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.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01009
`Patent No. 8,238,412 B2
`_____________
`
`
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. §42.71(d)
`
`
`
`
`
`
`
`
`
`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.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01009
`Patent No. 8,238,412 B2
`_____________
`
`
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. §42.71(d)
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................. 1
`ARGUMENT ........................................................................................ 1
`The Board Overlooked That It Arrived At Contradictory Claim
`Constructions of “During Showtime” .................................................... 1
`
`The Board Overlooked a Non-Obviousness Argument Presented By
`Patent Owner ......................................................................................... 6
`
`The Board Misapprehended the Law Regarding Proper Reply
`Evidence or Argument........................................................................... 8
`
`i. The Board Relied on Evidence Necessary to Make A Prima
`Facie Obviousness Case That Was Submitted Only in
`Petitioners’ Reply .......................................................................... 8
`
`ii. The Board Misapprehended Or Overlooked Evidence That
`Refutes Petitioners’ New Reply Arguments ............................... 10
`
`iii. The Board Misapprehended Other Evidence that
`Undermines Its Obviousness Findings ........................................ 12
`
`iv. The Board Abused Its Discretion in Its Procedure For
`Raising, Considering, and Ruling Upon Objections to New
`Reply Evidence ............................................................................ 13
`
`CONCLUSION ................................................................................... 15
`
`
`
`i
`
`
`
`I.
`II.
`
`A.
`
`B.
`
`C.
`
`III.
`
`
`
`
`
`
`
`
`
`
`
`
`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 October 26, 2017 Final
`
`Written Decision (Paper 37) (“Final Decision”) as to claims 9-12, 15, 18, and 21 of
`
`U.S. Pat. No. 8,238,412 (“the ’412 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
`
`several portions of the record and controlling law as discussed below.
`
`II. ARGUMENT
`
`A. The Board Overlooked That It Arrived At Contradictory Claim
`Constructions of “During Showtime”
`
`In this proceeding (IPR2016-01008), the Board held that the claim term
`
`
`
`“during Showtime” means “during normal communications of a DSL receiver.”
`
`(Paper 37 at 9.) Further, the Board recognized that “[b]oth parties agree that
`
`‘during Showtime’ connotes normal communications of a DSL transceiver, which
`
`excludes initialization and training, as our construction of ‘during Showtime’
`
`reflects.” Id. at 37 (emphasis added). Yet in IPR2016-01007, the Board reached
`
`the opposite conclusion for the identical term. There, the Board held that it is “not
`
`persuaded by Patent Owner’s negative construction, which excludes initialization
`1
`
`
`
`
`
`from normal communication.” IPR2016-01007, Paper 38 at 9 (emphasis added).
`
`As a result, the Board’s bases for finding that the prior art rendered obvious
`
`the claimed “SNR during Showtime” are not clear. Is it because the Board believes
`
`that measuring SNR during initialization still satisfies the claim? Or is it because
`
`the Board believes that the prior art actually teaches measuring SNR during
`
`Showtime (i.e., during normal communications excluding initialization and
`
`training), rather than just during initialization? And if it is the latter, the Board
`
`appears to have misapprehended Patent Owner’s arguments and evidence.
`
`Specifically, in this proceeding, the Board found that Milbrandt has a “clear
`
`teaching” of measuring noise “during Showtime,” at column 12, lines 58 to 63.
`
`See Paper 37 at 37. That is because at the oral hearing, Petitioners misrepresented
`
`that Patent Owner ignored this disclosure in Milbrandt and addressed only a
`
`different disclosure in Milbrandt at 10:41-46. Paper 36 at 16:11-15. Based on this
`
`misrepresentation, the Board incorrectly found that Patent Owner “does not explain
`
`how the disclosure it highlights at column 10, lines 41 to 46, of Milbrandt is
`
`inconsistent with the disclosure relied upon by Petitioner.” Paper 37 at 37.
`
`In fact, Patent Owner did explain how column 10, lines 41 to 46 showed that
`
`the entirety of Milbrandt, including column 12, lines 58 to 63, did not disclose
`
`measuring any noise information “during Showtime.” Namely, the passage in
`
`Milbrandt relied upon by Petitioners (column 12, lines 58 to 63) only states that
`
`
`
`2
`
`
`
`“[t]he noise information for a particular subscriber line 16 may be determined by
`
`measuring noise characteristics of a subscriber line 16 during operation . . . .” Ex.
`
`1011 at 12:58-63. Patent Owner’s expert very specifically explained, however,
`
`that when Milbrandt was referring to measuring noise “during operation,” it was
`
`not referring to doing so during Showtime. See Ex. 2001 at ¶ 62 (“Milbrandt
`
`discloses, moreover, that while it gathers noise ‘during operation,’ it only does so
`
`‘during modem training.’), cited at Paper 13 at 27. This discussion was with
`
`respect to Milbrandt’s use of the phrase “during operation” in general and
`
`throughout. Patent Owner’s expert merely pointed to column 10, lines 43-46 of
`
`Milbrandt as an example to illustrate that Milbrandt uses the phrase “during
`
`operation” to mean during “modem training.” See id at 27-28. There is nothing
`
`contradictory about this statement, as initialization is, or course, an “operation” of
`
`the modem. See id.
`
`As such, in the only spot where Milbrandt actually explains what was meant
`
`by “operation,” it is clear that it meant “modem training.” See id. In contrast, at
`
`column 12, lines 58-63, Milbrandt does not say that it meant something different
`
`with the phrase or that “during operation” was intended to refer to “during
`
`Showtime.” Mere speculation by Petitioners and their expert, Dr. Kiaei, about
`
`what Milbrandt might have meant at column 12, lines 58-63 is not evidence.
`
`At the very least, the Board itself found that Milbrandt’s disclosure that
`
`
`
`3
`
`
`
`“modem training” occurs “during the normal course of operation of system 10”
`
`was “at best, ambiguous.” Paper 37 at 37. So that begs the question: How is
`
`Milbrandt’s disclosure of measuring noise “during operation” at column 12, lines
`
`58 to 63 any different or less ambiguous? Indeed, Petitioner’s expert, Dr. Kiaei,
`
`confirmed that it was not clear whether Milbrandt’s modem determined test and
`
`diagnostic information ‘during operation or ‘during Showtime.” See Paper 29,
`
`citing Ex. 2011 at 62-63. And when asked how Milbrandt determined noise during
`
`Showtime, he did not have an opinion. See id.
`
`Accordingly, if Milbrandt’s phrase “during operation” is ambiguous, then
`
`the Board’s reliance on that disclosure to render claims of the ’412 patent
`
`unpatentable is improper.1 See, e.g., Deller’s Walker on Patents, Vol. 1 at 286
`
`(“ambiguous disclosures do not anticipate”); Par Pharm., Inc. v. TWi Pharm., Inc.,
`
`
`1 The Board for the first time in its Final Written Decision found that Milbrandt’s
`
`disclosure of “during operation” is ambiguous, even though neither party had made
`
`such an argument. Accordingly, Patent Owner is entitled to address this issue on
`
`which it was not given prior notice. See SAS Inst., Inc. v. ComplementSoft, LLC,
`
`825 F.3d 1341 at *20-21 (Fed. Cir. June 10, 2016) (“An agency may not change
`
`theories in midstream without giving respondents reasonable notice of the change
`
`and the opportunity to present argument under the new theory.”)
`
`
`
`4
`
`
`
`773 F.3d 1186, 1195 (Fed. Cir. 2014) (even in the context of obviousness, mere
`
`“probabilities and possibilities” that a prior art reference discloses a claim
`
`limitation are not enough).
`
`
`
`Similarly, the Board appears to have misapprehended the parties’ arguments
`
`and the evidence regarding the disclosure of the ANSI T1.413 reference. In this
`
`proceeding (IPR2016-1009), the Board found that ANSI T1.413 also teaches
`
`measuring “SNR during Showtime” from its disclosure that “SNR, as measured by
`
`the receivers” is “externally accessible from the ATU-C,” or its disclosure that
`
`SNR is available at “any other time following the execution of initialization and
`
`training.” Paper 37 at 36-37. However, not even Petitioners had argued in the
`
`Petition that ANSI T1.413 discloses measuring “SNR during Showtime”—that is
`
`why Petitioners relied on Milbrandt for alleged disclosure of measuring “noise”
`
`“during Showtime.” See Paper 13, Patent Owner’s Response at 26-27. Rather,
`
`Petitioners only alleged that ANSI T1.413 refers to SNR being “externally
`
`accessible” or “available” during Showtime—which says nothing about when it is
`
`measured. See id. Even if ANSI T1.413 discloses making SNR available or
`
`accessible during Showtime, that does not mean it was measured during Showtime,
`
`as opposed to during initialization.
`
`
`
`
`
`
`
`5
`
`
`
`B.
`
`The Board Overlooked a Non-Obviousness Argument Presented
`By Patent Owner
`
`Rehearing is also appropriate because the Board overlooked Patent Owner’s
`
`argument that it would not have been obvious to combine/modify Milbrandt and
`
`ANSI T1.413 to measure and transmit “SNR during Showtime,” because Milbrandt
`
`already achieved the same result and benefits alleged by Petitioners, making such a
`
`combination/modification unnecessary and redundant. See Paper 13 at 29-30.
`
`Patent Owner explained that Milbrandt already discloses using SNR for all of the
`
`same reasons offered by Petitioners—it just does not measure or transmit SNR
`
`because it does not need to do so. See Paper 13 at 30-32. Rather, Milbrandt gets
`
`its “signal-to-noise ratios of selected subscriber line” by calculating them directly
`
`at the central office modem based on the “noise” (not SNR) information that is
`
`measured and transmitted. See id., citing Ex. 1011, at 16:33-38, Fig. 7; Ex. 2001 at
`
`¶ 69. Indeed, Petitioners’ expert admitted that Milbrandt already possessed this
`
`feature. See id., citing Ex. 2005 at 50:7-51:22.
`
`In other words, the benefits that Petitioners claimed one would realize by
`
`modifying Milbrandt to transmit SNR were nonexistent—because Milbrandt
`
`already provided those benefits. See Paper 13 at 30-32, citing In re NTP, Inc., 654
`
`F.3d 1279 (Fed. Cir. 2011); Apple, Inc. v. Cellular Comm. Equip., LLC, Case No.
`
`IPR2015-00576, Paper 7 (P.T.A.B. June 12, 2015). But the Board did not address
`
`this argument or this law. The Board also did not address the fact that that
`
`
`
`6
`
`
`
`Petitioners’ expert was unable at deposition to come up with any reason why a
`
`person of ordinary skill in the art would have measured and transmitted SNR,
`
`rather than measuring and transmitting noise and, then, calculating SNR from that.
`
`See Paper 13 at 32, citing Ex. 2005 at 52:20-53:25.
`
`
`
`Nor do Petitioners’ new arguments submitted on Reply overcome this
`
`evidence or law (although it is not clear from the Board’s decision whether it relied
`
`on those arguments). After realizing that the only articulated rationales in the
`
`Petition for modifying Milbrandt were legally insufficient, Petitioners changed
`
`their obviousness rationales to something else. For the first time on Reply,
`
`Petitioners argued that the reasons for making the combination/modification would
`
`be to (a) perform “bit swapping to allocate bits on sub-carriers,” or to (b) allow
`
`“for a technician, using external equipment, to perform on demand SNR analysis to
`
`identify and fix a system issue that affects multiple lines within a specific binder
`
`group.” Paper 15 at 20-21.
`
`The Petition, however, never said anything about “bit swapping” or
`
`“allocate[ing] bits,” nor anything about enabling the use of “external equipment.”
`
`See Paper 1 at 26. It is well established that “‘[r]espond’ in the context of 37
`
`C.F.R. § 42.23(b) does not mean embark in a new direction with a new approach as
`
`compared to the position originally taken in the Petition.” Duk San Neolux Co.,
`
`Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2016-00148, Paper 35 (P.T.A.B. March
`
`
`
`7
`
`
`
`29, 2017). See also Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821
`
`F.3d 1359, 1369 (Fed. Cir. 2016) (“rejecting an “entirely new rationale to explain
`
`why one of skill in the art would have been motivated to combine” the prior art,
`
`newly submitted on Reply.”) (emphasis added); 37 C.F.R. §42.23(b).
`
`i.
`
`C. The Board Misapprehended the Law Regarding Proper Reply
`Evidence or Argument
`
`
`The Board Relied on Evidence Necessary to Make A Prima
`Facie Obviousness Case That Was Submitted Only in
`Petitioners’ Reply
`
`Rehearing is also appropriate because in several other instances the Board
`
`also 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”), (“Reply evidence,
`
`however, must be responsive and not merely new evidence that could have been
`
`presented earlier to support the movant's motion.”).
`
`Petitioners’ Reply did more than merely “respond” to Patent Owner’s
`
`arguments—rather, where Patent Owner identified places 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
`8
`
`
`
`
`
`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”); Tietex Intern.,
`
`Ltd. v. Precision Fabrics Group, Inc., Case IPR2014-01248, Paper 39 (P.T.A.B.
`
`Jan. 27, 2016) (“In our judgment, Petitioner's arguments and evidence in the Reply
`
`are outside the scope of a proper reply because they do more than merely address
`
`Patent Owner's argument that Petitioner did not establish [a prima facie case];
`
`rather, they attempt to provide new evidence that was not set forth clearly in the
`
`Petition . . . .”) (emphasis added);
`
`There is one improper new Reply argument in particular that compels
`
`reversal. As the Board recognized, Petitioners’ obviousness arguments for each of
`
`the challenged claims turn on a key finding—that Milbrandt’s “subfrequencies” for
`
`which it tests and transmits test information are the same thing as the ’412 patent’s
`
`claimed “subchannels.”2 See Paper 37 at 27, citing Petition at 12-13. In other
`
`words, this was a fact needed for prima facie obviousness.
`
`But, as Patent Owner explained in its Response, the only evidence in the
`
`Petition that was offered on this point was just Dr. Kiaei’s bare, conclusory “say
`
`so” that Milbrandt’s “subfrequency” is the same as the claimed “subchannel”—he
`
`
`2 The Board construed the claimed “subchannels” to be “one of a plurality of
`
`carriers of a multicarrier communication channel.” Paper 37 at 12.
`
`
`
`9
`
`
`
`provided no evidence, support, or even explanation. See Paper 2 at 37, citing Ex.
`
`1009 at p. 117. That is not enough to carry Petitioner’s burden. See In re Am.
`
`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (the Board should
`
`give no weight to conclusory expert opinions); Rohm & Haas Co. v. Brotech
`
`Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (same); Ashland Oil, Inc. v. Delta
`
`Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (same).
`
`So on Reply, Petitioners attempted to fill in the evidence that they failed to
`
`provide in the Petition. Indeed, every one of Petitioners’ substantive arguments
`
`and evidence on this issue that the Board cites in its Decision comes from
`
`Petitioners’ Reply. See Paper 37 at 27-30. That is improper.
`
`ii.
`
`The Board Misapprehended Or Overlooked Evidence That
`Refutes Petitioners’ New Reply Arguments
`
`The Board also erred by overlooking or misapprehending the only timely
`
`evidence on this issue (Patent Owner’s evidence), which showed that Milbrandt’s
`
`“sub-frequencies” are not the same as the claimed subchannels. See id. at 26-27.
`
`First, Patent Owner’s expert explained that because Milbrandt uses the term
`
`“sub-frequency” to describe the frequency spectrum used by both xDSL and V.90
`
`protocols, the term cannot as a technological matter mean the same thing as a
`
`“subchannel”—because the V.90 protocol does not have any subchannels. See
`
`Paper 13 at 16, citing Ex. 2001 at ¶ 41. The Board relied only on the contrary
`
`opinion of Dr. Kiaei on this point—but he confessed at his first deposition to
`
`
`
`10
`
`
`
`having no experience regarding non-ANSI protocols. See Paper 13 at 50, citing
`
`Ex. 2005 at 72:7-73:11.
`
`Second,
`
`the Board misapprehended Milbrandt as using
`
`the
`
`term
`
`“subfrequency” differently in the context of V.90 and ADSL. Paper 37 at 29-30.
`
`There is no evidence in the record to support such a finding, as neither Milbrandt
`
`nor Dr. Kiaei draws any such distinction. To the extent the Board independently
`
`made this factual finding that is improper. See Brand v. Miller, 487 F.3d 862, 869
`
`(Fed. Cir. 2007) (“We therefore hold that . . . it is impermissible for the Board to
`
`base its factual findings on its expertise, rather than on evidence in the record …”).
`
`Third, in rejecting Patent Owner’s contention that the six columns 344 of
`
`Figure 3 would be understood to correspond to “subfrequencies associated with the
`
`various communication protocols” and not individual carriers, the Board
`
`overlooked or misapprehend evidence. In particular, the Board’s statement that
`
`“[n]either Patent Owner nor Dr. Chrissan explain why . . . Figure 3 would depict
`
`six columns when ADSL, by Patent Owner’s own explanation, should require only
`
`two columns—one for upstream and one for downstream,” shows that the Board
`
`misapprehended or overlooked that Patent Owner did provide such an explanation.
`
`Specifically, Patent Owner’s expert explained that “the invention disclosed in
`
`Milbrandt includes determining the appropriate communication protocol . . .
`
`based on measured parameters for the different sub-frequencies, corresponding to
`
`
`
`11
`
`
`
`the respective communication protocols.” Ex. 2001 at ¶ 42 (cited at Paper 13 at
`
`15). Dr. Chrissan provided examples of more than six communication protocols,
`
`including xDSL, Ethernet, fast Ethernet, V.32bis, V.32terbo, V.34, V.42, V.42bis,
`
`and V.90. Ex. 2001 at ¶ 43 (cited at Paper 13 at 15). Using xDSL as an example
`
`he explained that a communication protocol is associated with a sub-frequency, “0
`
`kHz to 128 kHz, or 129 kHz to 1.1 MHz, for xDSL.” Id. He then explained that
`
`“information determined . . . for the different sub-frequencies corresponding to the
`
`various communications protocols is stored in a line attenuation grid 360 of Fig.
`
`3.” Thus, each column in grid 360 respectively contains parameters for the portion
`
`of the frequency spectrum used by a particular communication protocol.
`
`iii.
`
`The Board Misapprehended Other Evidence
`Undermines Its Obviousness Findings
`
`that
`
`The Board also misapprehended evidence with respect to another claim
`
`term—the requirement of transmitting/receiving a test message comprising “power
`
`level per subchannel information . . . based on a Reverb Signal.” Namely, the
`
`Board held that “we are persuaded by Petitioner’s evidence that “aggregate” as
`
`used in ANSI T1.413 includes individual values for each of the subchannels/sub-
`
`carriers.” However, Petitioner’s evidence was a conclusory statement by Dr. Kiaei
`
`that a “POSITA would have understood that the aggregate includes individual
`
`values for each of sub-carriers.” Paper 15 at 30. But during his second deposition,
`
`Dr. Kiaei admitted that in the context of ADSL, the aggregate value is a single
`
`
`
`12
`
`
`
`value, and not individual values for each sub-carrier. See Paper 29 at 5-6. The
`
`Board overlooked or misapprehended this evidence showing that ANSI T1.413
`
`does not transmit individual values for each sub-carrier. Additionally, Dr. Kiaei’s
`
`conclusory statement was improperly raised for the first time in Petitioner’s Reply
`
`and, thus, Patent Owner did not have an opportunity to present contrary evidence,
`
`e.g.,
`
`that
`
`“aggregate” means
`
`“a
`
`total
`
`or
`
`gross
`
`amount,”
`
`(http://www.dictionary.com/browse/aggregate);
`
`in other words, exactly
`
`the
`
`opposite of individual values.
`
`iv.
`
`The Board Abused Its Discretion in Its Procedure For
`Raising, Considering, and Ruling Upon Objections to New
`Reply Evidence
`
`Finally, the Board abused its discretion by refusing to give Patent Owner the
`
`opportunity to submit a motion to strike showing why Petitioners’ Reply arguments
`
`were improper and/or a motion to file a surreply showing why due process required
`
`that Patent Owner be given an opportunity to respond to Petitioner’s new
`
`arguments. The Board only allowed Patent Owner to submit an argument-less
`
`“listing” of improper new Reply arguments without any explanation, while
`
`allowing Petitioner to submit a “response” identifying to what in Patent Owner’s
`
`Response it was replying to. See Paper 19.
`
`Patent Owner submits that such a process is unreasonable for several
`
`reasons, including (a) the Board’s procedure did not satisfy the necessary showings
`
`
`
`13
`
`
`
`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 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) (finding the PTAB
`
`abused its discretion in refusing to allow Patent Owner to submit “the information
`
`necessary to make a reasoned decision,” by allowing Patent Owner to submit no
`
`argument in an email to the Board and allowing only general “characterizations” of
`
`the disputed evidence during the conference call).
`
`Moreover, in its Final Written Decision, the Board again abused its
`
`discretion in how it addressed and ruled upon Patent Owner’s objections and
`
`observations. 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
`
`
`
`14
`
`
`
`arguments or evidence in Petitioners’ Reply was permissible. See Paper 37 at fn.
`
`5. As such, there is not a sufficient record for appeal. See 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? Was Patent Owner provided with advanced
`
`notice of Petitioners’ Reply arguments and an opportunity to respond?
`
`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests rehearing of
`
`the Board’s Final Decision, and reconsideration of the Board’s findings of
`
`unpatentability for claims 9-12, 15, 18, and 21 of the ’412 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
`Fax: (312) 775-8100
`pmcandrews@mcandrews-ip.com
`
`Lead Counsel for Patent Owner
`
`
`
`16
`
`
`
`
`
`
`
`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 REQUEST FOR REHEARING is being
`
`served on November 27, 2017, by electronic mail 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
`
`Dated: November 27, 2017
`
`
`
`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
`
`
`
`/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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