`571-272-7822
`
`Paper 15
`Entered: June 13, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ORACLE CORPORATION
`
`Petitioner
`
`V.
`
`Patent 0f CLOUDING IP, LLC
`Patent Owner
`
`Case IPR2013-00075
`
`Patent 6,925,481
`
`Before JAMESON LEE, MICHAEL W. KIM, and RAMA G. ELLURU,
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`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
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`DECISION
`
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42. 71
`
`1
`
`L&H CONCEPTS 2009
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`|PR2014-00437
`
`
`
`IPR2013-00075
`
`Patent 6,925,481
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`On May 17, 2013, Oracle filed a request for rehearing (“Req.”) of the
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`Board’s decision (“Dec”), dated May 3, 2013, which instituted inter partes review
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`of claims 1, 2, 25, 28, 32, and 50-57 of Clouding IP’s Patent 6,925,481 (“the ’481
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`patent”). The request for rehearing is denied.
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`BACKGROUND
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`The Board granted Oracle’s petition and instituted an inter partes review of
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`claims 1, 2, 25, 28, and 50-57 of the ’481 Patent as anticipated by Schilit under
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`35 U.S.C. § 102 and of claim 32 as obvious over Schilit and Hutsch under
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`35 U.S.C. § 103. The Board denied all other asserted grounds as being redundant
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`in light of the grounds for which review was instituted for the same claims. (Dec.
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`13-14). Oracle seeks reconsideration of the Decision denying the petition on the
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`ground that claims 1, 2, 25, 28, and 50-57 are unpatentable as obvious under
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`35 U.S.C. § 103 over Barrett and Schilit.
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`ANALYSIS
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`When rehearing a decision on petition, a panel will review the decision for
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`an abuse of discretion. 37 C.F.R. § 42.71(c).
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`In rendering the Decision, the Board weighed relevant factors and exercised
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`its discretion in denying as redundant the alleged ground that claims 1, 2, 25, 28,
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`and 50-57 are unpatentable as obvious under 35 U.S.C. § 103 over Barrett and
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`Schilit. Oracle asserts that our decision not to institute review on the ground of
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`obviousness based on Barrett and Schilit was unreasonable for several reasons.
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`The argument is unpersuasive.
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`Oracle contends that the ground of obviousness based on Barrett and Schilit
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`is not redundant to the ground of anticipation based on Schilit alone, because the
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`Petition relied on Barrett, and not Schilit, for certain limitations of independent
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`IPR2013-00075
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`Patent 6,925,481
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`claims 1, 50, 52, 54, and 55 and because the systems of Barrett and Schilit are
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`fundamentally different with respect to these limitations. Oracle’s contentions are
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`misplaced. The proper focus of a redundancy designation is not on whether the
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`applied prior art disclosures have differences, for it is rarely the case that the
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`disclosures of different prior art references will be literally identical. Instead, as
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`has been explained in an expanded panel decision in Liberty Mutual Ins. Co. v.
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`Progressive Casually Ins. C0., CBM2012-00003 (Paper No. 7), at *2 (PTAB Oct.
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`25, 2012) (Patent Review Processing System), the focus is on whether the
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`Petitioner articulated a meaningful distinction in terms of relative strengths and
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`weaknesses with respect to application of the reference disclosures to one or more
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`claim limitations.
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`While Oracle did identify in the Petition several limitations of independent
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`claims 1, 50, 52, 54, and 55 that are allegedly disclosed by both Barrett and Schilit,
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`Oracle did not articulate any meaningful distinction between those separate
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`disclosures in terms of potential strengths and weaknesses in the application of
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`each disclosure to those claim limitations. Because Oracle alleges that all the
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`features of the claims at issue are disclosed by Schilit, the ground based on a
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`combination of Barrett and Schilit is redundant in the absence of the Petition’s
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`explanation as to why Barrett is more preferred for satisfying some elements, while
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`Schilit is more preferred for satisfying some other elements.
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`The Board exercised its discretion in not instituting review on the ground of
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`obviousness based on Barrett and Schilit, in light of the institution of review of the
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`same claims on the ground of anticipation over Schilit. As provided in 37 C.F.R.
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`§ 42.108(a), “[w]hen instituting inter partes review, the Board may authorize the
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`review to proceed on all or some of the challenged claims and on all or some of the
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`grounds of unpatentability asserted for each claim.” In that connection, note that
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`
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`IPR2013-00075
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`Patent 6,925,481
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`Part 42, Title 37, Code of Federal Regulations, is construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
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`Oracle contends:
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`Petitioner submits that an obviousness ground by definition
`cannot be redundant with an anticipation ground. The two grounds
`are premised on different
`statutory provisions
`and engender
`fundamentally different
`legal standards and analyses.
`This is a
`difference with a substantial practical impact.
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`(Req. 2-3). Oracle’s contention is misplaced, as it misdirects the focus. Yes, the
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`two statutory grounds are not the same, just as the specific disclosures of Barrett
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`and Schilit are not the same. But that is not the issue. What matters for
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`determining redundancy of grounds is whether petitioner has articulated
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`meaningful distinction in the potential strength and weaknesses of the applied prior
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`art. If, according to the petitioner, multiple grounds are equally good, the Board
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`can exercise discretion to institute review based on less than all grounds.
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`Oracle contends the following:
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`the Patent Owner need only show that
`To overcome anticipation,
`Schilit fails to disclose a single element of the claim, however trivial.
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`If the Patent Owner were to succeed in arguing that Schilit fails to
`disclose any element for which Barrett has been shown in the Petition
`to have a corresponding disclosure, it would become necessary and
`prudent to adjudicate the non-instituted obviousness ground in the
`instant proceeding. Failing to do so would cause the Petitioner or
`other interested parties to re-start the entire process by filing a new
`petition setting forth the previously non-instituted ground.
`That
`would be an inefficient use of the Board’s and the parties’ resources
`and such an approach would frustrate the intent of Congress and the
`Office to provide an efficient and effective alternative to patent
`litigation.
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`(Req. 3; emphasis added.) Oracle’s contentions are not persuasive. First of all, the
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`obviousness contention does not acknowledge that any claim limitation is not
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`
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`IPR2013-00075
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`Patent 6,925,481
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`disclosed by at least one of Barrett and Schilit. Thus, the obviousness contention
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`also would fail if the Patent Owner only shows that a single claim limitation is not
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`disclosed by either Barrett or Schilit, however trivial. Also, in its anticipation
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`contention, Oracle’s Petition expresses no tentativeness or lack of confidence in
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`connection with finding that any claim limitation is disclosed in Schilit.
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`Moreover, the Board maintains impartiality in weighing relevant factors of a
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`case to render a decision. Discretion is not exercised with the goal of placing
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`either party in a better or worse position to prevail. As set forth above, if Oracle
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`believed that Schilit had certain weaknesses as compared to Barrett with regard to
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`some claim limitations, it was incumbent upon Oracle to identify those weaknesses
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`so as to allow the Board to recognize and weigh that factor in rendering the
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`decision to institute review.
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`Oracle contends that unlike the situation in Liberty Mutual, in which the
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`petitioner presented 422 grounds of unpatentability, Oracle is only asking for one
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`additional ground, which will not significantly burden the Board or cause
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`unnecessary delays. While the number of grounds presented is a factor in
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`determining redundancy, it is not alone determinative. It ultimately remains a
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`matter of discretion whether to proceed with any redundant ground. There is no
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`magical number that defines the floor in determining redundancy.
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`For all the reasons set forth above, Oracle has not shown that not instituting
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`review on the ground of obviousness based on Barrett and Schilit constitutes an
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`abuse of discretion.
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`Oracle further requests that the Board provide express guidance on certain
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`issues. However, a request for rehearing is not an appropriate forum to seek
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`guidance. Nor is it appropriate for the Board to advise Oracle on specific action to
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`take in this case, no matter what the forum.
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`
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`IPR2013-00075
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`Patent 6,925,481
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`CONCLUSION
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`Oracle’s request for rehearing is denied.
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`peb
`
`For PETITIONER:
`
`Greg Gardella
`and
`
`Scott McKeown
`
`OBLON SPIVAK
`
`CPDocketGardella@oblon.com
`cpdocketmckeown@oblon.com
`
`For PATENT OWNER
`
`Tarek Fahmi
`
`and
`
`Amy Ember:
`FAMHI, SELLERS, EMBERT & DAVITZ
`tarek.fahmi@tnfip.com
`amy.embert@fseip.com
`
`