`571-272-7822
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` Paper 27
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` Entered: January 24, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01259
`Patent 8,155,298 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2016-01259
`Patent 8,155,298 B2
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`I.
`INTRODUCTION
`Focal IP, LLC (“Patent Owner”) filed a Request for Rehearing of the
`Decision to Institute (Paper 23, “Dec.”) an inter partes review as to claim 20
`of U.S. Patent 8,155,298 B2 (Ex. 1001, “the ’298 patent”). Paper 25, “Req.
`Reh’g.” For the reasons that follow, the Request for Rehearing is denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or a
`reply. Id. When reconsidering a decision on institution, we review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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. Star Fruits S.N.C. v. U.S., 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).
`
`III. ANALYSIS
`Patent Owner contends that we misapprehended or overlooked Patent
`Owner’s arguments in connection with the claim language regarding the
`term “switching facility” recited in claim 20. Req. Reh’g at 1–5. Patent
`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
`in the Specification as to the claim construction of the terms “switching
`facility” and “controller.” Id. at 5–14.
`We are not persuaded by Patent Owner’s contentions that we
`misapprehended or overlooked its arguments in connection with the claim
`language regarding “switching facility.” Id. at 2–5. In its Preliminary
`Response (Paper 11, “Prelim. Resp.”), apart from the reproduction of a
`portion of claim 20, Patent Owner merely provides a single conclusory
`statement without any explanation—“[c]laim 20 explicitly recites the
`functionality the ‘switching facility’ and ‘edge switch’ must have, and
`expressly distinguish that a ‘switching facility’ is not an ‘edge switch.’” Id.
`at 34. Patent Owner for the first time in its Request for Rehearing presents
`additional arguments regarding the claim language. Req. Reh’g 3–5. A
`request for rehearing is not an opportunity to submit new arguments. See 37
`C.F.R. § 42.71(d). We could not have misapprehended or overlooked
`arguments that were not made previously in Patent Owner’s Preliminary
`Response.
`Furthermore, the portion of the claim language reproduced by Patent
`Owner in the Preliminary Response misleadingly emphasizes a subset of the
`recitation—“[t]he preamble states that ‘edge switches’ are ‘for routing calls
`from and to user within a local geographic area,’ and ‘switching facilities’
`are ‘for routing calls to other edge switches or other switching facilities
`local or in other geographic areas.” Prelim. Resp. 34 (citing Ex. 1001,
`14:67–15:4) (emphasis added by Patent Owner). The claim language, in
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`Patent 8,155,298 B2
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`contrast, recites that “switching facilities” are for routing calls “to other edge
`switches” or “other switching facilities local or in other geographic areas.”
`Ex. 1001, 15:2–4 (emphases added). In its Preliminary Response, Patent
`Owner proffers no explanation as to the recitation in its entirety, and Patent
`Owner’s argument ignores certain words in the claim language to support its
`allegation that the term “switching facilities” excludes “edge switches” and
`“edge devices.” Prelim. Resp. 34.
`Moreover, Patent Owner admits that Applicants introduced “switching
`facility”—a term that was not used in the original Specification—into the
`claims by Amendment to indicate that “switching facility” has broader
`scope than “tandem switch,” but nevertheless attempts to import a negative
`limitation from the preferred embodiment into the claims. Id. at 36;
`Ex. 2005, 62, 82. As we indicated in our Decision on Institution, we have
`considered all of Patent Owner’s arguments presented in the Preliminary
`Response regarding the claim term “switching facility,” and determine that
`the broadest reasonable interpretation of the term is “any switch in the
`communication network,” consistent with Applicants’ remarks filed with
`that Amendment. Dec. 8; Ex. 2005, 82.
`We also are not persuaded that we misapprehended or overlooked
`Patent Owner’s arguments regarding the teachings of the invention and
`disclaimers disclosed in the Specification. Req. Reh’g 5–14. In its Request
`for Rehearing, Patent Owner mainly repeats the same arguments as those in
`the Preliminary Response. Compare Req. Reh’g 5–14 with Prelim. Resp.
`11–40. 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
`to resubmit those arguments, along with any new arguments, explanations,
`and supporting evidence, in its Response. As noted in the Scheduling Order,
`any arguments for patentability not raised in the Response will be deemed
`waived. Paper 24, 3.
`For the foregoing reasons, Patent Owner has not demonstrated that we
`abused our discretion in construing the terms of claim 20 for purposes of the
`Decision on Institution and, consequently, Patent Owner’s Request for
`Rehearing is denied.
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`For PETITIONER:
`Wayne Stacy
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
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`PATENT OWNER:
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
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