Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 10
`Entered: January 7, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2014-00987
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 10
`Entered: January 7, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2014-00987
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`
`I. SUMMARY
`HTC Corporation and HTC America, Inc. (“Petitioner”) requests
`rehearing of the Board’s decision instituting inter partes review of claims
`1–8 and 12–15 (“the challenged claims”) of U.S. Patent No. 7,365,871
`(Ex. 1001, “the ’871 patent”) under 35 U.S.C. § 103 as unpatentable over
`Wilska and Yamagishi-114 (“Ground 1”), but denying institution of inter
`partes review of the challenged claims under 35 U.S.C. § 103 as
`unpatentable over McNelley and Yamagishi-992 (“Ground 2”) (Paper 6,
`“Dec.”), entered December 9, 2014. Paper 8 (“Req.”). For the reasons that
`follow, Petitioner’s request is denied.
`
`II.
`STANDARD OF REVIEW
`In its request for rehearing, the dissatisfied party must identify,
`specifically, all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was addressed previously.
`37 C.F.R. § 42.71(d). Upon a request for rehearing, a decision on institution
`will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
`
`III. DISCUSSION
`Petitioner argues that (1) 35 U.S.C. § 314(a) does not provide
`statutory authority to deny Ground 2 without substantive analysis; (2) the
`application of 37 C.F.R. § 42.108(a) was an abuse of discretion; (3) estoppel
`effects mandate full consideration of Ground 2; (4) 35 U.S.C. § 315(d)
`suggests that multiple grounds of rejection should be evaluated
`substantively; (5) Ground 2 is not redundant or duplicative; and (6) it would
`be premature to deny Ground 2 without trial.
`
`2
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`
`35 U.S.C. § 316 requires the Director of the Patent and Trademark
`Office to “prescribe regulations . . . setting forth the standards for the
`showing of sufficient grounds to institute a review under section 314(a),”
`and requires the Director to “consider the effect of any such regulation on
`. . . the efficient administration of the Office, and the ability of the Office to
`timely complete proceedings instituted under this chapter.” 35 U.S.C.
`§ 316(a)(2), (b). In view of the considerations listed in 35 U.S.C. § 316(b),
`the Director prescribed 37 C.F.R. § 42.108, which provides the following
`instruction: (1) “the Board may authorize the review to proceed on all or
`some of the challenged claims and on all or some of the grounds of
`unpatentability asserted for each claim,” and (2) “the Board may deny some
`or all grounds of unpatentability for some or all of the challenged claims.”
`37 C.F.R. § 42.108(a), (b).
`Petitioner argues that our interpretation of 35 U.S.C. § 314(a) as “not
`requiring institution” (Dec. 10), has no basis in the plain language of the
`statute. Req. 5–6. We disagree. Petitioner interprets section 314(a) as if the
`Director must institute review if there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition. However, section 314(a) states what the Director “may not” do,
`not what the Director must do: “The Director may not [institute an inter
`partes review] unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” Petitioner also interprets section 314(a) as if the Director must
`analyze substantively each ground presented in a petition. Req. 3–4 (“in
`support of its decision not to substantively consider”), 4 (“without
`substantive analysis of the facts presented in Ground 2”), 5 (“without first
`
`3
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`reviewing the substance”). To the extent any substantive analysis is required
`by section 314(a), however, it is directed to only “at least 1 claim,” not to
`every ground presented in the Petition for every claim. Thus, the Board’s
`reading of the statute is not contrary to its plain language.
`Because we are not persuaded that we misapprehended the language
`of section 314(a), we are not persuaded that our reliance on the “may”
`language of 37 C.F.R. § 42.108(a) is an abuse of discretion, as Petition
`contends (Req. 8–9). Nor are we persuaded that the estoppel provision of 35
`U.S.C. § 315(e)(2) compels a contrary interpretation of section 314(a), as
`Petitioner contends (Req. 9–12). Moreover, the alleged “deprivation of due
`process rights and an injury to the Petitioners” resulting from Petitioner’s
`hypothetical scenario is too speculative to compel a departure from the plain
`language of section 314(a). Finally, Petitioner acknowledges that “[t]he
`Board has not stated in this institution decision in this proceeding that
`Ground 2 is duplicative or cumulative.” Req. 13–14. Petitioner is correct.
`Accordingly, we need not address Petitioner’s arguments directed to
`redundancy.
`
`IV. CONCLUSION
`For the foregoing reasons, the Board did not abuse its discretion when
`it denied institution of inter partes review of the challenged claims under
`35 U.S.C. § 103 as unpatentable over McNelley and Yamagishi-992.
`
`V. ORDER
`
`It is hereby
`ORDERED that Petitioner’s request for rehearing is denied.
`
`4
`
`
`
`IPR2014-00987
`Patent 7,365,871 B2
`
`For PETITIONER:
`
`Bing Ai
`Cheng C. (Jack) Ko
`Kevin Patariu
`Babak Tehranchi
`PERKINS COIE LLP
`Ai-ptab@perkinscoie.com
`CKo@perkinscoie.com
`KPatariu@perkinscoie.com
`BTehranchi@perkinscoie.com
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`and
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
`
`
`
`5
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