Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.
`Petitioners
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`v.
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`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, INC.
`Patent Owners
`___________________
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`Case IPR2014-00062
`Patent 7,802,310
`_____________________
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`PETITIONERS’ REQUEST FOR REHEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.
`Petitioners
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, INC.
`Patent Owners
`___________________
`
`Case IPR2014-00062
`Patent 7,802,310
`_____________________
`
`PETITIONERS’ REQUEST FOR REHEARING
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`Petitioner’s Request for Rehearing
`IPR2014-00062 (Patent 7,802,310)
`Pursuant to 37 C.F.R. § 42.71(d)(1), Petitioners hereby request rehearing and
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`partial reconsideration of the Decision – Institution of Inter Partes Review, entered
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`April 15, 2014, Paper No. 9 (the “Institution Decision”).
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`While the Institution Decision in the present inter partes review authorized
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`grounds #3 and #4, it did not similarly authorize review on the grounds: (1) that
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`claims 1, 2, 5-8, 10, 12, 14, and 16-19 were unpatentable under 35 U.S.C. § 103
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`over Kinetech/Farber1 in view of Brunk (Ground #1 in the Petition); and (2) that
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`claims 24, 29, 70, 81, 82, and 86 were unpatentable under 35 U.S.C. § 103 over
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`Kinetech/Farber in view of Francisco further in view of Brunk (Ground #2 in the
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`Petition). The Board reasoned that Grounds #1 and #2 were “redundant to the
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`grounds of unpatentability” upon which trial was instituted. Institution Decision at
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`29.
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`The Board apparently recognized at least part of Petitioners’ specific
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`argument in the Petition itself of reasons why institution on multiple grounds is
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`proper. See Institution Decision at 29. However, the Board has apparently
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`misapprehended the significance (as to ground #1/#2 redundancy vis-à-vis
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`instituted grounds #3/#4) of one of Petitioners’ principal reasons for proposing
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`1 Kinetech, WO 96/32685, published October 17, 1996, was referred to in the
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`Institution Decision as “Farber.” For clarity, the reference will be referred to as
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`“Kinetech/Farber” in the instant Request for Rehearing.
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`–1–
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`Petitioner’s Request for Rehearing
`IPR2014-00062 (Patent 7,802,310)
`multiple grounds. Specifically, Petitioners note in Section C entitled “THRESHOLD
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`SHOWING OF REASONABLE LIKELIHOOD … HAS BEEN MET; INSTITUTION OF INTER
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`PARTES REVIEW ON MULTIPLE GROUNDS IS PROPER” that “patent owner may
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`argue…more specialized meaning for claim terms.” See Petition at 10-11,
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`Institution Decision at 29.
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`Petitioners’ statement regarding “specialized meaning” is not merely a
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`truism. Rather, Petitioners note (albeit succinctly) the very essence of a
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`meaningful distinction in terms of the relative strength and weakness of the
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`respective grounds (specifically, ground #1/#2 vis-à-vis instituted grounds #3/#4).
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`As the Board has no doubt recognized based on its institution on Kinetech/Farber
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`grounds in Petitioners’ related IPR2014-00058 (relative to U.S. Patent No.
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`8,099,420), a “classic Tronzo v. Biomet fact pattern”2 is a ground like no other in
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`that a published counterpart of Patent Owner’s very own patent document
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`invalidates all later claimed obvious variations. Particularly and in the present
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`proceedings, those claims that recite the “less than all of the data variation that
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`challenged claims 1, 2, 5-8, 10, 12, 14, 16-19, 24, 29, 70, 81, 82 and 86 … purport
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`2 See Petition at 9 identifying for the Board this classic Tronzo v. Biomet fact
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`pattern.
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`–2–
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`Petitioner’s Request for Rehearing
`IPR2014-00062 (Patent 7,802,310)
`to cover”3 are rendered invalid notwithstanding any specialized meaning that
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`Patent Owners may argue based on the specification.
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`In contrast, grounds #3 and #4 do not benefit from the same invulnerability
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`to a specialized meaning argument by Patent Owners. Indeed, the Petition itself
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`specifically contrasts the vitality of grounds #1 and #2 as they apply to the
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`aforementioned “less than all of the data” claims with the relative strength of
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`grounds #3 and #4 as to claims (e.g., 11 and 32) that recite “all of the data” or for
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`which an early priority date may be alleged.4
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`As argued in detail in the Petition, the claims of the ‘310 Patent are not
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`entitled to the earliest priority date claimed. Petition at 5-10. Accordingly, certain
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`claims the ‘310 Patent (namely the aforementioned “less than all of the data”
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`claims for which grounds #1 and #2 are particularly strong) are no more than an
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`obvious variant of Kinetech/Farber, the foreign counterpart application to the ‘310
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`Patent, particularly when also considering the teachings of Brunk and Francisco.
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`Petition at 10, 25-35.
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`3 See Petition at 9-10 summarizing in central argument form the significance of
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`the Tronzo v. Biomet fact pattern (grounds #1, #2) and contrasting the relative
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`strength of grounds #3 and #4.
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`4 Petition at 9-10; see also Petition at 27-28 (noting that Claims 11 and 32 recite
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`“all of the contents”).
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`–3–
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`Petitioner’s Request for Rehearing
`IPR2014-00062 (Patent 7,802,310)
`The necessarily corresponding disclosures of Kinetech/Farber and the ‘310
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`Patent (the aforementioned and classic Tronzo v. Biomet fact pattern specifically
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`recited in the Petition) make readily apparent the non-redundancy of Grounds #1
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`and #2 and the justifications for institution on these grounds. No matter the
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`“specialized meaning for claim terms” that Patent Owners may even conceivably
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`argue in these trial proceedings, if those specialized meanings are properly
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`supported by the written description of the ‘310 Patent, then Kinetech/Farber will
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`also disclose or render obvious those claim terms, despite such specialized
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`meanings. Similarly, if Patent Owners choose to move to amend the claims, if the
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`proposed claims are supported by the ‘310 Patent, they are also at the very least
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`obvious over Kinetech/Farber. Accordingly, the grounds which rely on
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`Kinetech/Farber are not redundant at all, and their institution for trial is warranted
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`here in this proceeding.
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`Moreover, Petitioners respectfully suggest that institution on Grounds #1
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`and #2 is consistent with the Board’s decision to institute trial in another
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`proceeding, namely IPR2013-00058 (relative to Petitioners’ challenge of Patent
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`Owners’ ‘420 Patent). In IPR2013-00058, the Board instituted an inter partes
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`review, finding (in part) that Petitioners had presented a reasonable likelihood that
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`claim 166 of the ‘420 Patent was obvious over Kinetech/Farber for similar reasons
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`as presented herein: the ‘420 Patent is not entitled to the earliest priority it claims,
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`–4–
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`Petitioner’s Request for Rehearing
`IPR2014-00062 (Patent 7,802,310)
`and is thus an obvious variant of Kinetech/Farber. IPR2013-00058, Institution
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`Decision, Paper No. 10, at 13-21 (April 15, 2014). The claim features in the ‘420
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`Patent which are not entitled to priority are similar to the claim features in the ‘310
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`Patent that are not entitled to priority: a content-dependent digital identifier based
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`on “some of the bits” or “some of the contents” of a particular data item. Indeed,
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`the ‘310 Patent claims priority to (and through) the application which issued as the
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`‘420 Patent. Petition at 9, 17.
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`Thus, institution of trial on Grounds #1 and #2 does not add any substantial
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`burden on the PTAB or Patent Owners: the very same dispositive issues of priority
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`and the disclosure and teachings of Kinetech/Farber will already be extensively
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`analyzed, briefed, and argued to the Board in IPR2013-00058. The two
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`proceedings are on the same schedule, are assigned to the same panel, and may
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`very likely be argued at the same oral hearing. Thus, the Board is well-positioned
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`to address these additional similar grounds of unpatentability in the instant
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`proceeding as well.
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`For at least the reasons set forth herein, Petitioners respectfully request a
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`supplemental Institution Decision adding the following grounds of unpatentability
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`to the instant inter partes review: (1) claims 1, 2, 5-8, 10, 12, 14, and 16-19 as
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`unpatentable under 35 U.S.C. § 103 over Kinetech/Farber in view of Brunk
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`(Ground #1 in the Petition); and (2) claims 24, 29, 70, 81, 82, and 86 were
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`–5–
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`Petitioner’s Request for Rehearing
`IPR2014-00062 (Patent 7,802,310)
`unpatentable under 35 U.S.C. § 103 over Kinetech/Farber in view of Francisco
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`further in view of Brunk (Ground #2 in the Petition).
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`Dated: 29-Apr-2014
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`Respectfully submitted,
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`/David W. OBrien/
`David W. O’Brien, Reg. No. 40,107
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`–6–
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`
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`Petitioner’s Request for Rehearing
`IPR2014-00062 (Patent 7,802,310)
`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.
`Petitioners
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, INC.
`Patent Owners
`___________________
`Case IPR2014-00062
`Patent 7,802,310
`_____________________
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e)(4), that service
`was made on the Patent Owners as detailed below.
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`Date of service April 29, 2014
`Manner of service By email upon counsel of record listed below
`Documents served Petitioners’ Request for Rehearing
`Persons served Joseph A. Rhoa (jar@nixonvan.com)
`Updeep S. Gill (usg@nixonvan.com)
`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203
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`Respectfully submitted,
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`
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`/David W. OBrien/
`David W. O’Brien
`Registration No. 40,107
`HAYNES AND BOONE, LLP
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`–7–
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