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Paper 19
`Entered: April 14, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`_______________
`
`Case IPR2014-01366
`Patent 6,108,704
`_______________
`
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`

`
`IPR2014-01366
`Patent 6,108,704
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`
`Samsung Telecommunications America, LLC (collectively, “Petitioner”) filed a
`
`request for rehearing (Paper 14, “Req. Reh’g”) of the Board’s Decision on
`
`Institution (Paper 12, “Dec.”) dated March 6, 2015, which instituted inter partes
`
`review of claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of U.S. Patent
`
`No. 6,108,704. Petitioner contends that the Board “misapprehended the non-
`
`redundancy grounds based in part on Pitkin because of the pending claim
`
`construction issues.” Req. Reh’g 1. For the reasons stated below, Petitioner’s
`
`request is denied.
`
`II.
`
`STANDARD OF REVIEW
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`
`occurs when a “decision was based on an erroneous conclusion of law or clearly
`
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
`
`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations
`
`omitted). The request must identify, specifically, all matters the party believes the
`
`Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`III. DISCUSSION
`
`We determined in our Decision on Institution that, although for the purposes
`
`of determining whether to institute inter partes review we applied the broadest
`
`reasonable interpretation (“BRI”) standard for construing the claims, we will
`
`mostly likely apply the claim construction standard set forth in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), in any final written decision,
`
`assuming the ’704 patent has expired at the time of the final written decision,
`
` 2
`
`
`
`
`
`

`
`IPR2014-01366
`Patent 6,108,704
`
`
`should one be issued. Dec. 6. We instituted inter parties review of claims 1, 11,
`
`12, 22, and 23 as obvious over Microsoft Manual1 and NetBIOS2 and claims 14,
`
`16, 27, 30, and 31 as obvious over Microsoft Manual, NetBIOS, and Palmer.3
`
`Dec. 16–20.
`
`Petitioner contends that the uninstituted grounds based in part on Pitkin are
`
`not redundant to the grounds relying on Microsoft Manual and NetBIOS because
`
`“the claim constructions identified in the Decision are conditional and subject to
`
`change.” Req. Reh’g 3. Petitioner argues that Pitkin was asserted in the event that
`
`“Patent Owner’s proposed more narrow constructions for ‘connected to the
`
`computer network’ and ‘on-line status’ would be adopted by the Board, either in an
`
`institution decision or a final decision.” Id.
`
`We are not persuaded that we misapprehended or overlooked this argument
`
`because this argument was not raised until this rehearing request. Although
`
`37 C.F.R. § 42.71(d) permits a party to file a request for rehearing, it is not an
`
`opportunity to submit new arguments. Petitioner acknowledges that the Board’s
`
`construction for “connected to the computer network” and “on-line status” is
`
`consistent with Petitioner’s proposed construction under the BRI standard and
`
`Phillips. Req. Reh’g 4; see Pet. 20–21, 24–30. Petitioner now presents the
`
`argument that if a narrowed construction is provided for these terms, then the
`
`asserted grounds relying in part on Pitkin are not redundant. This argument was
`
`not previously presented. Furthermore, Petitioner presents the same construction
`
`
`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”).
`
` 3
`
`
`
`
`
`

`
`IPR2014-01366
`Patent 6,108,704
`
`
`under both BRI and Phillips. Accordingly, under the same claim construction, we
`
`properly determined that the grounds relying in part on Pitkin are redundant.
`
`We remind Petitioner that our initial determinations on claim construction
`
`were provided in order to determine whether to institute inter partes review of the
`
`claims. If we render a final decision, it will include a final construction of the
`
`claims based on the complete evidence in the record.
`
` Petitioner further argues that for similar reasons, grounds relying on Palmer,
`
`or Palmer and Pinard, are not redundant with the grounds relying on Microsoft
`
`Manual and NetBIOS. Req. Reh’g 6–7. We are not persuaded that we
`
`misapprehended or overlooked these arguments for the same reasons discussed
`
`above.
`
`IV. CONCLUSION
`
`The Board denies the relief requested in the request for rehearing.
`
`Accordingly, it is hereby
`
`V. ORDER
`
`ORDERED that Petitioner’s request for rehearing is denied.
`
` 4
`
`
`
`
`
`
`
`

`
`IPR2014-01366
`Patent 6,108,704
`
`
`For PETITIONER:
`
`Brian Erickson
`Jeff Cole
`Samsung-SP-IPR@dlapiper.com
`
`For PATENT OWNER:
`
`William Meunier
`Matthew Durell
`StraightPathIPRs@mintz.com
`
`
`
` 5

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