`Entered: April 14, 2015
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
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`v.
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`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`_______________
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`Case IPR2014-01366
`Patent 6,108,704
`_______________
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`
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`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
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`DESHPANDE, Administrative Patent Judge.
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`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2014-01366
`Patent 6,108,704
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`I.
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`INTRODUCTION
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`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
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`Samsung Telecommunications America, LLC (collectively, “Petitioner”) filed a
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`request for rehearing (Paper 14, “Req. Reh’g”) of the Board’s Decision on
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`Institution (Paper 12, “Dec.”) dated March 6, 2015, which instituted inter partes
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`review of claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of U.S. Patent
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`No. 6,108,704. Petitioner contends that the Board “misapprehended the non-
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`redundancy grounds based in part on Pitkin because of the pending claim
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`construction issues.” Req. Reh’g 1. For the reasons stated below, Petitioner’s
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`request is denied.
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`II.
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`STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” An abuse of discretion
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`occurs when a “decision was based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
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`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations
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`omitted). The request must identify, specifically, all matters the party believes the
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`Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
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`III. DISCUSSION
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`We determined in our Decision on Institution that, although for the purposes
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`of determining whether to institute inter partes review we applied the broadest
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`reasonable interpretation (“BRI”) standard for construing the claims, we will
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`mostly likely apply the claim construction standard set forth in Phillips v. AWH
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`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), in any final written decision,
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`assuming the ’704 patent has expired at the time of the final written decision,
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`IPR2014-01366
`Patent 6,108,704
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`should one be issued. Dec. 6. We instituted inter parties review of claims 1, 11,
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`12, 22, and 23 as obvious over Microsoft Manual1 and NetBIOS2 and claims 14,
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`16, 27, 30, and 31 as obvious over Microsoft Manual, NetBIOS, and Palmer.3
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`Dec. 16–20.
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`Petitioner contends that the uninstituted grounds based in part on Pitkin are
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`not redundant to the grounds relying on Microsoft Manual and NetBIOS because
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`“the claim constructions identified in the Decision are conditional and subject to
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`change.” Req. Reh’g 3. Petitioner argues that Pitkin was asserted in the event that
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`“Patent Owner’s proposed more narrow constructions for ‘connected to the
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`computer network’ and ‘on-line status’ would be adopted by the Board, either in an
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`institution decision or a final decision.” Id.
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`We are not persuaded that we misapprehended or overlooked this argument
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`because this argument was not raised until this rehearing request. Although
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`37 C.F.R. § 42.71(d) permits a party to file a request for rehearing, it is not an
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`opportunity to submit new arguments. Petitioner acknowledges that the Board’s
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`construction for “connected to the computer network” and “on-line status” is
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`consistent with Petitioner’s proposed construction under the BRI standard and
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`Phillips. Req. Reh’g 4; see Pet. 20–21, 24–30. Petitioner now presents the
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`argument that if a narrowed construction is provided for these terms, then the
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`asserted grounds relying in part on Pitkin are not redundant. This argument was
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`not previously presented. Furthermore, Petitioner presents the same construction
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`1 MICROSOFT WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1012,
`“Microsoft Manual”).
`2 THE OPEN GROUP, TECHNICAL STANDARD, PROTOCOLS FOR X/OPEN PC
`INTERWORKING: SMB, VERSION 2.0 (1992) (Ex. 1014, “NetBIOS”).
`3 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
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`IPR2014-01366
`Patent 6,108,704
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`under both BRI and Phillips. Accordingly, under the same claim construction, we
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`properly determined that the grounds relying in part on Pitkin are redundant.
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`We remind Petitioner that our initial determinations on claim construction
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`were provided in order to determine whether to institute inter partes review of the
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`claims. If we render a final decision, it will include a final construction of the
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`claims based on the complete evidence in the record.
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` Petitioner further argues that for similar reasons, grounds relying on Palmer,
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`or Palmer and Pinard, are not redundant with the grounds relying on Microsoft
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`Manual and NetBIOS. Req. Reh’g 6–7. We are not persuaded that we
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`misapprehended or overlooked these arguments for the same reasons discussed
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`above.
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`IV. CONCLUSION
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`The Board denies the relief requested in the request for rehearing.
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`Accordingly, it is hereby
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`V. ORDER
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`ORDERED that Petitioner’s request for rehearing is denied.
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`IPR2014-01366
`Patent 6,108,704
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`For PETITIONER:
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`Brian Erickson
`Jeff Cole
`Samsung-SP-IPR@dlapiper.com
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`For PATENT OWNER:
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`William Meunier
`Matthew Durell
`StraightPathIPRs@mintz.com
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