Trials@uspto.gov Paper 12
`571-272-7822
`
`Date Entered: July 21, 2016
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION,
`Petitioner,
`v.
`MD SECURITY SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00285
`Patent 7,864,983 B2
`____________
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`Date Entered: July 21, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION,
`Petitioner,
`v.
`MD SECURITY SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00285
`Patent 7,864,983 B2
`____________
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`IPR2016-00285
`Patent 7,864,983 B2
`
`
`Patent Owner, MD Security Solutions LLC, timely filed a request for
`
`rehearing of our decision on institution of inter partes review. Paper 11
`(“Req. Reh’g”). The Request seeks rehearing of our determination to
`institute inter partes review of claims of claims 1–8, 11, and 18–20 of U.S.
`Patent No. 7,864,983 B2 (Ex. 1001, “the ’983 patent”) on the asserted
`ground of obviousness under 35 U.S.C. § 103(a) over Milinusic1 and
`Osann,2 and claims 9, 10 and 12–17 on the asserted ground of obviousness
`under 35 U.S.C. § 103(a) over Milinusic, Osann, and Ozer.3 Req. Reh’g 1
`(citing Paper 9 (“Decision”)). For the reasons given below, we deny the
`Req. Reh’g.
`
`I. LEGAL STANDARDS
`When rehearing a decision whether to institute inter partes review, we
`review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
`burden of showing [the] decision should be modified lies with the party
`challenging the decision.” 37 C.F.R. § 42.71(d). The request for rehearing
`“must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in” the petition. Id.
`II. ANALYSIS
`In instituting inter partes review of claims 1–20, we addressed Patent
`Owner’s argument that Milinusic does not disclose a processor as required
`by independent claims 1 and 11 because, “the cited portion of Milinusic [at
`
`
`1 U.S. Patent No. 7,106,333 B1, issued September 12, 2006 (Ex. 1003)
`(“Milinusic”)
`2 U.S. Patent No. 7,253,732 B2, issued August 7, 2007 (Ex. 1004) (“Osann”)
`3 U.S. Patent Application Publication No. 2004/0120581 A1, published June
`24, 2004 (Ex. 1005) (“Ozer”)
`
`2
`
`
`
`
`
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`IPR2016-00285
`Patent 7,864,983 B2
`
`
`column 4, lines 25–30] states that the surveillance server 210, not the CPU
`360, receives surveillance data.” Decision 13 (quoting Paper 8, 18). For
`purposes of our Decision, we disagreed because we observed that:
`the next sentence in Milinusic, referring to CPU 360, states: “[i]t
`is also preferably configured
`to receive and distribute
`surveillance data to a requesting surveillance client 240” (id. at
`4:30–32). Because CPU 360 expressly “receives . . . surveillance
`data,” Dr. Lavian’s conclusion that a person of ordinary skill in
`the art would have understood CPU 360 is arranged to receive
`images obtained by a camera (see Ex. 1010 ¶ 128) is supported
`by the record before us.
`
`Decision 14.
`Patent Owner contends we misquoted Milinusic, which uses the word
`“retrieve” not “receive” when referring to surveillance data. Req. Reh’g 2.
`Based on this error, Patent Owner contends we drew the “equally erroneous
`conclusion” that Petitioner’s declarant, Dr. Lavian, was justified in
`concluding that Milinusic teaches a processor that receives images. Id. at 2,
`5. According to Patent Owner, the Board made no finding that these terms
`are synonymous, and the erroneous substitution of these terms completely
`changes the disclosure, in which the requesting client, not CPU 360, receives
`the data. Id. at 5–6. Finally, Patent Owner argues neither the Petition nor
`Dr. Lavian relied on this disclosure from Milinusic and, as such, the Board
`committed legal error when it instituted review based on the misquoted
`sentence. Id. at 7–10.
`Although we agree that our Decision inadvertently misquoted the
`above portion of Milinusic by substituting “receiving” for “retrieving,” we
`are not persuaded by Patent Owner’s arguments. Milinusic states that
`CPU 360 “retrieves and distributes surveillance data to a requesting
`
`3
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`IPR2016-00285
`Patent 7,864,983 B2
`
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`surveillance client 240” (Ex. 1003, 4:30–32 (emphasis added)), which, for
`purposes of the Decision, we determined to be sufficient to teach or suggest
`that the CPU (i.e., the claimed “processor”) receives the data, as Dr. Lavian
`opined. See Decision 14. This determination does not require the term
`retrieve to be the same as or a synonym of the claim term “receives,” as
`Patent Owner argues. Consequently, although we misquoted Milinusic,
`Patent Owner does not explain how we misapprehended the relevance of its
`disclosure to Petitioner’s proposed combination. For example, we have
`considered Patent Owner’s argument that requesting client 240 ultimately
`receives the data after issuing a request to the server, (see Req. Reh’g 5–6),
`but this fact does not undermine the teaching that server 210 and CPU 360
`receive the data as well in the course of retrieving and distributing the data
`to client 240 (see Ex. 1003, 4:26–32). Accordingly, the misquotation of
`Milinusic in our Decision does not alter our determination regarding its
`teachings.
`Second, although the statutes and rules require the petition to set forth
`its bases for challenging the elements of the claims by identifying specific
`evidence, see Req. Reh’g 6–7 (citing 35 U.S.C. § 314(a); 37 C.F.R.
`§ 42.104(b)(4), (5)), Patent Owner cites no authority for the proposition that
`the Board is constrained to the cited column and line numbers of a reference
`in evaluating the evidence for a given claim element. Indeed, the Board has
`previously instituted review by considering prior art that was cited in the
`petition, but not cited against particular challenged claims. Garmin Int’l,
`Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 22
`
`4
`
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`IPR2016-00285
`Patent 7,864,983 B2
`
`
`(PTAB Jan. 9, 2013) (Paper 15);4 see also 10X Genomics, Inc. v. Raindance
`Techs., Inc., Case IPR2015-01558, slip op. at 3–4 (PTAB Feb. 24, 2016)
`(Paper 18) (denying rehearing where the Board instituted review based on
`obviousness when the petition proposed anticipation). As discussed above,
`Petitioner identified column 4, lines 25–30, of Milinusic as supporting its
`position that the processor element of claim 1 was taught by CPU 360
`including obtaining surveillance data. See Paper 1, 45. In response to Patent
`Owner’s argument, we looked at the next sentence, starting on line 30, and
`determined it explicitly supported Petitioner’s position.5 Because this action
`is consistent with the Board’s precedent, we are not persuaded it was legal
`error.
`
`We have considered Patent Owner’s remaining arguments but do not
`find them persuasive.
`
`III. CONCLUSION
`Patent Owner’s request for rehearing is denied.
`
`
`
`
`4 The Federal Circuit rejected Cuozzo’s argument that the Board improperly
`instituted IPR on these claims as not based on the grounds proposed in the
`petition, based on 35 U.S.C. § 314(d), which “prohibits review of the
`decision to institute IPR even after a final decision.” In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1272–73 (Fed. Cir. 2015) aff’d sub. nom.
`Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131 (2016).
`5 Although Patent Owner argues it couldn’t cross-examine Dr. Lavian about
`this evidence before institution, we are not persuaded by this argument
`because cross-examination was not available to test any of Petitioner’s
`contentions until after institution of inter partes review. See Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,757–58 (Aug. 14, 2012).
`5
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`
`IPR2016-00285
`Patent 7,864,983 B2
`
`
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`
`
`FOR PETITIONER:
`
`Richard Giunta
`Rgiunta-PTAB@wolfgreenfield.com
`
`Daniel Wehner
`Dwehner-PTAB@wolfgreenfield.com
`
`Randy Pritzker
`Rpritzker-PTAB@wolfgreenfield.com
`
`
`
`FOR PATENT OWNER:
`
`Jason Angell
`jangell@fawlaw.com
`
`
`6
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