`571-272-7822
`
`
`
`
`
`
`Paper 16
`Entered: July 11, 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
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`Case IPR2014-00252
`Patent 8,107,786
`
`
`Introduction
`
`On July 8, 2014, OpenTV, Inc. (“Patent Owner”) filed a request for
`
`rehearing (Paper 14, “Req. Reh’g”) of the Board’s decision instituting an
`
`inter partes review, entered June 24, 2014 (Paper 13, “Dec.”). According to
`
`Patent Owner, the Decision misapprehended the law governing when
`
`institution is permitted. The request is denied.
`
`Discussion
`
`A party requesting rehearing has the burden of showing a decision
`
`should be modified by specifically identifying all matters the party believes
`
`the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When
`
`rehearing a decision on a petition, a panel will review the decision for an
`
`abuse of discretion. 37 C.F.R. § 42.71(c).
`
`Patent Owner asserts the Board provided its own analysis and filled in
`
`evidentiary gaps, thus overstepping its role as an adjudicator. Req. Reh’g 5.
`
`However, the Petition is not to be read in a vacuum. Section 312 provides
`
`that a Petition shall identify each claim challenged and the grounds therefor.
`
`Notably, 35 U.S.C. § 312 (a)(3) also permits the submission of evidence
`
`such as copies of patents and printed publications, along with affidavits,
`
`declarations, and expert opinions. While the Patent Owner is correct that the
`
`Petition must explain, adequately and with particularity, the nature of the
`
`prior art and its application to the challenged claims, the question is whether
`
`the information presented in the petition shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least one of the
`
`claims challenged in the petition.
`
`Petitioner’s challenges identified portions of Plotnick as allegedly
`
`disclosing each of the limitations in the claims challenged under 35 U.S.C. §
`
`
`
`
`2
`
`
`
`Case IPR2014-00252
`Patent 8,107,786
`
`102. While it is not the Board’s role to cure evidentiary flaws in a petition,
`
`the Board considers all of the evidence presented. Citations in the Decision
`
`to paragraphs of Plotnick not particularly called out in the petition are not a
`
`result of the Board “filling in evidentiary gaps of the Petition and taking it
`
`upon itself to establish that a reasonable likelihood of prevailing existed,” as
`
`asserted by Patent Owner. Req. Reh’g 4.
`
`Rather, those citations provide clarity regarding the reasons the Board
`
`was persuaded that, on the evidence presented, there was a reasonable
`
`likelihood that the petitioner would prevail with respect to at least one of the
`
`claims challenged in the petition. While it is not the Board’s role to cure
`
`deficiencies in a petition, the Board does not read the petition without
`
`considering the underlying evidence submitted. Likewise, the Board does
`
`not look to citations to a reference without considering the relevant context.
`
`Moreover, those citations alleged to be beyond the scope of the petition are
`
`merely citations to portions of a prior art reference (Plotnick) that was
`
`submitted as part of the petition. In fact, Petitioner cited to various
`
`paragraphs within the range of paragraphs cited by the Board that are alleged
`
`to be beyond the scope of the petition. We disagree that the Decision
`
`misapprehended the law and, accordingly, deny the request for rehearing.
`
`
`
`ORDER
`
`It is ORDERED that Patent Owner’s request for rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2014-00252
`Patent 8,107,786
`
`FOR PETITIONER:
`Andrew S. Ehmke
`Scott Jarratt
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`scott.jarratt.ipr@haynesboone.com
`
`
`FOR PATENT OWNER:
`Erika H. Arner
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT AND DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`
`Russell Levine
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`russell.levine@kirkland.com
`eugene.goryunov@kirkland.com
`
`
`
`
`4
`
`
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