Trials@uspto.gov
`571-272-7822
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` Paper 20
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` Entered: November 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioners,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2015-00067
`Patent 7,116,710 B1
`____________
`
`
`
`Before KALYAN K. DESHPANDE, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 20
`
`
`
` Entered: November 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioners,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2015-00067
`Patent 7,116,710 B1
`____________
`
`
`
`Before KALYAN K. DESHPANDE, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`Case IPR2015-00067
`Patent 7,116,710 B1
`
`
`INTRODUCTION
`I.
`Hughes Network Systems, LLC and Hughes Communications, Inc.
`(collectively, “Hughes”) filed a Request for Rehearing of the Board’s
`Decision (Paper 18, “Dec.”), dated April 27, 2015, which denied institution
`of claims 1, 3– 6, 15, 16, and 20–22 of U.S. Patent No. 7,116,710 B1
`(Ex. 1001, “the ’710 patent”) as challenged in Hughes’s Petition (Paper 4,
`“Pet.”). Paper 19 (“Req. Reh’g”). In general, Hughes contends that the
`Board overlooked evidence establishing Frey1 as a printed publication
`reference. Req. Reh’g 1. For the reasons stated below, Hughes’s request for
`rehearing 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. Inc., 840 F.2d 1565,
`1567 (Fed. Cir. 1988) (citations omitted). The request must identify
`specifically all matters that the dissatisfied party believes that the Board
`misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`
`1 Brendan J. Frey and David J.C. MacKay, Irregular Turbocodes,
`PROCEEDINGS OF THE 37TH ALLERTON CONFERENCE ON COMMUNICATION,
`CONTROL, AND COMPUTING (1999) at 1–7 (Ex.1012, “Frey).
`2
`
`
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`
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`Case IPR2015-00067
`Patent 7,116,710 B1
`
`
`III. DISCUSSION
`A. Frey Evidence
`Hughes contends “that the Board overlooked or misapprehended
`important points and evidence in the Petition concerning why Frey is a
`publication available for challenging the ’710 patent.” Req. Reh’g 1.
`Hughes relies on the testimony of Dr. MacKay (Ex. 1060), specifically
`paragraph 44, to support that that that its contention that Frey was published
`on Dr. MacKay’s website. Hughes quotes MacKay’s testimony as follows:
`
`44. I published the article “Irregular Turbocodes” on my
`website no later than October 8, 1999. This is based on my
`recollection and information indicating the website paper was
`last modified on the MacKay Canadian and Cambridge
`Websites on this same date as shown in Exhibit 1040. The file
`name for the irregular turbocodes paper was “itc-al.ps.Z” which
`stands for Irregular Turbo Codes Allerton; “ps” stands for the
`document format “postscript” and “Z” stands for a UNIX
`compression file format. A copy of the “Irregular Turbocodes”
`paper as published on October 9, 1999 is filed herewith as
`Exhibit 1012.
`Ex. 1060 ¶ 44; Req. Reh’g 4. Hughes points out the Board overlooked or
`misapprehended the Petition evidence, which cited paragraph 44 of Dr.
`MacKay’s testimony and states: “Exhibit 1012 - ‘Irregular Turbocodes’ by
`B.J. Frey and D.J.C. MacKay (“Frey”), published at least by October 8,
`1999 and available as prior art under 35 U.S.C. § 102(a); see also Ex. 1060
`at ¶¶ 40-49.” Req. Reh’g at 4 (quoting Pet. 2). Hughes also provides
`argument and citations to evidence that the MacKay website was publicly
`available to persons of ordinary skill in the art. Req. Reh’g 5–11 (citing Ex.
`1060 ¶¶ 17, 18–20).
`
`
`
`3
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`Case IPR2015-00067
`Patent 7,116,710 B1
`
`
`We first note that the Petition itself states only that Frey was
`published at least by October 8, 1999. Hughes made no argument as to why
`this date was supported by the evidence. Instead, the Petition includes only
`an unexplained cite to multiple paragraphs of the MacKay testimony. Pet. 2
`(citing Ex. 1060 ¶¶ 40–49). Thus, the Petition itself does not discuss that
`Frey was published on Dr. MacKay’s website and explain any of the facts
`and circumstances related to that publication.
`We also find that paragraph 44 of Dr. MacKay’s testimony, relied
`upon by Hughes, neither cites nor discusses the extensive testimony
`regarding the public accessibility of the MacKay website that Hughes argues
`for the first time in the rehearing. Req. Reh’g 5–6 (citing Ex. 1060 ¶¶ 10–
`23). Neither the Petition nor the MacKay testimony cited in support of the
`publication of Frey provides any guidance, argument, or evidence to support
`the publication date of Frey or the public accessibility of the MacKay
`websites. Instead, Hughes left it to the Board to read Dr. MacKay’s
`testimony, without guidance or direction, and fashion a presentation in
`support of Frey that it did not make itself in the Petition. Indeed, Hughes’s
`extensive argument presented in support of the MacKay website is entirely
`absent from the Petition. See Req. Reh’g 8–11.
`We also are not persuaded by Hughes’s citation to new evidence that
`is allegedly known to Patent Owner and that corroborates that Frey was
`published and available. Req. Reh’g 11–13. New evidence could not have
`been overlooked or misapprehended by the Board, as that evidence that was
`not presented in the Petition. With respect to the Petition, we found that
`“Petitioner’s sole reference to the MacKay declaration (Pet. 2, citing Ex.
`1060 ¶¶ 40–49) does not provide sufficient support for the contention that
`
`
`
`4
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`Case IPR2015-00067
`Patent 7,116,710 B1
`
`Frey was published to the interested public [and that] the Petition provides
`insufficient testimony, evidence or argument with respect to the public
`accessibility of the MacKay website.” Dec. 10.
`Based on the foregoing, we find that Hughes fails to demonstrate that
`we misapprehended or overlooked Hughes’ arguments regarding the
`challenges to the patentability of claims 1, 3– 6, 15, 16, and 20–22 of the
`’710 patent based in part on Frey because Hughes did not present this
`information in the Petition.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s request for rehearing is denied.
`
`
`
`
`5
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`
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`Case IPR2015-00067
`Patent 7,116,710 B1
`
`For PETITIONER:
`Eliot Williams
`eliot.williams@bakerbotts.com
`
`G. Hopkins Guy III
`hop.guy@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`Michael Rosato
`mrosato@wsgr.com
`
`Matthew Argenti
`margenti@wsgr.com
`
`
`
`
`6
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