`Trials@uspto.gov
`571-272-7822 Entered: January 24, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`YMAX CORPORATION,
`Petitioner,
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`v.
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`FOCAL IP, LLC,
`Patent Owner.
`____________
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`Case IPR2016-01258
`Patent 7,764,777 B2
`____________
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`
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`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2016-01258
`Patent 7,764,777 B2
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`INTRODUCTION
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`Focal IP, LLC (“Patent Owner”) filed a Request for Rehearing of the
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`Decision to Institute (Paper 13, “Dec.”) an inter partes review as to claims
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`18, 21, 23, 25, 26, 28–31, 37, 38, 41, and 45 of U.S. Patent 7,764,777 B2
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`(Ex. 1001, “the ’777 patent”). Paper 15, “Req. Reh’g.” For the reasons that
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`follow, the Request for Rehearing is denied.
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`STANDARD OF REVIEW
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an opposition, or a
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`reply. Id. When reconsidering a decision on institution, we review the
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
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`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
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`Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
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`ANALYSIS
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`Patent Owner contends that we misapprehended or overlooked Patent
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`Owner’s arguments in connection with the claim language regarding the
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`term “switching facility” recited in claim 18. Req. Reh’g 1–5. Patent
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`Owner also contends that we misapprehended or overlooked Patent Owner’s
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`arguments regarding the teachings of the invention and disclaimers disclosed
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`in the Specification as to the claim construction of the terms “switching
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`2
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`IPR2016-01258
`Patent 7,764,777 B2
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`facility,” “coupled to,” and “in communication with.” Id. at 5–14.
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`We are not persuaded by Patent Owner’s contentions that we
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`misapprehended or overlooked its arguments in connection with the claim
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`language regarding “switching facility.” Id. at 1–5. In its Preliminary
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`Response (Paper 7, “Prelim. Resp.”), apart from the reproduction of a
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`portion of claim 18, Patent Owner merely provides a single conclusory
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`statement without any explanation—“[t]he Challenged Claims explicitly
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`recite the functionality the ‘switching facility’ and ‘edge switch’ must have,
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`and expressly distinguish that a ‘switching facility’ is not an ‘edge switch.’”
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`Id. at 34. Patent Owner for the first time in its Request for Rehearing
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`presents additional arguments regarding the claim language. Req. Reh’g 4–
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`5. A request for rehearing is not an opportunity to submit new arguments.
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`See 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked
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`arguments that were not made previously in Patent Owner’s Preliminary
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`Response.
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`Furthermore, the portion of the claim language reproduced by Patent
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`Owner in the Preliminary Response misleadingly emphasizes a subset of the
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`recitation—“[t]he preamble states that ‘edge switches’ are ‘for routing calls
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`to subscribers within a local geographic area,’ and ‘switching facilities’ are
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`‘for routing calls to edge switches, or other switching facilities local or in
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`other geographic areas.’” Prelim. Resp. 34 (citing Ex. 1001, 15:14–17)
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`(emphasis added by Patent Owner). The claim language, in contrast, recites
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`that “switching facilities” are for routing calls “to edge switches” or “other
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`switching facilities local or in other geographic areas.” Ex. 1001, 15:2–4
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`(emphases added). In its Preliminary Response, Patent Owner proffers no
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`explanation as to the recitation in its entirety, and Patent Owner’s argument
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`3
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`IPR2016-01258
`Patent 7,764,777 B2
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`ignores certain words in the claim language to support its allegation that the
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`term “switching facilities” excludes “edge switches” and “edge devices.”
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`Prelim. Resp. 35.
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`Moreover, Patent Owner admits that Applicants introduced “switching
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`facility”—a term that was not used in the original Specification—into the
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`claims by Amendment to indicate that “switching facility” has broader
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`scope than “tandem switch,” but nevertheless attempts to import a negative
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`limitation from the preferred embodiment into the claims. Id. at 36;
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`Ex. 2005, 62, 82. As we indicated in our Decision on Institution, we have
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`considered all of Patent Owner’s arguments presented in the Preliminary
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`Response regarding the claim term “switching facility,” and determine that
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`the broadest reasonable interpretation of the term is “any switch in the
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`communication network,” consistent with Applicants’ remarks filed with
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`that Amendment. Dec. 7–8; Ex. 2005, 82.
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`We also are not persuaded that we misapprehended or overlooked
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`Patent Owner’s arguments regarding the teachings of the invention and
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`disclaimers disclosed in the Specification. Req. Reh’g 5–14. In its Request
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`for Rehearing, Patent Owner mainly repeats the same arguments as those in
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`the Preliminary Response. Compare Req. Reh’g 5–14 with Prelim. Resp.
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`12–42. A request for rehearing is not an opportunity to express
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`disagreement with a decision. During trial, Patent Owner has an opportunity
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`to resubmit those arguments, along with any new arguments, explanations,
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`and supporting evidence, in its Response. As noted in the Scheduling Order,
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`any arguments for patentability not raised in the Response will be deemed
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`waived. Paper 14, 3.
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`4
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`IPR2016-01258
`Patent 7,764,777 B2
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`For the foregoing reasons, Patent Owner has not demonstrated that we
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`abused our discretion in construing the terms of claims 18, 21, 23, 25, 26,
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`28–31, 37, 38, 41, and 45 for purposes of the Decision on Institution and,
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`consequently, Patent Owner’s Request for Rehearing is denied.
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`FOR PETITIONER:
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`Mark Passler
`Brice Dumais
`AKERMAN LLP
`ip@akerman.com
`brice.dumais@akerman.com
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`FOR PATENT OWNER:
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`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
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`5
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