Trials@uspto.gov
`571-272-7822
`
`
`Paper 26
`Entered: March 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FASTVDO LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01203
`Patent 5,850,482
`____________
`
`
`Before JEFFREY S. SMITH, PATRICK M. BOUCHER, and PETER P.
`CHEN, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 26
`Entered: March 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FASTVDO LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01203
`Patent 5,850,482
`____________
`
`
`Before JEFFREY S. SMITH, PATRICK M. BOUCHER, and PETER P.
`CHEN, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2016-01203
`Patent 5,850,482
`
`
`I. INTRODUCTION
`Patent Owner FastVDO LLC, filed a Request for Rehearing (Paper
`16, “Req. Reh’g”) of portions of our Decision to Institute Inter Partes
`Review (Paper 14, “Dec.”), dated December 16, 2016, and specifically those
`portions instituting inter partes review of claims 7–11 and 22–26 of U.S.
`Patent No. 5,850,482 (Ex. 1001, “the ’482 patent”).
`In its Request, Patent Owner argues that the Decision to Institute
`misapprehended or overlooked the Petition’s failure to comply with 37
`C.F.R. §§ 42.104(b)(3) and (4). Req. Reh’g 1. Patent Owner also argues the
`Decision to Institute misapprehended or overlooked the Petition’s failure to
`provide analysis of “error correction means” sufficient to justify institution
`of inter partes review of claims 7 and 22. Req. Reh’g. 4.
`For the reasons set forth below, Patent Owner’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 may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277,
`1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed.
`Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The
`request must identify, with specificity, all matters that the moving party
`believes the Board misapprehended or overlooked. See 37 C.F.R.
`
`2
`
`
`
`IPR2016-01203
`Patent 5,850,482
`
`§ 42.71(d). Section 42.71(d) further provides that the request must identify
`where each matter was previously addressed.
`III. DISCUSSION
`Claims 7 and 22 each recite “error protection means” with the
`function of “providing error protection to at least one of the first portions of
`the plurality of code words while maintaining any error protection provided
`to the respective second portion associated with the at least one first portion
`at a lower level than the error protection provided to the respective first
`portion.” The Petition argues that the ’482 patent discloses insufficient
`structure for unequal “error protection means.” Pet. 9–10. Nevertheless, the
`Petition recognizes the Specification’s assertion that methods and apparatus
`for performing “unequal error protection” were “known to those skilled in
`the art” “as described, for example, in R. G. Gallager, ‘Information Theory
`and Reliable Communication’, Wiley and Sons (1968).” Id. (citing Ex.
`1001, 16:10–14). As noted in our Institution Decision, the Petition argues
`that this assertion is a bare statement of the mere title of a book that does not
`adequately disclose any structure for the unequal “error protection means”
`and that the term is indefinite. Dec. 11 (citing Pet. 10). In our Decision,
`notwithstanding Petitioner’s position, we found that the specification of the
`’482 patent “discloses enough of an algorithm to allow a person of ordinary
`skill to discern the necessary structure for performing the claimed function
`of the ‘error protecting means.’” Dec. 12.
`Despite this explicit analysis, Patent Owner contends that the Board
`misapprehended or overlooked Patent Owner’s argument that the Petition is
`deficient because the Petition fails to comply with 37 C.F.R. § 42.104(b)(3).
`Req. Reh’g 1. That regulation requires that the Petition explain “[h]ow the
`
`3
`
`
`
`IPR2016-01203
`Patent 5,850,482
`
`challenged claim is to be construed,” and “[w]here the claim to be construed
`contains a means-plus-function … limitation as permitted under 35 U.S.C.
`§ 112(f), the construction of the claim must identify the specific portions of
`the specification that describe the structure, material, or acts corresponding
`to each claimed function.” In particular, Patent Owner contends that we
`misapprehended or overlooked Patent Owner’s argument that Petitioner’s
`“sole theory regarding the claimed ‘error protection means’ [is]
`indefiniteness,” but provided alternative theories for other means-plus-
`function limitations. Req. Reh’g. 1–3.
`But in the Preliminary Response, Patent Owner did not specifically
`argue that Petitioner provided a “sole theory” for the claimed “error
`protection means” based on indefiniteness. Rather, Patent Owner argued
`generally that “Petitioner does not describe the structure, materials, or acts
`corresponding to the terms that Petitioner contends are in means-plus-
`function format.” Prelim. Resp. 11. Because Patent Owner did not present
`its “sole theory” argument in the Preliminary Response, the Board could not
`have misapprehended or overlooked this argument.
`Even considering this argument, we are not persuaded. In our
`Decision, we disagreed with Petitioner’s indefiniteness arguments, but
`nonetheless found that the Petition identifies sufficient structure to support
`constructions of the means-plus-function limitations. Dec. 10–16. Rather
`than misapprehend or overlook Patent Owner’s arguments, we found that the
`Specification of the ’482 patent “discloses enough of an algorithm to allow a
`person of ordinary skill to discern the necessary structure for performing the
`claimed function of the ‘error protecting means.’” Dec. 12.
`
`4
`
`
`
`IPR2016-01203
`Patent 5,850,482
`
`
`Patent Owner contends that Petitioner’s claim chart, which maps the
`“error protection means” to Kato, results in irreconcilable inconsistencies.
`Req. Reh’g. 4–5. Patent Owner also contends that Petitioner’s claim chart
`fails to identify any structure that could be interpreted as corresponding to
`the structure of the “error protection means.” Id. at 5–7. But the Board
`could not have misapprehended or overlooked these arguments because
`Patent Owner did not present them in the Preliminary Response.
`Because Patent Owner has not persuasively identified any matter that
`was misapprehended or overlooked in the Institution Decision, we deny the
`Request.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2016-01203
`Patent 5,850,482
`
`PETITIONER:
`David L. Fehrman
`Martin M. Noonen
`MORRISON & FOERSTER, LLP
`10684-FastVDO-IPR@mofo.com
`
`PATENT OWNER:
`Wayne M. Helge
`Walter D. Davis
`DAVIDSON, BERQUIST, JACKSON & GOWDEY, LLP
`whelge@dbjg.com
`wdavis@dbjg.com
`
`Neil Rubin
`Amir Naini
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`anaini@raklaw.com
`
`6
`
`
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