Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 15
`Entered: February 26, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEGRATED GLOBAL CONCEPTS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MESSAGING TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2014-01028
`Patent 6,020,980
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, KEVIN W. CHERRY and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 15
`Entered: February 26, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEGRATED GLOBAL CONCEPTS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MESSAGING TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2014-01028
`Patent 6,020,980
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, KEVIN W. CHERRY and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`SUMMARY
`
`Petitioner, Integrated Global Concepts, Inc., requests rehearing of the
`
`Board’s Decision Denying Institution (Paper 13, “Dec.”). Paper 14 (“Req.
`
`Reh’g”). Specifically, Petitioner seeks rehearing of our decision declining to
`
`institute an inter partes review of claims 1–12, 21–24, and 26–35 (the
`
`“challenged claims”) of U.S. Patent No. 6,020,980 (Ex. 1001, “the ’980
`
`patent”). For the reasons that follow, Petitioner’s request for rehearing is
`
`denied.
`
`DISCUSSION
`
`The applicable standard for a request for rehearing of an institution
`
`decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are
`
`set forth in 37 C.F.R. § 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the
`decision. The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an
`opposition, or a reply.
`
`Petitioner contends that our decision not to institute an inter partes
`
`review based on 35 U.S.C. § 325(d) was an abuse of discretion because it
`
`was based on an erroneous factual finding that the same prior art and
`
`substantially the same arguments were presented to the Office previously.
`
`Req. Reh’g 2. Petitioner concedes that “the prior art references upon which
`
`the Petition’s obviousness analysis relies were previously presented to the
`
`Office in the ex parte reexamination of the ’980 Patent.” Id. at 3.
`
`According to Petitioner, however, “the arguments and supporting evidence
`
`of the Petition and the Declaration of Dr. Michael Ian Shamos” were not
`
`2
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`previously presented to the Office. Id. Specifically, Petitioner asserts that
`
`we “misapprehended and overlooked the new arguments and evidence
`
`provided in the Petition and the Shamos Declaration” with respect to
`
`construing the claim term “subscriber.” Id.
`
`In our Decision, we specifically addressed both Petitioner’s argument
`
`that the Office previously had construed improperly the term “subscriber”
`
`and Dr. Shamos’s testimony on that issue. See Dec. 7–8. First, we
`
`acknowledged that the Petition contains arguments that the Office’s previous
`
`consideration of obviousness over the RightFAX documents was incorrect.
`
`Id. at 7–8. The crux of Petitioner’s argument is that the intrinsic evidence
`
`requires a different outcome. See Pet. 11–12 (arguing that one of ordinary
`
`skill in the art would understand “subscriber” to encompass a “user” because
`
`the patent uses the terms interchangeably); Req. Reh’g 4 (pointing to
`
`citations in the patent supporting its claim construction argument). Even if
`
`not explicitly pointed out to the Examiner, all of the intrinsic evidence, by
`
`definition, was available to the Office in prior examinations. And claim
`
`construction of this term was specifically before the Examiner. Thus,
`
`although this Petition was not (and could not) have been before the Office
`
`during the ex parte reexamination, we are not persuaded that the arguments
`
`in the Petition are substantially different than those before the Office at that
`
`time.
`
`We also addressed Dr. Shamos’s testimony, including the testimony
`
`directly related to the construction of the term “subscriber.” Dec. 8.
`
`Although we acknowledged that this testimony was not in front of the Office
`
`previously, we noted that Dr. Shamos’s testimony is entitled to little weight
`
`because it is conclusory and does not provide explanation to support those
`
`3
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`conclusions. Id. (citing Ex. 1003 ¶ 22). To the extent that Dr. Shamos
`
`provides any basis for his testimony on this issue, it mirrors the arguments in
`
`the brief and is based primarily on intrinsic evidence. See Ex. 1003 ¶ 22
`
`(stating that the patent “uses the terms ‘subscriber’ and ‘user’
`
`interchangeably”). Thus, even though the testimony is, on its face, new to
`
`the Office, in our Decision we determined that “Petitioner . . . does not
`
`present any persuasive evidence to supplement the record that was in front
`
`of the Office during the reexamination.” Id.
`
`Petitioner also asserts that our “adopted claim construction” of the
`
`terms “subscriber” and “subscriber selected file translation format(s)” was
`
`incorrect. Req. Reh’g 7–15. Because we declined to institute an inter partes
`
`review based on 35 U.S.C. § 325(d), we did not address the claim
`
`construction of any term in the Decision. Thus, we did not adopt any
`
`particular claim construction. We also do not adopt any particular claim
`
`construction now.
`
`CONCLUSION
`
`Petitioner has not carried its burden of demonstrating that the
`
`Decision misapprehended or overlooked any matters. 37 C.F.R. § 42.71(d).
`
`The Motion is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`
`
`PETITIONER:
`
`Lead Counsel
`
`Michael DeSanctis
`Hamilton, DeSanctis & Cha LLP
`225 Union Blvd., Suite 150
`Lakewood, CO 80228
`Phone: (303) 856-7155
`Fax: (303) 856-7264
`mdesanctis@hdciplaw.com
`
`Back-up Counsel
`
`Robert J. Schneider
`Taft, Stettinius & Hollister LLP
`111 E. Wacker Dr., Suite 2800
`Chicago, IL 60601
`Phone: (312) 836-4154
`Fax: (312) 527-4011
`rschneider@taftlaw.com
`
`
`James M. Heiter
`Chapman and Cutler LLP
`111 W. Monroe St.
`Chicago, IL 60603
`Phone: (312) 845-3877
`Fax: (312) 701-2361
`heiser@chapman.com
`
`
`
`
`5
`
`
`
`IPR2014-01028
`Patent 6,020,980
`
`PATENT OWNER:
`
`Lead Counsel
`
`Brian S. Mudge
`Adeel Haroon
`Kenyon & Kenyon LLP
`1500 K Street, NW
`Washington, DC 20005-1257
`Phone: (202) 220-4214
`Fax: (202) 220-4201
`bmudge@kenyon.com
`aharoon@kenyon.com
`PTAB980@kenyon.com
`
`
`Back-up Counsel
`
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`1801 Page Mill Road, Suite 210
`Palo Alto, CA 94304-1216
`Phone: (650) 384-4647
`Fax: (650) 384-4701
`mcarniaux@kenyon.com
`
`
`
`
`
`6
`
`
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