throbber
Filed on behalf of TQ Delta LLC
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail:
`pmcandrews@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CISCO SYSTEMS, INC., DISH NETWORK, LLC,
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`Case IPR2016-010061
`Patent No. 7,835,430 B2
`_____________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. §42.71(d)
`
`
`
`
` 
`
`                                                            
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00251, and Comcast
`Cable Communications, L.L.C., Cox Communications, Inc., Time Warner Cable
`Enterprises L.L.C., Verizon Services Corp., and ARRIS Group, Inc., who filed a
`Petition in IPR2017-00420, have been joined in this proceeding.
`
`
` 
`
`

`

`A.
`
`B.
`
`C.
`
`Table of Contents
`
`INTRODUCTION ................................................................................. 1
`
`ARGUMENT ........................................................................................ 2
`
`The Board Misapprehended Patent Owner’s Arguments
`Regarding the Combination of Chang and Milbrandt ........................... 2
`
`The Board Misapprehended the Law Regarding a “Teaching
`Away” .................................................................................................... 5
`
`The Board Misapprehended or Misapplied the Law Regarding
`Proper Reply Evidence or Argument .................................................... 7
`
`i.
`
`ii.
`
`The Board Improperly Relied on New Reply Evidence of
`a “Reasonable Expectation of Success” Necessary to
`Make A Prima Facie Obviousness Case .................................... 8
`
`The Board Abused Its Discretion in Its Procedure For
`Raising, Considering, and Ruling Upon Objections to
`New Reply Evidence ................................................................. 12
`
`CONCLUSION ................................................................................... 15
`
`
`
`I.
`
`II.
`
`III.
`
` 
`
` 
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`I.
`
`INTRODUCTION
`
`Patent Owner TQ Delta, LLC (“Patent Owner”) respectfully requests a
`
`rehearing pursuant to 37 C.F.R. §42.71(d) of the Board’s Final Written Decision
`
`(Paper 41) (“Final Decision”) as to claims 1-6 of U.S. Pat. No. 7,835,430 (“the
`
`’430 patent”). In particular, 37 C.F.R. § 42.71(d) provides that rehearing by the
`
`Board is appropriate where the Board “misapprehended or overlooked” matters.
`
`While Patent Owner believes the Board made other errors in its Final
`
`Decision and does not waive its right to appeal, Patent Owner submits that the
`
`Board misapprehended or overlooked at least the following matters:
`
`(1) The Board misapprehended Patent Owner’s arguments regarding the
`
`insufficiency of the asserted prior art for purposes of obviousness. The Board
`
`misapprehended that Patent Owner was proposing “physically incorporating the
`
`entirety” of the prior art references. (Paper 40 at 19 (emphasis added).)
`
`(2) The Board misapprehended
`
`the
`
`law regarding a permissible
`
`Petitioners’ Reply. The Board relied on arguments or items of evidence found
`
`only in Petitioners’ Reply necessary to make out a prima facie case of obviousness.
`
`Moreover, the Board abused its discretion in its procedures for considering
`
`objections to such new Reply arguments and the manner in which it addressed such
`
`objections in its Final Written Decision.
`
` 
`
`1
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`II. ARGUMENT
`
`A. The Board Misapprehended Patent Owner’s Arguments
`Regarding the Combination of Chang and Milbrandt
`
`Each of claims 1-6 of the ’430 patent requires transmitting test information
`
`
`
`that includes “an array representing frequency domain received idle channel noise
`
`information.” See Paper 14 at 8; Ex. 1001, at claims 1-6. In order to satisfy this
`
`limitation, Petitioners alleged that it would have been obvious to combine (a)
`
`Milbrandt’s alleged disclosure of transmitting test information with (b) Chang’s
`
`alleged disclosure of measuring “background noise.” See Paper 1 at 14-20.
`
`But there is a problem with that theory—Chang only discloses one way of
`
`measuring background noise—not all ways of measuring background noise. See
`
`Paper 14 at 12. That one and only method for measuring background noise in
`
`Chang used external test equipment (not equipment built into the modems),
`
`required a “truck roll” (i.e., sending out a technician), and required “terminating”
`
`the transmission line. See id. at 12-19. Chang did not disclose any other ways of
`
`measuring background noise that would avoid using external test equipment, a
`
`truck roll, or terminating the line. See id. Nor did the Petition allege that Chang
`
`disclosed any ways of measuring background noise other than its one “known
`
`method,” or point to any other ways. See id. at 19, citing Pet. at 16.
`
`Where a prior art patent only discloses one method or one type of apparatus
`
` 
`
`2
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`in a broader category, however, it is not a disclosure of all methods or apparatuses
`
`in that category. See id. at 12. Put another way, just having the phrase
`
`“background noise” in Chang is not a disclosure of every possible way of
`
`measuring background noise—Chang is limited to its actual disclosure of a single
`
`method for measuring background noise. See, e.g., Atofina v. Great Lakes Chem.
`
`Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (“It is well established that the
`
`disclosure of a genus in the prior art is not necessarily a disclosure of every species
`
`that is a member of that genus. There may be many species encompassed within a
`
`genus that are not disclosed by a mere disclosure of the genus.” (internal citation
`
`omitted)); Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 886-
`
`87 (Fed. Cir. 1988) (Claims required a built-in control with both a positive and
`
`negative monitor. Friend’s disclosure of a “positive monitor” did not render
`
`obvious all “monitors”); In re Benno, 768 F.2d 1340, 1346 (Fed. Cir. 1985) (“A
`
`patent discloses only that which it describes, whether specifically or in general
`
`terms, so as to convey intelligence to one capable of understanding.”).
`
`Patent Owner, however, explained that the single disclosed method for
`
`measuring background noise in Chang is incompatible with Milbrandt and taught
`
`away from by Milbrandt. See Paper 14 at 11-15. And any test method that
`
`requires terminating the line would not work in Milbrandt. See id. at 19-22.
`
` 
`
`3
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`
`The Board rejected these arguments, finding that they were “premised on the
`
`incorrect notion that Petitioner proposes only physically incorporating the entirety
`
`of Chang’s testing arrangement, which would necessitate using a ‘truck roll’ into
`
`Milbrandt.” Paper 40 at 19-20; see also id. at 24.
`
`But critically, that is not what Patent Owner argued. To the contrary, Patent
`
`Owner repeatedly explained that it was not making any physical combination or
`
`bodily incorporation argument. See Paper 14 at 10; Paper 39 at 43:12-21.
`
`Of course Chang’s disclosed method is not limited to its actual wires and
`
`chips or the specific appearance of its disclosed external test equipment. But the
`
`fact that the law does not require that the prior art be exactly physically
`
`combinable does not mean that merely having the words “background noise” in
`
`Chang is enough to render all background noise methods obvious. See
`
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1067 (Fed. Cir. 2016) (rejecting
`
`argument that the prohibition against “bodily combin[ation]” meant that the Board
`
`should ignore that two references are incompatible); see also Ex partes Imai,
`
`Appeal 2012-003246 (P.T.A.B. Sept. 30, 2014) (“While it is true that the test for
`
`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference, this does not mean that
`
`finding isolated features is all that is needed to establish obviousness.”).
`
` 
`
`4
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`
`Yet that is exactly what Petitioners alleged and what the Board found. The
`
`only discussion in the Petition or Petitioners’ opening expert declaration of how
`
`Chang could have allegedly rendered obvious any other way of measuring
`
`background noise that would work in Milbrandt was a single sentence regarding
`
`the “no physical combination” legal principle. Petitioners and Petitioners’ expert
`
`just conclusorily stated that “Petitioner’s combination permits, but does not
`
`require, physical incorporation of elements but rather that the combined teachings
`
`of the prior art as a whole would have rendered the claim obvious.” Pet. at 19; see
`
`also Ex. 1009 at ¶ 98. But just reciting the legal principle against physical
`
`combinality is not evidence. As Patent Owner pointed out, the Petition never
`
`provided any explanation as to how the “overall concept of measuring ‘background
`
`noise’ into Chang could have been somehow incorporated into Milbrandt without
`
`Chang’s service technician visit or additional equipment . . . .” Paper 6 at 4; see
`
`also Paper 14 at 3).) In other words, it is not enough to just say that physical
`
`combinality is not required and then vaguely and conclusorily claim, in effect, that
`
`a person of ordinary skill in the art would have automatically figured the rest out.
`
`B.
`
`The Board Misapprehended the Law on a “Teaching Away”
`
`The Board also misapprehended the law in another respect. In rejecting
`
`Patent Owner’s argument that Milbrandt “taught away” from the sole background
`
` 
`
`5
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`noise method disclosed in Chang, the Board cited law that “[e]vidence concerning
`
`whether the prior art teaches away from a given invention must relate to and be
`
`commensurate in scope with the ultimate claims at issue.” Paper 40 at 20, citing
`
`Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15,
`
`2017). Based on that law, the Board found that the “claims [of the ’430 patent] do
`
`not foreclose a ‘truck roll” and that the ’430 patent included embodiments that
`
`would permit a truck roll. See id. at 21. Therefore, under the Board’s reasoning,
`
`whether Milbrandt taught away from a truck roll, or whether Chang only disclosed
`
`a method requiring a truck roll, was irrelevant. See id. at 20-21.
`
`That is not a correct reading of the law, however. The relevant question is
`
`whether the prior art taught away from the claimed invention, i.e., what would
`
`have been obvious without looking at the ’430 patent in hindsight. See, e.g.,
`
`Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1366 (Fed. Cir. 2017).
`
`The Idemitsu case and other cases cited by the Board only stand for the
`
`unremarkable proposition that a teaching away in the prior art must “relate” to the
`
`asserted claims—not that the claims of the challenged patent themselves must
`
`teach away from the combination. In other words, if Milbrandt taught away from
`
`using a red DSL box, for example, and that is what Chang taught, that would be
`
`irrelevant. But here, Milbrandt’s teaching away of a truck roll is related to and
`
` 
`
`6
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`commensurate with the ’430 patent claims, because it constitutes a teaching away
`
`of Chang’s only alleged “idle channel noise” method—something specifically
`
`required by the ’430 patent claims. Moreover, the ’430 claims do specifically
`
`foreclose a truck roll in any event—they require “transmitting test information
`
`over a communication channel.”2 Whether (as the Board found) the specification
`
`has other, unclaimed embodiments that allow a truck roll is irrelevant.
`
`C. The Board Misapprehended or Misapplied the Law Regarding
`Proper Reply Evidence or Argument
`
`Rehearing is also appropriate because in several instances the Board
`
`improperly relied on arguments and evidence submitted for the first time in
`
`Petitioners’ Reply—arguments or evidence necessary to make out a prima facie
`
`case of obviousness. See 37 C.F.R. § 42.23(b); Fed. Reg. Vol. 77, No. 157 (Aug.
`
`14, 2012) at 48767 (“Examples of indications that a new issue has been raised in a
`
`reply include new evidence necessary to make out a prima facie case . . . and new
`
`evidence that could have been presented in a prior filing”), id. (“Reply evidence,
`
`however, must be responsive and not merely new evidence that could have been
`
`presented earlier to support the movant’s motion.”).
`
`                                                            
`2 Patent Owner also notes that Petitioner never argued that the Milbrandt’s teaching
`
`away was not related to or commensurate with the scope of the ‘’412 patent claims.
`
` 
`
`7
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`
`Petitioners’ Reply did more than merely “respond” to Patent Owner’s
`
`arguments—rather, where Patent Owner identified where Petitioner had no
`
`evidence in the Petition (and thus failed to make out a prima facie case of
`
`obviousness), Petitioner improperly filled in that missing evidence for the first time
`
`in the Reply. See, e.g., Intelligent Bio-Systems, 821 F.3d at 1369 (Fed. Cir. 2016)
`
`(a petitioner must “make their case in their petition to institute. . . . IBS relied on an
`
`entirely new rationale to explain why one of skill in the art would have been
`
`motivated to combine Tsien or Ju with a modification of Zavgorodny”).
`
`i.
`
`The Board Improperly Relied on New Reply Evidence of a
`“Reasonable Expectation of Success” Necessary to Make A
`Prima Facie Obviousness Case
`
`In order to make out a prima facie case of obviousness, Petitioners were
`
`required to, among other things, provide evidence of a “reasonable expectation of
`
`success” in combining the asserted prior art. See Paper 14 at 16, citing Proctor &
`
`Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009);
`
`Actelion Pharma, Ltd. v. Icos Corp., IPR2015-00561, Paper 50 (P.T.A.B. Aug. 3,
`
`2016) (“Motivation to combine and reasonable expectation of success are two legal
`
`issues not to be conflated.”) (emphasis added).
`
`The Petition, however, is devoid of any discussion or evidence whatsoever
`
`regarding any reasonable expectation of success. As Patent Owner explained in
`
` 
`
`8
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`both its Preliminary Response and Substantive Response, nowhere in the Petition
`
`or Petitioners’ opening expert declaration is the concept of a reasonable
`
`expectation of success ever discussed. See Paper 14 at 16-19; Paper 6 at 27-29.
`
`This legal requirement also cannot be satisfied by mere conclusory
`
`allegations from Petitioners’ expert that a person of ordinary skill would have
`
`known how to make such a modification or combination, or that doing so would
`
`have been “predictable”—rather, a Petitioner must provide a persuasive analysis of
`
`how such a combination or modification would have worked in practice, at least
`
`generally. See, e.g., ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`
`694 F.3d 1312, 1327 (Fed. Cir. 2012) (an expert’s “conclusory statement” that a
`
`person of ordinary skill in the art “would have known” how to combine the
`
`references is “not sufficient and is fraught with hindsight bias”); Allsteel, Inc. v.
`
`Dirtt Environmental Sol., IPR2015-01690, Paper 10 (P.T.A.B. Jan. 27, 2016)
`
`(expert testimony that allegedly obvious modification would not have “any
`
`significant engineering obstacle” was conclusory); Daifuku Co., Ltd. v. Murata
`
`Machinery, Ltd., IPR2015-01538, Paper 11 (P.T.A.B. Jan. 19, 2016) (“Petitioner
`
`and Dr. Sturges have not provided a persuasive analysis of . . . how the modified
`
`loading system would work in practice.”) (emphasis added).
`
`Here, the only purported evidence of a reasonable expectation of success
`
` 
`
`9
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`was provided for the first time on Reply, only after Patent Owner pointed out the
`
`deficiency in the Petition. This was also the only such evidence cited by the
`
`Board. Specifically, the Board began the section in its Final Written Decision
`
`addressing “reasonable expectation of success” by citing to Petitioners’ alleged
`
`reasons for “why a person having ordinary skill in the art would have wanted to
`
`include Chang’s type of test information in the information transmitted by
`
`Milbrandt’s system.” Paper 40 at 21-23. The Board found that “[b]ased on the
`
`record before us, that was all that was required from Petitioner.” Id. at 23. But
`
`that is incorrect under the law. Again, “[m]otivation to combine [i.e., why] and
`
`reasonable expectation of success are two legal issues not to be conflated.”)
`
`Actelion Pharma, Ltd. v. Icos Corp., IPR2015-00561, Paper 50 (P.T.A.B. Aug. 3,
`
`2016) (emphasis added); see also supra at 8-9, citing cases.
`
`Then the Board stated that it “disagree[s] with Patent Owner (PO Resp. 19)
`
`that Petitioner needed to provide technical details for how a person of ordinary
`
`skill in the art would have measured idle channel noise information and transmitted
`
`that information using Milbrandt’s system, e.g., without a truck roll.” Paper 40 at
`
`23. That conclusion, however, is also incorrect under the law. That is exactly
`
`what proof of a “reasonable expectation of success” requires—more than just
`
`conclusory and vague allegations. See, e.g., ActiveVideo Networks, Inc. v. Verizon
`
` 
`
`10
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`Communications, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (an expert’s
`
`“conclusory statement” that a person of ordinary skill in the art “would have
`
`known” how to combine the references is “not sufficient and is fraught with
`
`hindsight bias”); Biodelivery Sciences Intern., Inc. v. Monosol RX, LLC, Case
`
`IPR2015-00167, Paper 6 (P.T.A.B. May 20, 2015) (no obviousness where
`
`Petitioner only alleged that it would have been obvious to add the overall concept
`
`of “uniform coatings” to a prior art reference); Daifuku, IPR2015-01538, Paper 11
`
`(“Petitioner and Dr. Sturges have not provided a persuasive analysis of . . . how the
`
`modified loading system would work in practice.”) (emphasis added).
`
`Most problematic, however, is that the Board then states in its Final Written
`
`Decision that in any event, “Petitioner persuasively argues that both experts agree
`
`that a person having ordinary skill in the art would have known how to measure
`
`idle channel noise information without a truck roll.” Paper 40 at 23. But
`
`everything the Board cites after that statement comes from Petitioners’ Reply—
`
`not the Petition. See id., citing Pet. Reply 14–15 (citing Ex. 1100 ¶ 73; Ex. 1110,
`
`136:4‒137:9; see also Pet. Reply at 11; Ex. 1100 ¶ 77.) Namely, in the Reply
`
`declaration paragraphs cited by the Board, Petitioners’ expert (a) for the first time
`
`vaguely alleged that he personally knew how to measure background noise without
`
`a truck roll (even though he refused to provide any details at his deposition) and (b)
`
` 
`
`11
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`vaguely alleged that Chang’s circuitry could be included in Milbrandt’s modem.
`
`(See id.; see also Paper 32 at 4.) None of that was found in the Petition, even
`
`though again, it was necessary for Petitioner to make out a prima facie case. Nor
`
`can Petitioner rely on the post-Petition deposition testimony of Patent Owner’s
`
`expert to fill in the deficiencies in the Petition.3
`
`ii.
`
`The Board Abused Its Discretion in Its Procedure For
`Raising, Considering, and Ruling Upon Objections to New
`Reply Evidence
`
`Finally, the Board also abused its discretion by refusing to give Patent
`
`Owner the opportunity, before the Board issued its Final Written Decision, to
`
`submit any evidence or argument showing why Petitioners’ Reply arguments were
`
`improper. The Board only allowed Patent Owner to submit an argument-less
`
`                                                            
`3 Patent Owner’s expert also did not say what Petitioners alleged—he only said that
`
`the “concept of idle channel noise information or measuring idle channel noise
`
`information” . . . was known by those of skill in the art at the time” of the ’430
`
`patent (e.g., in Chang)—he never said that it was known how to do so without a
`
`truck roll before the ’430 patent. (See Paper 40, citing Ex. 1110 at 136:4-137:9.)
`
`Moreover, whether a person of ordinary skill in the art “would have known” of
`
`other methods not disclosed in Chang is irrelevant. Chang is the only reference
`
`asserted by Petitioners in the Petition to disclose measuring background noise.
`
` 
`
`12
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`“listing” of improper new Reply arguments, while allowing Petitioner to submit a
`
`“response” identifying to what in Patent Owner’s Response each item was replying
`
`to. See Paper 21. Moreover, the Board refused to allow Patent Owner to provide
`
`any explanation or argument on the Board call on this issue.
`
`Patent Owner submits that such a process is unreasonable for several
`
`reasons, including (a) the Board’s procedure did not satisfy the necessary showings
`
`under the controlling rules and law (e.g., the rules require more than just
`
`considering whether a Petitioner’s Reply is in “response” to something that Patent
`
`Owner said and prohibit any new arguments necessary to make out a prima facie
`
`case or any arguments or evidence that could have been brought earlier) and (b) the
`
`Board’s procedure denied Patent Owner an opportunity to be fully heard without a
`
`reasoned justification (e.g., any time the Board may have saved by not reviewing
`
`the parties’ arguments was offset by not being informed by the parties of the nature
`
`of the disputes). See, e.g., Redline Detection, LLC v. Star Envirotech, Inc., 811
`
`F.3d 435, 442 (Fed. Cir. 2015) (the Board abuses its discretion in how it manages
`
`its permissive rules of trial proceeding if it is “(1) clearly unreasonable, arbitrary,
`
`or fanciful” or “(4) involves a record that contains no evidence on which the Board
`
`could rationally base its decision.”); Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d
`
`1267, 1272 (Fed. Cir. 2017) (the PTAB abused its discretion in refusing to allow
`
` 
`
`13
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`Patent Owner to submit “the information necessary to make a reasoned decision,”
`
`by allowing Patent Owner to submit no written argument and allowing only
`
`general “characterizations” of the disputed evidence during the conference call).
`
`This is particularly problematic given that some of Petitioners’ new Reply
`
`allegations were technologically wrong, yet Patent Owner was not allowed any
`
`opportunity to explain. For example, the Board relied on Petitioner’s new Reply
`
`argument that “idle channel noise” could be measured “during idle times, when the
`
`subchannel is not in operation.” Paper 40 at 24, citing Ex. 1009 ¶¶ 48, 91; Ex.
`
`1110 at 133:12-134:15. In actually, there are no idle times when the subchannel is
`
`not in operation, because idle frames are always transmitted. But Dr. Kiaei
`
`claimed he was “not prepared to answer” questions about that at his second
`
`deposition. See Ex. 32 at 4-5. And the Board allowed Patent Owner no
`
`opportunity to provide rebuttal evidence.
`
`Moreover, in its Final Written Decision, the Board again abused its
`
`discretion in how it addressed and ruled upon Patent Owner’s objections. The
`
`Board addressed Patent Owner’s objections in a single footnote, without
`
`explanation as to why it believed that each of the specific objected-to arguments or
`
`evidence in Petitioners’ Reply was permissible. (See Paper 41, Final Written
`
`Decision at fn. 12.) As such, there is not a sufficient record for appeal. See
`
` 
`
`14
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (the
`
`Board may not “make significant evidentiary decisions without providing an
`
`explanation or a reasoned basis for its decisions” and “[f]or judicial review to be
`
`meaningfully achieved within these strictures, the agency tribunal must present a
`
`full and reasoned explanation of its decision.”).
`
`For example, the Board did not address: Why could Petitioner not have
`
`submitted each of the objected-to arguments or evidence earlier, in its Petition?
`
`How did Petitioner establish a prima facie case of obviousness without the
`
`objected-to evidence and arguments? This is particularly true with respect to the
`
`above-discussed instances of improper new Reply evidence.
`
`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner requests reconsideration of the
`
`Board’s findings of unpatentability for claims 1-6 of the ’430 patent.
`
`Respectfully submitted,
`
`
`
`Dated: November 27, 2017
`
`
`
` 
`
`15
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`pmcandrews@mcandrews-ip.com
`Lead Counsel for Patent Owner
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`
`the attached PATENT OWNER’S MOTION FOR REHEARING are being
`
`served via electronic mail on November 27, 2017 to the following:
`
`Lead Counsel
`David L. McCombs
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel. 214-651-5533
`Fax 214-200-0853
`david.mccombs.ipr@haynesboone.com
`
`Heidi L. Keefe
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., Suite 700
`Washington, DC 20004
`Tel. 650-843-5001
`Fax 650-849-7400
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`
`John M. Baird
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`
` 
`
`
`
`Back-up Counsel
`Theodore M. Foster
`Tel. 972-739-8649
`Gregory P. Huh
`Tel. 972-739-6939
`Russell Emerson
`Tel. 214-651-5328
`HAYNES & BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Fax 972-692-9156
`ipr.theo.foster@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`Stephen McBride
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., Suite 700
`Washington, DC 20004
`Tel. 650-843-5001
`Fax 650-849-7400
`smcbride@cooley.com
`
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington, DC 20004
`Tel. 202-776-7819
`
` 
`
`

`

`Patent Owner’s Request for Rehearing
`IPR2016-01006
`Patent No. 7,835,430
` 
`Fax 202-776-7801
`JMBaird@duanemorris.com
`
`Fax 202-776-7801
`CJTyson@duanemorris.com
`
`Dated: November 27, 2017
`
`
`
`
`
`/Peter J. McAndrews/
`
`
`
`
`
`
`
`Peter J. McAndrews
`Registration No. 38,547
`McANDREWS, HELD & MALLOY,
`LTD.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Telephone: (312) 775-8000
`
` 
`
`
`
`
` 
`
`

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