 Patent has expired cannot use the [Broadest
`Reasonable Construction] standard,” Req. 2, but the Final Written Decision in this
`proceeding was not such a document.
`PersonalWeb also argues that we should have used the Phillips (Phillips v.
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)) standard because
`“there was no opportunity for patent owner to amend claims in this proceeding.”
`Req. 2. However, it is uncontroverted that PersonalWeb had the opportunity to
`amend the claims, although PersonalWeb has claimed and continues to claim that it
`“would have been futile.” Id. We are not persuaded that a patent owner’s
`expectations of the likelihood that a motion to amend will be successful should be
`the proper metric to determine which claim construction standard should be
`applied. See also In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL
`4097949, *7-8 (Fed. Cir. July 8, 2015) (“Congress implicitly approved the broadest
`
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`reasonable interpretation standard in enacting the AIA,” and “the standard was
`properly adopted by PTO regulation.”).
`Additionally, we take no position on whether the application of the differing
`claim construction standards would provide “a meaningful distinction,” Req. 3, as
`any position we take would be merely dicta in view of the Final Written Decision.
`To the extent that PersonalWeb is inviting us to reevaluate our adopted claim
`construction under another standard, we respectfully decline, and we are persuaded
`that this Decision on Request for Rehearing is not the proper vehicle to perform
`such a reevaluation.
`PersonalWeb also alleges that KSR (KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007)) asserts that “it is the combination of old elements for their
`intended purpose, with each element performing the same function it had been
`known to perform, that may be obvious.” Req. 6. PersonalWeb continues that the
`alleged combination of Woodhill does not use Woodhill’s or Stefik’s identifiers for
`their intended purposes, or to perform the same function they were known to
`perform. Id. PersonalWeb alleges that “[a]s a matter of law, it would not have
`been obvious to have used binary object identifiers 74 in an access control system
`to determine whether access is authorized or unauthorized in view of Woodhill and
`Stefik.” Id. at 6–7. We do not agree.
`We addressed this argument in the Final Written Decision (Dec. 20), finding
`that the claims do not require that claimed identifiers be used only to determine
`access authorization. Certainly, as PersonalWeb argues (Req. 7–8), claim 24
`determines access based on the content-dependent name, but the claims do not
`limit its use to access authorization only. The Specification of the ’310 Patent
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`provides for the use of identifiers to determine presence of a data item, to allow for
`redundancy, to provide version control, to verify retrieved data, and to provide
`tracking. Ex. 1001, 3:52–4:59. As such, PersonalWeb’s arguments take too
`limited of a view of the functions performed by the identifiers in Woodhill and
`Stefik, and we continue to be persuaded that the identifiers in Woodhill and Stefik
`are not being used contrary to their intended purposes in the proffered
`combination. Dec. 20. Similarly, we also previously considered PersonalWeb’s
`argument that Woodhill already has an authorization system and there would have
`been no logical reason to have modified Woodhill (Req. 7; Dec. 17-18), and we are
`not persuaded that we overlooked or misapprehended that prior argument.
`Finally, PersonalWeb also alleges that the Final Written Decision failed to
`address all of the factors provided in Graham. Req. 8–9. More specifically,
`PersonalWeb argues that we overlooked factors (2) and (3), namely: (2)
`differences between the claimed subject matter and the prior art and (3) the level of
`skill in the art. PersonalWeb is mistaken, however, in that a final written decision
`is not an office action containing a rejection that must provide a complete
`evaluation of the Graham factors to conclude obviousness. A final written
`decision determines if a petitioner has shown by a preponderance of the evidence
`that subject claims are unpatentable. Thus, the Final Written Decision need not
`make findings as to all of the Graham factors, as long as Petitioner has provided
`such consideration in the Petition.
`In any event, the Final Written Decision provided such considerations (Dec.
`15, citing Pet. 42), stating that “a person of ordinary skill in the art reading
`Woodhill and Stefik would have understood that the combination of Woodhill and
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`Stefik would have allowed for the selective access features of Stefik to be used
`with Woodhill’s content-dependent identifiers feature.” Id. The differences
`between the claims and the prior art, as well as the level of skill in the art, are
`implicitly provided in Apple’s analysis asserted in the Petition. Additionally,
`although PersonalWeb noted the Graham factors in its Patent Owner’s Response
`(PO Resp. 11–12), it did not allege that Apple’s ground was deficient for failing to
`consider all of the Graham factors. Thus, we could not have overlooked or
`misapprehended arguments not made until the request for rehearing.
`For the forgoing reasons, PersonalWeb has not shown that we
`misapprehended or overlooked any of the matters identified above in concluding
`this inter partes review in its Final Written Decision.
`
`CONCLUSION
`
`PersonalWeb’s request for rehearing is denied.
`
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`6
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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 OWNERS:
`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`7
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