Paper No.
`Filed: July 8, 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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`NETFLIX, INC.
`Petitioner
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`v.
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`OPENTV, INC.
`Patent Owner
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`Case IPR2014-00252
`Patent 8,107,786
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`Patent Owner OpenTV, Inc.’s
`Request for Rehearing Under 37 C.F.R. § 42.71(c)
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`Filed: July 8, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00252
`Patent 8,107,786
`
`
`
`
`
`
`
`
`
`
`Patent Owner OpenTV, Inc.’s
`Request for Rehearing Under 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2014-00252
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`Table of Contents
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`I.
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`II.
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`Introduction and Statement of Relief Requested ............................................. 1
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`Legal Standards ............................................................................................... 1
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`III. The Board Misapprehended, and Thus Failed to Adhere to, the Law
`Governing When Institution Is Permitted ........................................................ 2
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`IV. Conclusion ....................................................................................................... 6
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`i
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`Case No. IPR2014-00252
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`
`Table of Authorities
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`FEDERAL CASES
`Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wash.,
`334 F.3d 1264 (Fed. Cir. 2003) ............................................................................ 2
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`Page(s)
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 3
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`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, (Paper 26) .................................................................................. 5
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`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................................ 3
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`Stevens v. Tamai,
`366 F.3d 1325 (Fed. Cir. 2004) ............................................................................ 2
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`
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`FEDERAL STATUTES
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`35 U.S.C. § 312(a)(3) ......................................................................................... 1, 2, 3
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`35 U.S.C. § 314(a) ............................................................................................passim
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`
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`FEDERAL REGULATIONS
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`37 C.F.R. § 42.71(c) ............................................................................................... 1, 2
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`37 C.F.R. § 42.71(d) .............................................................................................. 1, 2
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`ii
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`Case No. IPR2014-00252
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`I.
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`Introduction and Statement of Relief Requested
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`Pursuant to 37 C.F.R. §§ 42.71(c)-(d), Patent Owner, OpenTV, Inc., requests
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`rehearing of the Decision instituting Inter Partes Review of U.S. Patent No.
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`8,107,786 (Paper 13, the “Institution Decision”). The Institution Decision ordered
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`review on two grounds of unpatentability: claims 1-6 as anticipated by Plotnick
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`(U.S. Pat. Pub. No. 2005/0097599); and claim 7 as obvious over Plotnick in view
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`of Eldering (U.S. Patent No. 6,820,277). OpenTV requests that the Board
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`reconsider and reverse its decision to institute on both grounds because the
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`Decision misapprehended the law governing when the Board is authorized to
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`institute and prohibited from instituting review. Therefore, no trial should be
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`instituted on the ’786 patent.
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`II. Legal Standards
`“The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition
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`filed under section 311 and any response filed under section 313 shows that there
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`is a reasonable likelihood that the petitioner would prevail with respect to at least 1
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`of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added).
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`Consistent with this statute, 35 U.S.C. § 312(a)(3) provides that “[a] petition under
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`section 311 may be considered only if . . . the petition identifies, in writing and
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`1
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`with particularity . . . the evidence that supports the grounds for the challenge to
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`Case No. IPR2014-00252
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`each claim.”
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
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`§ 42.71(d). “When rehearing a decision on petition, a panel will review the
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`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion
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`occurs where the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is
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`based on an erroneous conclusion of law; (3) rests on clearly erroneous fact
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`findings; or (4) involves a record that contains no evidence on which the Board
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`could rationally base its decision.” Stevens v. Tamai, 366 F.3d 1325, 1330 (Fed.
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`Cir. 2004) (quoting Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wash., 334
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`F.3d 1264, 1266-67 (Fed. Cir. 2003)).
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`III. The Board Misapprehended, and Thus Failed to Adhere to, the Law
`Governing When Institution Is Permitted
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`A petition for inter partes review may not be instituted unless the petition
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`itself shows that there is a reasonable likelihood that at least one claim is
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`unpatentable. 35 U.S.C. § 314(a). The Institution Decision violated this provision
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`by instituting trial when the Petition did not present the necessary information. In
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`particular, the anticipation ground proposed in the Petition could not be instituted
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`because the Petition did not show how the disparate portions of Plotnick it relied
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`Case No. IPR2014-00252
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`on taught all of the elements of the claims as arranged in the claim—a requirement
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`for any prima facie case of anticipation. Net MoneyIN, Inc. v. VeriSign, Inc., 545
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`F.3d 1359, 1371 (Fed. Cir. 2008). Paper 11 at 3-6. For the obviousness ground,
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`the Petition did not show how the disparate teachings of Plotnick relied on would
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`have been arranged or combined with each other and Eldering to reach the alleged
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`obviousness combination. The Petition therefore failed to show facts necessary to
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`determine the scope and content of the prior art—a requirement of any a prima
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`facie case of obviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
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`Paper 11 at 18-24. The Petition thus failed to establish a reasonable likelihood of
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`prevailing on any claim, 35 U.S.C. § 314(a), and did not identify, with sufficient
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`particularity, the evidence on which the proposed grounds were based. 35 U.S.C.
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`§ 312(a)(3).
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`The Decision instituting the Petition’s anticipation and obviousness grounds
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`overlooked the failings of the Petition and erroneously looked beyond the
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`information presented in the Petition to support its conclusion that there was a
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`reasonable likelihood that Netflix would prevail on any claim. For example, in
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`response to OpenTV’s argument that the Petition’s anticipation ground for claims
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`1-3 was deficient for failing to show how the disparate disclosures of Plotnick
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`taught various claim elements as arranged in these claims, the Board stated that
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`OpenTV did not “appear to consider Plotnick’s disclosures [in ¶ 0096] that a VoD
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`3
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`Case No. IPR2014-00252
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`system is a type of PVR . . . .” Decision at 10. But the Petition did not discuss
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`Plotnick’s ¶ 0096 or show how it might relate to the claims. Nor did the Petition
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`consider any of the 20 other paragraphs of Plotnick discussed by the Board.
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`Compare, e.g., Pet. at 9-20 with Decision at 8-10. By filling in evidentiary gaps of
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`the Petition and taking it upon itself to establish that a reasonable likelihood of
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`prevailing existed, the Board committed legal error. This error permeated the
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`Decision to institute all of the challenged claims. See, e.g., Decision at 8-10
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`(discussing claims 1-3), 12 (discussing claims 4-6), 15 (discussing claim 7).
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` 35 U.S.C. § 314(a)—the statute that governs when the Board is permitted
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`to institute trial—states that “[t]he Director may not authorize an inter partes
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`review to be instituted unless the Director determines that the information
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`presented in the petition . . . shows that there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” (Emphasis added). This provision of the statute expressly prohibits the
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`Board from instituting inter partes review if the information presented in the
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`Petition itself does not show a reasonable likelihood that the Petitioner would
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`prevail. It does not allow the Board to make its own case to establish that a
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`reasonable likelihood of prevailing might exist by filling in evidentiary gaps in the
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`Petition. Nonetheless, that is what the Institution Decision did, misapprehending
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`and ignoring the clear mandate of 35 U.S.C. § 314(a).
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`Case No. IPR2014-00252
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`Consistent with 35 U.S.C. § 314(a), the Board’s role is to judge the
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`sufficiency of a petition rather than to make a case for a Petitioner who fails to
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`meet its own burden that an inter partes review should be instituted. As the Board
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`has stated, an inter partes review is more akin to an adjudicatory proceeding than
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`an examination of the challenged patent. Idle Free Sys., Inc. v. Bergstrom, Inc.,
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`IPR2012-00027, Paper 26, at 6. “An inter partes review is neither a patent
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`examination nor a patent reexamination.” Id. at 7. By taking up its own analysis
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`and filling the evident gaps in what the Petition showed, as it did here, the Board
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`misapprehends its role as an adjudicator. As the Board has previously stated, its
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`role at the institution stage is only to adjudicate the sufficiency of the petition.
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`By failing to judge the Petition on its contents alone and looking beyond the
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`information presented in the Petition to establish a reasonable likelihood of
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`prevailing, the Institution Decision violated 35 U.S.C. § 314(a). This was
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`improper, so the Board should reconsider and reverse its institution decision.
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`5
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`Case No. IPR2014-00252
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`IV. Conclusion
`For the foregoing reasons, OpenTV requests that the Board deny Grounds 1
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`and 2 in the Petition, and decline to institute Inter Partes Review of the ’786
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`Respectfully submitted,
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`By:
`Erika H. Arner
`Registration No. 57,540
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`Joshua L. Goldberg
`Registration No. 59, 369
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`Counsel for OpenTV, Inc.
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`6
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`patent.
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`Dated: July 8, 2014
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner
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`OpenTV, Inc.’s Request for Rehearing Under 37 C.F.R. § 42.71(c) was served
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`on July 8, 2014 via FedEx and email directed to counsel of record for the Petitioner
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`at the following:
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`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Dustin Johnson
`dustin.johnson.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, Texas 75219
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
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`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
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