Paper 12
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`Trials@uspto.gov
`571-272-7822
` Entered: July 25, 2014
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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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`MOTOROLA MOBILITY LLC, GOOGLE INC., and APPLE INC.
`Petitioners
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`v.
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`ARENDI S.A.R.L.
`Patent Owner
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`
`
`Case IPR2014-00203
`Patent 8,306,993 B2
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`
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`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
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`CHEN, Administrative Patent Judge.
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`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
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`

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`IPR2014-00203
`Patent 8,306,993 B2
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`
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`INTRODUCTION
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`In a Decision entered June 5, 2014 (Paper 10, “Decision”), the Board denied
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`the request of Motorola Mobility LLC, Google Inc. and Apple Inc. (collectively,
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`Petitioner) for inter partes review as to claims 1-24 of U.S. Patent No. 8,306,993
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`B2. Petitioner has filed a timely request for rehearing (Paper 11, “Req. Reh’g”).
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`A request for rehearing must identify specifically all matters the party
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`believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When
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`rehearing a decision on petition, a panel reviews the decision for an abuse of
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`discretion. 37 C.F.R. § 42.71(c). The burden of showing a decision should be
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`modified is on the party challenging the decision. 37 C.F.R. § 42.71(d).
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`For the reasons that follow, the request for rehearing is denied.
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`DISCUSSION
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`Petitioner requests rehearing on the denial of inter partes review of claims 1-
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`4, 6-12, 14-20, and 22-24 on the ground of obviousness over Bonura and
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`Magnanelli, and of claims 5, 13, and 21 on the ground of obviousness over Bonura,
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`Magnanelli, and Giordano.
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`Petitioner first contends that the combination of Bonura and Magnanelli
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`discloses the limitation in the three independent claims that Patent Owner asserts is
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`missing, namely, “allowing the user to make a decision whether to store at least
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`part of the first contact information in the contact database as a new contact or to
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`update an existing contact in the contact database.” Petitioner now argues that its
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`“element-by-element mapping of the claims” in the claim charts of the Corrected
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`Petition (Paper 5, “Pet.”) was not as “relevant” as its arguments preceding the
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`claim charts. Req. Reh’g 3 (citing Pet. 12-21). Petitioner adds that the Board
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`2
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`IPR2014-00203
`Patent 8,306,993 B2
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`“may not have focused” on Petitioner’s arguments on motivation to combine, as set
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`forth in the arguments preceding the claim charts. Req. Reh’g 3.
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`Petitioner’s concerns are misplaced. We reviewed and considered fully the
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`entire Petition, including Petitioner’s contentions regarding Bonura and
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`Magnanelli:
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`Petitioner contends that claims 1, 2, 4, 7-10, 12, 15-18, 20, and 23-24 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Bonura and
`Magnanelli. In support of this asserted ground of unpatentability, Petitioner
`provides explanations of how it alleges the subject matter of each claim is
`disclosed by the combined teachings of Bonura and Magnanelli. Pet. 11-33.
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`Decision 14. We determined that:
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`The combination of Bonura and Magnanelli, however, does not describe
`allowing the user to make a decision to store or to update, because there is
`no language or depiction in either reference of such a choice being
`presented. Nor has Petitioner provided a reason why a person of ordinary
`skill in the art would modify the combination to arrive at the claimed
`invention and, in particular, the single step of making a single decision
`whether to store contact information as a new contact or, alternatively, to
`update an existing contact.
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`Decision 15-16.
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`The Request for Rehearing reargues this issue, and also reargues Petitioner’s
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`related and conclusory assertions in the Petition as to KSR Intl Co. v. Teleflex, Inc.,
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`550 U.S. 398 (2007). We are not persuaded of any abuse of discretion,
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`misapprehension or overlooking of any matters in the Decision’s analyses and
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`determinations on the combination of Bonura and Magnanelli. We reiterate that
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`Petitioner failed to demonstrate a reasonable likelihood that it would prevail in its
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`grounds 1 (based on Bonura and Magnanelli) and 2 (based on Bonura, Magnanelli,
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`and Giordano). Decision 15-16.
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`3
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`IPR2014-00203
`Patent 8,306,993 B2
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` Petitioner also contends that we failed to give the broadest reasonable
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`interpretation to certain language in the independent claims 1, 9, and 17. Req.
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`Reh’g 13-15. In particular, as we stated at page 10 of the Decision, the
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`independent claims recite “allowing the user to make a decision whether to store at
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`least part of the first contact information in the contact database as a new contact or
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`to update an existing contact in the contact database.” We noted in the Decision
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`that “Patent Owner asserts that this term should be construed as ‘presenting to the
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`user a choice between competing alternatives of storing a new contact or updating
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`an existing contact.’” Decision 10.
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`Petitioner acknowledged the Patent Owner’s proposed construction, but
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`offered what it styled as “the second interpretation” of the disputed limitation, i.e.,
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`the user’s decision being whether to store or not to store, or to update or not to
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`update. Pet. 10. Petitioner concluded that Patent Owner’s proposed construction
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`was proper, but sought to add its second interpretation, “[b]ecause the term is
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`ambiguous, the broadest reasonable interpretation should include either
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`construction.” Id.
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`In the Decision, we disagreed and stated:
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`We determine that this second interpretation in Petitioner’s proposed
`construction is not within the broadest reasonable construction of the term.
`The plain language requires a single step of making a single decision to store
`or update, not two separate, alternating steps for a user either to decide to
`store or to decide to update, as Petitioner seems to suggest. Thus, we agree
`with the Patent Owner that the plain language of the claim requires
`presenting to the user a choice between competing alternatives of storing a
`new contact or updating an existing contact.
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`Decision 11.
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`In the Request for rehearing, Petitioner reargues the “second interpretation”
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`position from the Petition, and asserts that its “citations [to the ’993 specification]
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`IPR2014-00203
`Patent 8,306,993 B2
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`were, in fact, highly relevant and should have been considered.” Req. Reh’g 14.
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`We did indeed consider the Petitioner’s citations (see Decision 11), and were not
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`persuaded by them, or by the so-called “second interpretation.” The Request for
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`Rehearing similarly is not persuasive as to Petitioner’s position on the claim
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`construction issue. As noted in the Decision, we determined that the Petitioner’s
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`proposed construction for this limitation is not the broadest reasonable
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`construction.
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`CONCLUSION
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`In view of the foregoing, Petitioner has not carried its burden of
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`demonstrating an abuse of discretion by the Board in misapprehending or
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`overlooking any matters. 37 C.F.R. § 42.71(d).
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`ORDER
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`Accordingly, it is ORDERED that Petitioners’ request for rehearing is
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`denied.
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`5
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`

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`IPR2014-00203
`Patent 8,306,993 B2
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`PETITIONER:
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`Matthew Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
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`
`David Fehrman
`Mehran Arjomand
`MORRISON & FOERSTER LLP
`dfehrman@mofo.com
`marjomand@mofo.com
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`PATENT OWNER:
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`Robert Asher
`Bruce Sunstein
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
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`6