Trial@uspto.gov
`571-272-7822
`
`Paper 11
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`
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` Entered: August 5, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00352
`Patent 7,774,280 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`I. INTRODUCTION
`
`Petitioner, Apple Inc. (“Apple”), timely filed a Request for Rehearing
`
`under 37 C.F.R. § 42.71(d) on July 24, 2015. Paper 10 (“Req. Reh’g”).
`
`
`571-272-7822
`
`Paper 11
`
`
`
`
`
`
` Entered: August 5, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00352
`Patent 7,774,280 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`I. INTRODUCTION
`
`Petitioner, Apple Inc. (“Apple”), timely filed a Request for Rehearing
`
`under 37 C.F.R. § 42.71(d) on July 24, 2015. Paper 10 (“Req. Reh’g”).
`
`
`
`IPR2015-00352
`Patent 7,774,280 B2
`
`Apple’s Request for Rehearing seeks reconsideration of our Decision
`
`Denying Institution (Paper 9, “Dec.”) entered on June 24, 2015, particularly
`
`our determination to deny review of challenged independent claim 1 of U.S.
`
`Patent No. 7,774,280 B2 (“the ’280 patent”) as being unpatentable under
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`35 U.S.C. § 103(a) over Gruse.1 See Dec. 10–17.
`
`In its Request for Rehearing, Apple contends that our determination to
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`deny review of challenged independent claim 1 of the ’280 patent was
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`improper for at least three reasons. First, Apple argues that we
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`misapprehended or overlooked Apple’s argument that it would have been
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`obvious to one of ordinary skill in the art to modify Gruse’s scheme to
`
`employ the functionality of Stefik’s repository,2 which, according to the
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`Background of the Invention section of the ’280 patent, was an old and well-
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`known trusted system. Req. Reh’g 2–11. Second, Apple argues that we
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`misapprehended or overlooked the testimony of Apple’s expert witness, Dr.
`
`Atul Prakash, which purportedly supports its explanation as to why it would
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`have been obvious to one of ordinary skill in the art to modify Gruse’s
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`scheme to include the functionality of Stefik’s repository. Id. at 11–13.
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`Finally, Apple argues that we misapprehended or overlooked that another
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`Board panel previously determined that Downs,3 which is incorporated by
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`reference in Gruse, anticipated the claims in the ’280 patent’s parent
`
`
`
`1 U.S. Patent No. 6,389,538 B1, issued May 14, 2002 (Ex. 1008, “Gruse”).
`2 U.S. Patent No. 5,634,012, issued May 27, 1997 (Ex. 1012, “Stefik”).
`3 U.S. Patent No. 6,226,618 B1, issued May 1, 2001 (Ex. 1014, “Downs”).
`2
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`IPR2015-00352
`Patent 7,774,280 B2
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`application4 that are similar to the claims of the ’280 patent challenged in
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`this proceeding. Id. at 13–15.
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`As we explain below, we have considered the arguments presented by
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`Apple in its Request for Rehearing, but we discern no sufficient reason to
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`modify the Decision Denying Institution. As a consequence, we deny
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`Apple’s Request for Rehearing.
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`
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`II. STANDARD OF REVIEW
`
`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was addressed previously in a motion, an opposition, or a
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`reply. Id. When rehearing a decision on a petition, we review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
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`may be indicated if a decision is based on an erroneous interpretation of law,
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`if a factual finding is not supported by substantial evidence, or if the
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`decision represents an unreasonable judgment in weighing relevant factors.
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`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005);
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`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
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`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we
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`address the arguments presented by Apple in turn.
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`
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`4 U.S. Patent Application No. 10/162,701, filed on June 6, 2002 (“the ’701
`application”). Ex. 1001, at [63].
`
`3
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`
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`IPR2015-00352
`Patent 7,774,280 B2
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`III. ANALYSIS
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`A. Apple Does Not Identify Explicitly the Background of the Invention
`Section in the ’280 Patent, Which Incorporates by Reference Stefik, as
`Prior Art That Serves as the Basis of the Grounds Identified in the
`Petition
`
`Apple directs us to disparate portions of the Petition that purportedly
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`
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`explain why it would have been obvious to one of ordinary skill in the art to
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`modify Gruse’s scheme to employ the functionality offered by Stefik’s
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`repository, which, according to the Background of the Invention section of
`
`the ’280 patent, was an old and well-known trusted system. Req. Reh’g 2–6
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`(citing Paper 1 (“Pet.”), 18, 19, 24, 34, 36–38, 50–56). Apple also argues
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`that the Petition provides evidence in the form of Dr. Prakash’s testimony to
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`support this explanation. Id. at 6–7 (citing Ex. 1003 ¶¶ 504–09). Apple then
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`asserts that we did not appreciate that the Petition included such a contention
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`because the Decision Denying Institution makes no reference to pages 53–56
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`of the Petition, much less the analysis and reason presented therein. Id. at 8.
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`As an initial matter, we are not persuaded by Apple’s assertion that
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`the Petition includes an asserted ground based on Gruse and the admitted
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`prior art contained in the Background of the Invention section in the ’280
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`patent. Under 35 U.S.C. § 312(a)(3), a petition requesting an inter partes
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`review must “identif[y], in writing and with particularity, each claim
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`challenged, the grounds on which the challenge to each claim is based, and
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`the evidence that supports the grounds for the challenge to each claim.”
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`35 U.S.C. § 312(a)(3) (emphases added). Our rules governing inter partes
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`review proceedings further address the showing required in a petition. In
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`4
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`IPR2015-00352
`Patent 7,774,280 B2
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`particular, 37 C.F.R. § 42.104(b)(2) provides that the petition must identify
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`“[t]he specific statutory grounds under 35 U.S.C. 102 or 103 on which the
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`challenge to the claim is based and the patents or printed publications relied
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`upon for each ground.” 37 C.F.R. § 42.104(b)(2) (emphases added).
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`In its Petition, Apple identifies the specific statutory grounds on
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`which the challenge to each claim is based in the section titled
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`“Identification of Claims Being Challenged ([37. C.F.R.] § 42.104(b)).”
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`Pet. 2–3 (emphasis omitted). In that section, Apple indicates that claims 1–
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`5, 8, 11–16, 19, 22, 24–28, 31, and 34 of the ’280 patent would have been
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`unpatentable based on the following two grounds: (1) obviousness over
`
`Gruse; and (2) obviousness over the combination of Gruse and Wiggins.
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`Apple, however, does not identify explicitly the Background of the
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`Invention Section in the ’280 patent, which incorporates by reference Stefik,
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`as prior art that serves as the basis of the asserted grounds identified above.
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`Consequently, we could not have misapprehended or overlooked Apple’s
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`argument that it would have been obvious to one of ordinary skill in the art
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`modify Gruse’s scheme to employ the functionality of Stefik’s repository.
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`Even if we were to assume that the Petition identifies a ground based
`
`on Gruse and the admitted prior art contained in the Background of the
`
`Invention section in the ’280 patent, we still would not have been persuaded
`
`by Apple’s argument that it would have been obvious to one of ordinary skill
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`in the art modify Gruse’s scheme to employ the functionality of Stefik’s
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`repository. Apple’s argument in this regard focuses primarily on the
`
`explanation set forth on pages 53–56 of the Petition. See Req. Reh’g 5–6.
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`5
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`IPR2015-00352
`Patent 7,774,280 B2
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`After reviewing these pages in the Petition anew, it is not clear to us what
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`modifications Apple is proposing to Gruse’s scheme.
`
`In at least one instance, Apple indicates that Gruse’s end-user device
`
`109 constitutes the claimed “repository” that could be “readily modified [to]
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`have components or capabilities that enable it to be used within a ‘trusted
`
`system’ (e.g., such as those disclosed in [Stefik]).” Pet. 54–55 (citing
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`Ex. 1003 ¶ 506; Ex. 1001, 1:57–2:8). In another instance, Apple indicates
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`that Gruse’s clearinghouse 105 constitutes the claimed “repository” (id. at
`
`37), and asserts that it “could be modified, as necessary, to include ‘new
`
`hardware such as a secure processor, secure storage and securing rendering
`
`devices’ and to use only software applications that must be ‘certified to be
`
`trusted.’” Id. at 55 (citing Ex. 1003 ¶ 507, Ex. 1001, 1:60–64). These
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`statements inject ambiguity into Apple’s position that it would have been
`
`obvious to one of ordinary skill in the art modify Gruse’s scheme because it
`
`is not clear whether Apple is proposing to modify Gruse’s end-user device
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`109, clearinghouse 105, or both to teach the claimed “repository.” In
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`addition, notably absent from Apple’s statements regarding these
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`components disclosed in Gruse is a substantive discussion as to how they
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`may be modified to satisfy the very specific computer security and rights
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`enforcement “integrities” required of the claimed “repository”—namely,
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`“physical, communications, and behavioral integrity.” See Dec. 6–10
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`(construing the claim term “repository” and specifically defining “physical
`
`integrity,” “communications integrity,” and “behavioral integrity”).
`
`
`
`In summary, we are not persuaded that we misapprehended or
`
`overlooked Apple’s argument that it would have been obvious to one of
`
`6
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`IPR2015-00352
`Patent 7,774,280 B2
`
`ordinary skill in the art to modify Gruse’s scheme to employ the
`
`functionality of Stefik’s repository because Apple does not identify
`
`explicitly the Background of the Invention Section in the ’280 patent, which
`
`incorporates by reference Stefik, as prior art that serves as the basis of the
`
`grounds identified in the Petition. In any event, even if we were to assume
`
`that the Petition identifies such a ground, we would not have been persuaded
`
`by Apple’s argument in this regard because it is not clear to us how Apple
`
`proposes to modify Gruse’s scheme in light of Stefik to teach the claimed
`
`“repository.”
`
`B. We Did Not Misapprehend or Overlook Certain Testimony Offered by
`Dr. Prakash, But Rather Accorded it Little, if Any, Weight
`
`Apple contends that we misapprehended or overlooked the testimony
`
`
`
`of Apple’s expert witness, Dr. Prakash, which purportedly supports its
`
`explanation as to why it would have been obvious to one of ordinary skill in
`
`the art to modify Gruse’s scheme to employ the functionality of Stefik’s
`
`repository. Req. Reh’g 11–13 (citing Ex. 1003 ¶¶ 504–09). In particular,
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`Apple argues that we committed legal error by not according Dr. Prakash
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`testimony in this regard any weight. Id. at 13.
`
`
`
`We note that it is within our discretion to assign the appropriate
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`weight to the testimony offered by Dr. Prakash. See, e.g., Yorkey v. Diab,
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`601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to
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`give more weight to one item of evidence over another “unless no
`
`reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech
`
`Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
`
`weigh the declarations and conclude that the lack of factual corroboration
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`7
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`
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`IPR2015-00352
`Patent 7,774,280 B2
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`warrants discounting the opinions expressed in the declarations.”). As we
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`explained above, because Apple does not identify explicitly the Background
`
`of the Invention Section in the ’280 patent, which incorporates by reference
`
`Stefik, as prior art that serves as the basis of the grounds identified in the
`
`Petition, we accorded Dr. Prakash’s testimony in this regard little, if any,
`
`weight. In addition, the aforementioned testimony of Dr. Prakash was
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`inconsequential to the asserted ground based on obviousness over Gruse
`
`because Apple initially took the position that Gruse’s clearinghouse 105
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`amounts to the claimed “repository” (Pet. 37), whereas Dr. Prakash’s
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`testimony focused primarily on modifying Gruse’s end-user device 109 to
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`teach the claimed “repository” (see, e.g., Ex. 1003 ¶¶ 506, 507).
`
`C. We Did Not Misapprehend or Overlook That a Previous Board Panel
`Determined That Downs Anticipates the Claims of the ’701
`Application
`
`Apple contends that we misapprehended or overlooked that another
`
`
`
`Board panel previously determined that Downs, which is incorporated by
`
`reference in Gruse, anticipated the claims in the ’701 application (the ’280
`
`patent’s parent application) that are similar to the claims of the ’280 patent
`
`challenged in this proceeding. Req. Reh’g 13–14 (citing Pet. 24, 28–29;
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`Ex. 1014; Ex. 1047). Petitioner asserts that we must give controlling weight
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`to the previous determination by the Board panel in the ’701 application
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`because it involves essentially the same patent disclosure, the same prior art
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`teachings, and the same claim elements. Id. at 14–15.
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`8
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`IPR2015-00352
`Patent 7,774,280 B2
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`
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`We are not persuaded by Apple’s argument that the previous
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`determination by the Board panel in the ’701 application has any bearing on
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`the grounds asserted by Apple in this proceeding. Although the claims of
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`the ’701 application include many of the same features recited in the claims
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`of the ’280 patent challenged in this proceeding, e.g., a “repository” that
`
`enforces a “meta-right,” Apple does not establish adequately that these
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`claims have the same scope and meaning. Indeed, Apple acknowledges in
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`its Petition that there are at least some distinctions between independent
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`claim 1 of the ’701 application and independent claim 1 of the ’280 patent.
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`See Pet. 29–31. Moreover, we note that Apple does not rely upon Downs’
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`disclosure when explaining how Gruse’s scheme purportedly teaches the
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`features of challenged independent claim 1. See generally id. at 31–42.
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`
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`In summary, because the previous determination by the Board panel
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`in the ’701 application involves claims having a different scope and
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`meaning, and because that determination was based on a prior art reference
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`that does not serve as the basis of the grounds asserted in this proceeding, we
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`are not persuaded that we abused our discretion in not considering Downs or
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`the previous Board decision in the ’701 application.
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`
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`IV. CONCLUSION
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`For the foregoing reasons, Apple has not demonstrated that we abused
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`our discretion by denying the Petition as to challenged independent claim 1
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`of the ’280 patent.
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`
`
`9
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`
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`IPR2015-00352
`Patent 7,774,280 B2
`
` Accordingly, it is ORDERED that Apple’s Request for Rehearing is
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`V. ORDER
`
`DENIED.
`
`10
`
`
`
`11
`
`IPR2015-00352
`Patent 7,774,280 B2
`
`For PETITIONER:
`
`Jeffrey P. Kushan
`Michael R. Franzinger
`Sidley Austin LLP
`iprnotices@sidley.com
`
`
`
`For PATENT OWNER:
`
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
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