`Tel: 571-272-7822
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` Paper 16
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`Entered: July 11, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC.
`Petitioner
`
`v.
`
`OPENTV, INC
`Patent Owner
`_______________
`
`Case IPR2014-00267
`Patent 7,409,437 B2
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
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`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
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`
`
`
`
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`
`
`IPR2014-00267
`Patent 7,409,437 B2
`
`
`
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`I. INTRODUCTION
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`Patent Owner OpenTV, Inc. has filed a timely Request for Rehearing (Paper
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`15, “Req. Reh’g.”) of our decision entered June 24, 2014 (Paper 13) instituting
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`trial.
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`We deny the Request for Rehearing.
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`II. ANALYSIS
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`Patent Owner urges that we misapprehended the law governing institution of
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`an inter partes review. Req. Reh’g 2. Patent owner urges that the Palmer grounds
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`should not have been instituted because “the Petition did not even arguably present
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`or contain the necessary information” to show that there is a reasonable likelihood
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`that at least one claim is unpatentable. Id. at 2-3. A similar argument was made in
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`the Patent Owner’s Preliminary Response (Paper 11) at pages 13-16. We disagree.
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`The appropriate standard for institution is set forth in 35 U.S.C.
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`§ 314(a):
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`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
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`Neither § 314 is to be read in a vacuum, nor is a Petition. Section 312
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`provides that a Petition shall identify each claim challenged and the grounds
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`therefor. Notably, 35 U.S.C. § 312 (a)(3) also permits the submission of evidence
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`such as copies of patents and printed publications, along with affidavits,
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`declarations, and expert opinions. The Patent Owner is correct that the Petition
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`must explain, adequately and with particularity, the nature of the prior art and its
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`application to the challenged claims. Req. Reh’g. 3.
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`
`
`2
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`
`
`IPR2014-00267
`Patent 7,409,437 B2
`
`
`
`The question is whether the information presented in the petition shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect to at
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`least one of the claims challenged in the petition. The petition relies on a
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`provisional application for the essential description of certain claimed features.
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`The Patent Owner is correct that the Palmer Patent (Ex. 1007) is prior art only to
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`the extent that the earlier provisional application (Ex. 1008) supports it. Req.
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`Reh’g 4.
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`We turned to the specifically cited portions of the provisional application.
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`See especially Pet. 37 (citing Ex. 1008, at pages 1, 3, 6, 9, 10, and Figure 1).
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`Each portion of the Palmer provisional which we quoted and discussed in
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`the Decision on Institution came from each of these specifically cited pages;
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`indeed, in most instances the entire page was pertinent. The only figure
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`reproduced in the Decision on Institution was Figure 1. We disagree with the
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`Patent Owner’s position that the Petition did not present this information.
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`We also disagree with the assertion that the grounds were “cobble[d]
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`together” or were based upon “the Board’s showing.” Req. Reh’g 4. We read the
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`reference as it was pointed out to us in several locations in the Petition. We did not
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`undertake to fill gaps or holes. The petition and evidence of record in this instance
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`support the determination to institute a trial.
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`
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`III. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that the Request for Rehearing is DENIED.
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`3
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`
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`IPR2014-00267
`Patent 7,409,437 B2
`
`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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