UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`APPLE INC.,
`Petitioner
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`v.
`
`FASTVDO LLC,
`Patent Owner
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`_______________
`
`Case IPR2016-01203
`Patent 5,850,482
`
`_______________
`
`
`
`PATENT OWNER FASTVDO LLC’s REQUEST FOR REHEARING ON
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. § 42.71(d)
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`
`
`
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`FASTVDO LLC,
`Patent Owner
`
`_______________
`
`Case IPR2016-01203
`Patent 5,850,482
`
`_______________
`
`
`
`PATENT OWNER FASTVDO LLC’s REQUEST FOR REHEARING ON
`INSTITUTION DECISION PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2016-01203
`Patent No. 5,850,482
`Patent Owner FastVDO LLC respectfully requests rehearing pursuant to 37
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`C.F.R. § 42.71(d) of portions of the Board’s December 16, 2016 Institution
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`Decision (Paper 14, “Dec.”), and specifically those portions instituting inter partes
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`review of claims 7-11 and 22-26 of U.S. Patent No. 5,850,482 (“the ‘482 patent”).
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`See Dec. §§ II.B.3, II.C.3, II.D.4.
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`I. The Board Overlooked Petitioner’s Failure to Comply with 37 C.F.R. §§
`42.104(b)(3) and 42.104(b)(4)
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`As explained at pages 10-12 of Patent Owner’s Preliminary Response
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`(“POPR”), under 37 C.F.R. § 42.104(b)(3), a petition must explain “[h]ow the
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`challenged claim is to be construed.” Further, “[w]here the claim to be construed
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`contains a means-plus-function … limitation as permitted under 35 U.S.C. §
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`112(f), the construction of the claim must identify the specific portions of the
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`specification that describe the structure, material, or acts corresponding to each
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`claimed function.” 37 C.F.R. § 42.104(b)(3).
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`Petitioner contended that claims 7, 8, 11, 22-24, and 26 include means-plus-
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`function terms. Pet. at 9-16. However, Petitioner did not describe the structure,
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`materials, or acts corresponding to each term that Petitioner contends are in means-
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`plus-function format. Instead, Petitioner took the position that these claims (claims
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`7 and 22, and therefore all claims that depend therefrom) are indefinite. See Pet. at
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`9-16. In particular, Petitioner’s sole theory regarding the claimed “error protection
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`1
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`IPR2016-01203
`Patent No. 5,850,482
`means” as recited in claims 7 and 22 was indefiniteness. Pet. at 9-10. In contrast,
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`for other “means” terms of claims 7, 22, and 24, Petitioner argued indefiniteness
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`but also provided alternative theories. For example, Petitioner argued that:
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`Claims 7, 22, and 24 recite “first generating means,” “second
`generating means,” “code word generating means,” and “means for
`including.” As discussed above, Petitioner believes that these
`elements are indefinite in view of the lack of corresponding structure
`in the specification. Regardless, such elements are disclosed by or
`obvious in view of Kato if they are construed as covering any
`structure that performs the claimed functions, as argued by Patent
`Owner in the litigation. (Lippman ¶¶81.)
`Pet. at 48 (emphasis added). But Petitioner offered no alternative theory for
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`the “error protection means” of claims 7 and 22. See, e.g., Pet. at 9-10; 48. Thus,
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`the Petition’s position on claim construction was deficient as to these claims (and
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`all the claims that depend therefrom), and institution of these claims should have
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`been denied.
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`Nevertheless, on institution, the Board overlooked Petitioner’s failure to
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`comply with 37 C.F.R. § 42.104(b)(3). The Board acknowledged Petitioner’s
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`argument that claims 7 and 22 are indefinite for failure to disclose “any structure
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`for unequal ‘error protection means.’” Dec. at 11-12. But rather than construing
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`the term, the Board should have simply declined to institute any challenge of these
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`claims, particularly where the Petitioner failed to offer a proper theory based on a
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`2
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`IPR2016-01203
`Patent No. 5,850,482
`means-plus-function claim construction as required under 37 C.F.R. §
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`42.104(b)(3). It is the Petitioner’s burden to establish unpatentability at institution
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`stage (see 37 C.F.R. § 42.108(c)), and the Board should not have overlooked that
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`Petitioner cannot meet this burden where its sole theory for a term is
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`indefiniteness, which cannot form the basis of IPR (see 35 U.S.C. § 311(b)). For
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`this reason, Patent Owner respectfully requests that the Board reconsider its
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`decision to institute as to these claims, as argued in Patent Owner’s Preliminary
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`Response. POPR at 10-12.
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`Moreover, Petitioner’s failure under 37 C.F.R. § 42.104(b)(3) as to at least
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`the “error protection means” recited in claims 7 and 22 (and the claims that depend
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`therefrom) means that the Petition was necessarily deficient as to these same
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`claims under 37 C.F.R. § 42.104(b)(4). This rule requires a petition to also include
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`the petitioner’s statement on “[h]ow the construed claim is unpatentable under the
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`statutory grounds identified in paragraph (b)(2) of this section.” (emphasis added).
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`Because Petitioner did not present a construction for every alleged means-plus-
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`function terms in claims 7 and 22, Petitioner failed to provide a statement on how
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`the “construed” claims are allegedly unpatentable. See POPR at 12 (citing
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`Gracenote, Inc. v. Iceberg Industries LLC, Case No. IPR2013-00551, slip op. at 38
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`(PTAB Feb. 28, 2014) (paper 6) (denying institution as to means-plus-function
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`claims where petitioner failed to identify constructions of the means-plus-function
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`3
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`IPR2016-01203
`Patent No. 5,850,482
`elements required by 37 C.F.R. § 42.104(b)(3))). Despite Petitioner’s failure to
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`comply with 37 C.F.R. § 42.104(b)(3)-(4), the Board construed “error protection
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`means” and applied its own construction to the applied references. Dec. at 12, 36.
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`But even then, the Board overlooked the deficiencies in the Petition on this term.
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`II. The Board Overlooked Petitioner’s Failure to Provide Analysis of
`“Error Correction Means” Sufficient to Justify Institution of Claims 7
`and 22 on Either Ground
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`The Board’s oversight of Petitioner’s failure to present its proposed
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`construction for “error protection means” resulted in irreconcilable inconsistencies
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`in the institution of the Petition’s first ground as to claims 7, 10, 11, 22, 25, and 26.
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`For example, Petitioner’s claim chart directed to claim 7 pointed to Kato’s ECC
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`encoder 603 as the alleged “error protection means.” Pet. at 30. But when
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`evaluating dependent claim 10, which recites (in relevant part) “wherein said error
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`protection means [of claim 7] comprises a storage medium,” Petitioner did not rely
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`on the ECC encoder 603 for this element. Rather, Petitioner looked to the data
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`store region of a different component, the encoding circuit 602. Pet. at 32.
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`Petitioner next expanded the scope of the alleged structure even further by
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`identifying “a transmitter comprising an encoding circuit, an ECC encoder, a
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`modulation circuit, and an output terminal coupled to a transmission line” when
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`evaluating the elements of dependent claim 11’s “error protection means.” Pet. at
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`33.
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`4
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`IPR2016-01203
`Patent No. 5,850,482
`These three varying positions on the proper scope of the claimed “error
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`protection means” stem from Petitioner’s failure to identify its proposed
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`construction for “error protection means.” These errors are also propagated to the
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`Petition’s evaluation of claims 22, 25, and 26. Pet. at 39-41. The Board
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`overlooked these inconsistencies in deciding to institute as to these claims. Dec. at
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`28-31; 37. The Board also overlooked that there is no analysis or evidence in the
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`Petition to establish that any of Kato’s elements disclose the “data encoder 16 and
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`unequal error protection means 29 and equivalents thereof” of the ‘482 patent, as
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`the Board construed this term. Dec. at 11-12.1
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`Petitioner’s claim charts in the second ground are equally deficient in this
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`regard. In the chart mapping element 7(d) (the “error protection means” term) to
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`the art of Petitioner’s second ground, Petitioner only states “See claim 1(d).” Pet.
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`at 59. Similarly, for element 22(d) (the “error protection means” term), Petitioner
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`refers back to element 12(d), which in turn refers back to the deficient analysis of
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`element 1(d). Pet. at 63, 61. Thus, Petitioner’s theory on why the art of the second
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`ground allegedly discloses the claimed “error protection means” is contained
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`wholly in its analysis of element 1(d). Such an analysis cannot stand, as element
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`1(d) is a step of a method claim and Petitioner’s analysis does not provide any
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`1 The phrase “error protection means” does not appear at all in Ex. 1002, the
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`Declaration of Dr. Lippman. He provides no opinion on this term.
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`5
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`IPR2016-01203
`Patent No. 5,850,482
`analysis of any structure of an apparatus claim element. Indeed, Petitioner’s
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`analysis of element 1(d) states in full, “Fazel discloses provision of unequal error
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`protection. (Abstract; Introduction; Section IV), as does Fazel ’622 (FIGS. 2-5;
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`6:8-28, 6:49-8:10).” Pet. at 57. This statement fails to identify any structure that
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`could be interpreted as the corresponding structure of the claimed “error protection
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`means.” In no instance does Petitioner identify any structure in the art of the
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`second ground that allegedly discloses or suggests the corresponding structure of
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`the “error protection means” of claims 7 and 22. See also n. 1, supra.
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`Further, the Board overlooked Petitioner’s failure to identify any structure
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`for claim 7 when accepting Petitioner’s reference back to claim 1. Dec. at 42
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`(reasoning that “Petitioner contends the limitations of claims 7–10, 28, and 29 are
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`taught by the combination of Fiala, Fazel, and Fazel ’622 as explained in the
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`analysis of claims 1–6. Pet. 59–60, 65. For purposes of this decision, we determine
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`that Petitioner sufficiently establishes a likelihood that the combination of Fiala,
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`Fazel, and Fazel ’622 teaches the limitations of claims 7–11, 28, and 29.”). The
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`Board also overlooked Petitioner’s failure to identify any structure for claim 22
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`when accepting Petitioner’s reference back to earlier claims.2
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`2 The Board states that “Petitioner contends the limitations of claims 22-26 are
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`taught by the combination [of references] as explained in the analysis of claims 11-
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`14 and 16. Dec. at 43. More precisely, Petitioner’s challenge of claim 22 refers
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`6
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`IPR2016-01203
`Patent No. 5,850,482
`III. Conclusion
`In essence, Petitioner refused to comply with 37 C.F.R. § 42.104(b)(3) as to
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`the alleged means-plus-function elements including “error protection means,” and
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`provided inconsistent and incomplete challenges under 37 C.F.R. § 42.104(b)(4) of
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`the “error protection means” as it appears in claims 7, 10, 11, 22, 25, and 26. Even
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`Dr. Lippman offered no testimony on this term. These failures under 37 C.F.R. §§
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`42.104(b)(3)-(4) were overlooked by the Board when deciding to institute as to
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`claims 7, 22, and the claims depending therefrom, as to both grounds of challenge.
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`Patent Owner therefore respectfully requests that the Board reconsider its
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`decision to institute as to claims 7, 22, and all claims that depend therefrom, and
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`deny institution as to these claims.
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`back to claim 12 only, which includes no analysis and simply refers back to claim
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`1. Pet. at 61, 63. As noted above, Petitioner’s analysis of claim 1 fails to identify
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`any structure of an apparatus claim element.
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`7
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`Respectfully submitted,
`
`By: /s/ Wayne M. Helge
`
`Wayne M. Helge (Reg. No. 56,905)
`Walter D. Davis (Reg. No. 45,137)
`DAVIDSON BERQUIST JACKSON & GOWDEY,
`LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Email: wdavis@dbjg.com
`
`Counsel for Patent Owner
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`
`
`
`
`IPR2016-01203
`Patent No. 5,850,482
`
`
` Dated: December 30, 2016
`
`
`
`8
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`IPR2016-01203
`Patent No. 5,850,482
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on December 30, 2016, a true and correct copy of the
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`foregoing Patent Owner’s Request for Rehearing is being served electronically to
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`the Petitioner upon consent at the correspondence email addresses of record as
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`follows:
`
`David L. Fehrman
`Reg. No. 28,600
`Morrison & Foerster, LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Telephone: (213) 892-5601
`Facsimile: (213) 892-5454
`E-mail: dfehrman@mofo.com
`10694-FastVDO-IPR@mofo.com
`
`Martin M. Noonen
`Reg. No. 44,264
`Morrison & Foerster, LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017-3543
`Telephone: (213) 892-5601
`Facsimile: (213) 892-5454
`E-mail: mnoonen@mofo.com
`
`
`JACKSON &
`
`By: /s/ Wayne M. Helge
` USPTO Reg. No. 56,905
` DAVIDSON
`BERQUIST
`GOWDEY, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`
`
`
`
`
` Counsel for Patent Owner
`
`
`
`9
`
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