Paper 12
`Date: 8 December 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FIRST DATA CORPORATION,
`Petitioner,
`
`v.
`
`CARDSOFT (ASSIGNMENT FOR THE
`BENEFIT OF CREDITORS), LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00715
`Patent 6,934,945 B1
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JAMES P. CALVE, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`DECISION
`Denial of Rehearing Request
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`Date: 8 December 2014
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FIRST DATA CORPORATION,
`Petitioner,
`
`v.
`
`CARDSOFT (ASSIGNMENT FOR THE
`BENEFIT OF CREDITORS), LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00715
`Patent 6,934,945 B1
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JAMES P. CALVE, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`DECISION
`Denial of Rehearing Request
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2014-00715
`Patent 6,934,945 B1
`
`
`
`Petitioner filed a Petition seeking an inter partes review of claims 1–
`
`
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`17 of U.S. Patent No. 6,934,945 B1 (Ex. 1001; “the ’945 patent”). Paper 1.
`
`Petitioner filed a Corrected Petition (“Petition”) on May 20, 2014. Paper 5.
`
`We denied institution of an inter partes review (IPR) on any claims of the
`
`’945 patent because the Petition did not identify all real parties-in-interest
`
`(RPIs), as required by 35 U.S.C. § 312(a) and was not filed within the time
`
`imposed by 35 U.S.C. § 315(b). Paper 9 (“Decision”). Petitioner requests a
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`rehearing on the grounds that the Decision overlooked various matters. See
`
`Paper 11 (“Req. Reh’g”) 2–11.
`
`The Decision held that VeriFone was a real party-in-interest (RPI) to
`
`this IPR because VeriFone controlled or had the opportunity to control filing
`
`of the Petition in material respects. Decision 9. We reached our Decision
`
`based on our analysis of many factors including VeriFone’s desire that an
`
`IPR be filed against the ’945 patent, VeriFone’s funding of all attorney’s
`
`fees and costs for this IPR, VeriFone’s indemnity obligations to Petitioner in
`
`the 2013 Litigation for claims of infringement of the ’945 patent, VeriFone’s
`
`opportunity and right to control the Petition for this IPR under an indemnity
`
`agreement, VeriFone’s communications with Petitioner regarding prior art to
`
`assert in the IPR, and VeriFone’s inability to initiate an IPR in its own right
`
`due to a bar under 35 U.S.C. § 315(b). Id. at 7–10.
`
`Petitioner’s arguments that the panel overlooked various matters fall
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`into two main categories. Petitioner argues that the panel considered factors
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`that are irrelevant to deciding whether VeriFone is a real party-in-interest.
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`For example, Petitioner asserts that any control by VeriFone of the district
`
`court litigation is not pertinent to determining the RPI in this IPR. See Req.
`
`Reh’g 5. This argument does not persuade us that we overlooked any matter
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`2
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`
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`IPR2014-00715
`Patent 6,934,945 B1
`
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`because the Decision did not rely on VeriFone’s control of the 2013
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`
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`Litigation to find that VeriFone is a RPI to this IPR. See Decision 7–10.
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`Petitioner also asserts that each of the various factors is insufficient,
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`by itself, to make VeriFone a RPI to this IPR. See Req. Reh’g 6–9. For
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`example, Petitioner contends that funding of an IPR, by itself, does not make
`
`a party a RPI. Id. at 6–8. Petitioner also argues that the existence of an
`
`indemnity agreement, which inherently includes funding, is insufficient to
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`make a party a RPI. Id. at 8–9. These arguments do not persuade us that we
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`overlooked any matters because the Decision was based on our analysis of
`
`many factors in combination, and not one factor in isolation. Decision 7–10.
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`Our analysis of these factors led us to conclude that VeriFone either
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`controlled the filing of the IPR or had the opportunity to do so. Id. That
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`VeriFone’s indemnity obligation may not cover all accused products in the
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`2013 Litigation as Petitioner asserts (Req. Reh’g. 9) does not negate the fact
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`that VeriFone is obligated to indemnify Petitioner for claims of infringement
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`of the ’945 patent by some accused products in the 2013 Litigation. That
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`indemnity obligation was one factor, among several others, that led to the
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`conclusion that VeriFone had the opportunity to control all aspects of
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`preparing the Petition prior to April 28, 2014, just two days before the filing
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`of the Petition for this IPR. Decision 9.
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`Petitioner also asserts that a decision on the RPI is premature. Req.
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`Reh’g 2. Petitioner argues that there is no requirement that a Petitioner
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`anticipate and disprove suppositions and presumptions raised by a Patent
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`Owner’s Preliminary Response. Id. at 2–4. Petitioner also contends that a
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`patent owner may seek discovery on this issue and file a motion to terminate
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`proceedings based on facts discovered, and a petitioner can respond to that
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`3
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`IPR2014-00715
`Patent 6,934,945 B1
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`motion. Id. at 3–5. These arguments do not persuade us that we overlooked
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`
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`any matters. A petition must identify all of the RPIs. 35 U.S.C. § 312(a)(2).
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`Failure to do so precludes consideration of the petition. Id. Petitioner chose
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`to devote five pages of the Petition to arguing that VeriFone is not a RPI.
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`Pet. 1–5. Petitioner also submitted evidence such as a Letter Addendum
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`(Ex. 1011) and papers from the 2013 Litigation (Exs. 1006, 1007) in support
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`of its contentions that VeriFone is not a RPI and that “the sole and exclusive
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`control over this petition rests entirely with First Data.” Pet. 1. Petitioner,
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`therefore, had an opportunity to present arguments and evidence, and did
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`present arguments and evidence, to explain why VeriFone is not a RPI. We
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`considered that evidence with all the other factors discussed in the Decision
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`and determined that VeriFone was a RPI to this IPR.
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`Petitioner now argues, for the first time, that VeriFone relinquished its
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`right and opportunity to control the IPR pursuant to an oral agreement made
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`between a senior litigation counsel of First Data and counsel for VeriFone.
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`See Req. Reh’g. 10–11. Petitioner relies on the Declaration of Christopher
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`P. Demetriades, which is attached to the request for rehearing, in support of
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`this new argument. Id. at 14. A request for rehearing is not an opportunity
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`to submit a new argument or new evidence that could have been presented in
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`the Petition. See 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Rather, the “request must
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`specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed in
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`a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Petitioner has
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`not presented any facts to explain why it could not have presented this new
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`evidence in its original Petition. The panel could not have overlooked or
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`4
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`IPR2014-00715
`Patent 6,934,945 B1
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`misapprehended evidence that was not presented in the Petition. Moreover,
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`
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`Petitioner did not seek authorization to file the new declaration in a reply to
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`the Patent Owner’s Preliminary Response. Nor has Petitioner shown good
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`cause for us to consider this new evidence, which is submitted by Petitioner
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`for the first time with a request for rehearing. See 37 C.F.R. § 42.5(c)(3).
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`For the reasons discussed above, we are not persuaded that we have
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`overlooked or misapprehended any matter. Accordingly, Petitioner’s
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`request for rehearing is denied.
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`5
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`
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`IPR2014-00715
`Patent 6,934,945 B1
`
`For PETITIONER:
`
`
`
`
`
`Paul C. Haughey
`Darin J. Gibby
`Kilpatrick Townsend & Stockton LLP
`phaughey@kilpatricktownsend.com
`dgibby@kilpatricktownsend.com
`
`For PATENT OWNER
`
`Mark R. Buscher
`D. Richard Anderson
`George S. Dolina
`Birch, Stewart, Kolasch & Birch, LLP
`mrb@buscherlaw.com
`dra@bskb.com
`
`
`
`6
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