Paper 20
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 24, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONSAMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00514
`Patent 8,023,580 B2
`____________
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`Petitioner filed a Request for Rehearing (Paper 19, “Req. Reh’g”) of
`
`the Board’s decision entered September 9, 2014 (Paper 18, “Decision”),
`which declined to institute inter partes review of U.S. Patent No. 8,023,580.
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 24, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONSAMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00514
`Patent 8,023,580 B2
`____________
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`Petitioner filed a Request for Rehearing (Paper 19, “Req. Reh’g”) of
`
`the Board’s decision entered September 9, 2014 (Paper 18, “Decision”),
`which declined to institute inter partes review of U.S. Patent No. 8,023,580.
`
`
`
`
`
`
`
`IPR2014-00514
`Patent 8,023,580 B2
`
`
`Petitioner incorrectly asserts that we overlooked the “controlling legal
`authority” of Massachusetts Institute of Technology v. AB Fortia,774 F.2d
`1104, 1109 (Fed. Cir. 1985). We did not. Rather, we found the factual
`circumstance presented by Petitioner to be different from that in the cited
`authority.
`In Massachusetts Institute, a paper (“the Birmingham paper”) was
`orally presented at the First International Cell Culture Congress in
`Birmingham, Alabama. The conference was attended by 50 to 500 cell
`culturists. Afterward, copies of the paper were distributed on request,
`without any restriction, to as many as six persons, more than one year prior
`to the filing date of the patents at issue. Mass. Inst. of Tech., 774 F.2d at
`1108–09. Petitioner argues the Court held that the Birmingham paper was a
`printed publication because the Birmingham paper was “orally presented at a
`conference attended by between 50 and 500 cell culturists,” and “[a]fter the
`presentation, copies were distributed on request.” Req. Reh’g 3. Petitioner,
`however, leaves out a critical fact — the Birmingham paper was
`disseminated “without restriction” to attendees who were not authors of the
`paper. Mass. Inst. of Tech., 774 F.2d at 1109.
`In this case, Draft Standard is a draft of a proposed IEEE (Institute of
`Electrical and Electronics Engineers) Standard. Decision 5; Ex. 1005, i.
`Petitioner’s declarant, Mr. O’Hara, testifies that there were “no restrictions
`on who could attend the 802.11 Working Group’s meetings.” Decision 5;
`Ex. 1004 ¶ 10. Mr. O’Hara also testifies that Draft Standard “was discussed
`at one or more of the meetings of the 802.11 working group” and “made
`available to all attendees.” Decision 6; Ex. 1004 ¶ 12. However, the
`Petition and Declaration do not allege, and the supporting evidence is
`
`2
`
`
`
`
`IPR2014-00514
`Patent 8,023,580 B2
`
`
`
`insufficient to show, that Draft Standard was distributed at a Working Group
`meeting “without restriction,” much less “without restriction” to an attendee
`who was not a member of the Working Group.
`As we noted in the Decision, Mr. O’Hara’s testimony is that Draft
`Standard was available on the Working Group’s servers in password-
`protected files. Decision 6; Ex. 1004 ¶ 11. The passwords were provided to
`limit distribution “‘to interested individuals, as opposed to the entire
`[I]internet.’” Decision 6, quoting Ex. 1004 ¶ 11. Maintaining Draft
`Standard in password-protected files is not consistent with the idea of
`distributing the document at a Working Group meeting “without restriction.”
`As we noted in the Decision, we do not find sufficient argument or
`evidence to indicate that any Working Group meeting was advertised or
`otherwise announced to the public, such that any individual who was not
`already a member of, or otherwise aware of, the 802.11 Working Group
`would have known about Draft Standard such that he or she would have
`known to request a copy or ask for access to the document. Decision 7–8.
`Further, the cover of Draft Standard indicates that members of the public
`would need an appropriate license to reproduce any portion of the document.
`Ex. 1005, i. Even if the document was distributed at Working Group
`meetings, it was not “without restriction” as in Massachusetts Institute.
`Moreover, unlike the case in Massachusetts Institute, the purpose of a
`standards-setting working group is not dissemination of information to the
`potentially interested public but generation of a document such as one that
`might be appropriate “‘[t]o offer a standard for use by regulatory bodies to
`standardize access to one or more frequency bands for the purpose of local
`area communication.’” Decision 5 (quoting Ex. 1005, 1).
`
`3
`
`
`
`
`IPR2014-00514
`Patent 8,023,580 B2
`
`
`
`
`
`Petitioner now submits that “whether persons other than members of
`the 802.11 Working [G]roup knew about [Draft] Standard is irrelevant in a
`situation where, as with [Draft] Standard in this particular case, the reference
`was distributed to persons having ordinary skill in the art. Ex. 1004 (O’Hara
`Declaration), ¶9-12.” Req. Reh’g 2–3. The O’Hara Declaration, however,
`does not account for restrictions on dissemination. Cf. Kyocera Wireless
`Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (Fed. Cir. 2008) (finding
`that “ETSI did not impose restrictions on ETSI members to prevent them
`from disseminating information about the standard to nonmembers,” which
`weighed toward public accessibility). Also, the Working Group created
`Draft Standard. See Ex. 1004 ¶ 2. Provision of a document to co-authors of
`the document cannot constitute dissemination, or availability, of the
`document to the public.
`Petitioner’s request for rehearing is denied.
`
`
`4
`
`
`
`
`
`
`
`
`IPR2014-00514
`Patent 8,023,580 B2
`
`For Petitioner:
`Jeffrey A. Miller
`Daniel G. Cardy
`DICKSTEIN SHAPIRO LLP
`millerj@dicksteinshapiro.com
`cardyd@dicksteinshapiro.com
`
`For Patent Owner:
`
`Thomas Engellenner
`Reza Mollaaghababa
`Lana Gladstein
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`gladsteinl@pepperlaw.com
`
`
`5
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