Case IPR2016-01262
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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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`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC.
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`Petitioner
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
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`________________
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`Case IPR2016-01262
`Patent Number: 7,764,777
`________________
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`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`Patent 7,764,777
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`Paper No. 66
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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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`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC.
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`Petitioner
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
`
`________________
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`Case IPR2016-01262
`Patent Number: 7,764,777
`________________
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`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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` I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`TABLE OF CONTENTS
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`LEGAL STANDARD ......................................................................... 1
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`THERE IS NO RATIONALE PROVIDED BY PETITIONERS OR
`THE BOARD THAT WARRANT ADDITIONAL BRIEFING BY
`PETITIONERS ................................................................................... 2
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`THERE IS NO INTERVENING CHANGE OF LAW REGARDING
`PETITIONERS THAT WARRANT ADDITIONAL BRIEFING ....... 4
`
`THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`ISSUES THAT PETITIONERS SHOULD HAVE ADDRESSED IN
`THE ORIGINAL BRIEFING BASED ON THE PRECEDENTIAL
`HOLDING IN MASTERIMAGE........................................................ 7
`
`THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`FACTS AND RULINGS IN THE RECORD REGARDING THE
`EXPUNGEMENT OF CLAIM CHARTS OF BHN AND YMAX AND
`THEIR REPRESENTATIONS THAT THEY ALREADY BRIEFED
`THE ORIGINAL CLAIM LIMITATIONS TO THE PRIOR ART IN
`THEIR OPPOSITIONS TO THE MOTIONS TO AMEND ................ 9
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`CONCLUSION ..................................................................................11
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`Cases:
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`TABLE OF AUTHORITIES
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`Aqua Prods., Inc. v. Matal,
`No. 2015-1177 (Fed. Cir. Oct. 4, 2017) ......................................................passim
`
`
`MasterImage 3D, Inc. v. RealD Inc.,
`Case No. IPR2015-00040, Paper No. 42 (P.T.A.B. July 15, 2015) ............ 7-9, 11
`
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005) .......................................................................... 1
`
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`TD Ameritrade v. Trading Techs. Int’l, Inc.,
`Case No. CBM2014-00137, Paper No. 34 (P.T.A.B. Feb. 2, 2015) .................... 2
`
`
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`Rules, Statutes and Regulations:
`
`37 C.F.R. § 42.71 (c) ............................................................................................. 1
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`37 C.F.R. § 42.71(d) .............................................................................................. 1
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`35 U.S.C. § 316(d) ................................................................................................. 5
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`7,764,777
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`of U.S. Patent No.
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`UPDATED LIST OF EXHIBITS
`
`Declaration of Regis J. “Bud” Bates filed with Preliminary
`Response
`Ray Horak, Communications Systems & Networks, (2nd ed. 2000)
`Ray Horak, Webster’s New World Telecom Dictionary (2008)
`Ray Horak, Telecommunications and Data Communications
`(2007)
`Prosecution History
`(“’777ProsHist”)
`Harry Newton, Newton’s Telecom Dictionary, (23rd ed. 2007)
`Declaration of John P. Murphy in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Declaration of Hanna F. Madbak in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Corrected Declaration of Hanna F. Madbak in Support of
`Unopposed Motion for Pro Hac Vice Admission
`U.S. Patent No. 6,574,328
`Opening Claim Construction Expert Declaration of Dr. Eric
`Burger filed by certain Defendants in the underlying district court
`litigation Case No. 3:15-cv-00742-TJC-MCR, Dkt No. 89-2, filed
`08/12/16.
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for
`IPR2016-01259, -01261, -01262, and 01263
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for
`IPR2016-01259, -01261, -01262, and 01263 (“La Porta Dep.”)
`Deposition Transcript of Mr. Willis, Mar. 1, 2017, for IPR2016-
`01254 and -01257. (“Willis Dep.”)
`Declaration of Regis J. “Bud” Bates in Support of Response
`(“BatesDec”)
`Petition filed in IPR2016-01261 (“-01261 Pet.”)
`Petition filed in IPR2016-01254 (“-01254 Pet.”)
`Petition filed in IPR2016-01260 (“-01260 Pet.”)
`Declaration of Dr. La Porta in support of the Petition, Ex. 1002 of
`IPR2016-01262 (“La Porta Dec. of IPR2016-01262”)
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`iv
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`2001
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`2002
`2003
`2004
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`2005
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`2006
`2007
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`2008
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`2009
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`2010
`2011
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`2019
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`2020
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`2021
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`2022
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`2023
`2024
`2025
`2026
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`2027
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`2028
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`2029
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`2030
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`2040
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`2041
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`2042
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`2043
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`2044
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`2045
`2046
`2047
`2048
`2049
`2050
`2051
`2052
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`2053
`2054
`2055
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`2056
`2057
`2058
`2059
`2060
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`
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`Declaration of Mr. Willis in support of the Petition, Ex. 1002 of
`IPR2016-01254 (“Willis Dec. of IPR2016-01254”)
`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01258 (“Lavian Dec. of IPR2016-01258”)
`Deposition Transcript of Dr. Lavian, March 29, 2017, for
`IPR2016-01256, -01258, and -01260 (“Lavian Dep.”)
`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01256 (“Lavian Dec. of IPR2016-01256”)
`Declaration of Regis J. “Bud” Bates in Support of Motion to
`Amend (“BatesDec”)
`Listing of Section 112 Written Description Support for the
`Proposed Substitute Claims
`Application No. 11/948,965, filed on November 20, 2007
`(annotated with line numbers)
`Application No. 10/426,279, filed on April 30, 2003 (annotated
`with line numbers)
`Application No. 09/565,565, filed on May 4, 2000 (annotated with
`line numbers)
`U.S. Pat. No. 4,646,296 (filed on July 9, 1984)
`U.S. Patent No. 6,381,323 to Schwab, et al. (“Schwab”)
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”)
`U.S. Patent No. 6,798,767 to Alexander et al. (“Alexander”)
`PCT Application No. WO 99/14924
`to Shtivelman
`(“Shtivelman”)
`U.S. Patent No. 5,809,128 to McMullin (“McMullin”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`An Overview of Signaling System No. 7, Abdi R. Modarressi, and
`Ronald A. Skoog, April, 1992
`U.S. Patent No. 4,646,296 to Bartholet et al. (“Bartholet”)
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`U.S. Patent No. 6,744,759 to Sidhu et al. (“Sidhu”)
`U.S. Patent No. 6,041,325 to Shah et al. (“Shah”)
`U.S. Patent No. 5,802,160 to Kugell et al. (“Kugell”)
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`2062
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`2063
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`2064
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`2065
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`2066
`2070
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`2071
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`2072
`2073
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`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
`Redline Comparison of the Proposed Substitute Claims and the
`Original Claims and Clean Versions of the Proposed Substitute
`Claims
`“Cheat Sheet” listing the various IPRs by docket number, along
`with the identity of the petitioner, claims at issue, and art at issue
`Declaration of Thomas La Porta in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,457,113, June 23, 2016,
`submitted in support of IPR2016-01261
`Declaration of Dr. Tal Lavian in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,764,777, June 23, 2016,
`submitted in support of IPR2016-01258
`Application No. 12/821,119, filed on June 22, 2010
`Declaration of Regis J. “Bud” Bates in Support of Reply in
`Support of Motion to Amend (“ReplyDec”)
`Declaration of Thomas C. Cecil in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Patent Owner’s Demonstrative Exhibits for Oral Hearing
`Transcript of Conference Call (Oct. 12, 2017)
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`Pursuant to 37 C.F.R. § 42.71 (d), Patent Owner FOCAL IP, LLC requests a
`rehearing of the Board’s Order Conduct of the Proceeding entered on October 19,
`2017, (“Order”) regarding the decision in Aqua Prods., Inc. v. Matal, No. 2015-1177
`(Fed. Cir. Oct. 4, 2017) (“Aqua Products”) with respect to pending Motions to
`Amend in IPR2016-01257 where Cisco is Petitioner, IPR2016-01258 and -01260
`where YMax is Petitioner, and IPR2016-01261 and -01262 where Bright House
`Networks, LLC, WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch
`Communications (“BHN”) is Petitioner. See the Order (filed October 19, 2017) at
`Paper No. 57 in -01257; Paper No. 54 in -01258; Paper No. 54 in -01260; Paper No.
`65 in -01261; and Paper No. 65 in -01262.
`To ease the burden of review by the Board, Patent Owner is filing this exact
`same rehearing request in all five of the aforementioned proceedings.
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`I.
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` LEGAL STANDARD
`A request for rehearing is appropriate when the requesting party believes “the
`Board misapprehended or overlooked” a matter that was previously addressed in the
`record. See 37 C.F.R. § 42.71(d). The request “must specifically identify all matters
`the party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition, or a reply.” Id. In
`reviewing such a request, the “panel will review the decision for an abuse of
`discretion.” 37 C.F.R. § 42.71(c). An abuse of discretion occurs where the decision
`is based on an erroneous interpretation of the law, or on erroneous facts. See Star
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`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005). Abuse also
`occurs “if a factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors.” TD Ameritrade
`v. Trading Techs. Int’l, Inc., CBM2014-00137, Paper No. 34 at 3 (Feb. 2, 2015).
`II. THERE IS NO RATIONALE PROVIDED BY PETITIONERS OR
`THE BOARD THAT WARRANT ADDITIONAL BRIEFING BY
`PETITIONERS
`Petitioners did not present any arguments, other than a conclusory statement
`that Petitioners believe that they now have the burden of persuasion on
`unpatentability based on Aqua Products, in a desperate attempt to get a do-over to
`their original briefing, which is wholly deficient. See generally the Transcript of
`Conference Call (Oct. 12, 2017) filed as Ex. 2073 in -01257; Ex. 2074 in -01258;
`Ex. 2074 in -01260; Ex. 2073 in -01261; and Ex. 2073 in -01262.
` As explained in the Board’s Order at pages 3-4, the holding in Aqua Products
`is not directed to any change in the burden of Petitioners, but, rather, the holding is
`that the burden of persuasion cannot be placed on Patent Owner regarding the
`patentability of the proposed substitute claims. In the Order, the Board
`acknowledged that “Petitioners have not articulated a sufficient reason why a ‘do-
`over’ with an opening brief similar in length and content to a petition … is warranted
`in each of these proceedings.” Indeed, Petitioners failed to articulate a sufficient
`reason why any supplemental briefing is warranted based on the record or a proper
`reading of the decision, and the Board failed to provide any sufficient reason why
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`any supplemental briefing is warranted. See generally Transcript of Conference Call
`(Oct. 12, 2017) and the Order.
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`For example, neither the Board’s Order nor the majority holdings in Aqua
`Products provide any rule or holding that the burden of persuasion regarding
`unpatentability of the proposed substitute claims is on Petitioners. Even if the Board
`were to make an explicit ruling that the burden of persuasion regarding
`unpatentability of the proposed substitute claims is on Petitioners, the record of this
`case still does not warrant any additional briefing regarding unpatentability as
`explained by the Board’s Order and further explained herein.
`
`In addition to the factors articulated by the Board in its Order, Patent Owner
`highlights other relevant factors herein that the Board misapprehended or overlooked
`where the only reasonable judgment after weighing the relevant factors in the record
`is to deny any additional briefing. To allow Petitioners supplemental briefing to
`address unpatentability of the proposed substitute claims based on the relevant
`factors in the record of these proceedings is unreasonable.
`
`For example, Patent Owner successfully moved to strike the claim charts of
`BHN and YMax that it now wants to include in the supplemental briefing. Further,
`Patent Owner argued on the papers and the oral hearings that Petitioners wholly
`failed to adequately argue the unpatentability of the proposed substitute claims
`against the prior art. Now, Petitioners are attempting to use a holding by the Federal
`Circuit that reiterated that the law always was and continues to be the same – that
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`the burden of patentability can never be on Patent Owner – as a justification to
`correct the deficiencies in Petitioners’ arguments.
`III. THERE IS NO INTERVENING CHANGE OF LAW REGARDING
`PETITIONERS THAT WARRANT ADDITIONAL BRIEFING
`As Patent Owner explained on the call, there is no intervening change in the
`law on this issue, which the majority of the Federal Circuit judges made explicitly
`clear in their opinions. Transcript of Conference Call (Oct. 12, 2017) at pp. 16-17.
`Petitioners have not pointed to any holding in Aqua Products to refute this statement
`that the Board could possibly rely on to justify additional briefing for Petitioner. See
`generally the Transcript of Conference Call (Oct. 12, 2017). Further, the Board’s
`Order did not hold there was any intervening change in the law that would warrant
`additional briefing by Petitioners that would allow Petitioners to shore up their
`deficient arguments regarding the patentability of the proposed substitute claims.
`
` The primary holding joined by Judges O’Malley, Newman, Lourie, Moore,
`Wallach, Dyk, and Reyna held:
`
` …
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` The only legal conclusions that support and define the judgment of
`the court are: (1) the PTO has not adopted a rule placing the burden of
`persuasion with respect to the patentability of amended claims on the
`patent owner that is entitled to deference; and (2) in the absence of
`anything that might be entitled deference, the PTO may not place that
`burden on the patentee. All the rest of our cogitations, whatever label
`we have placed on them, are just that--cogitations. Even our
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`discussions on whether the statute is ambiguous are mere academic
`exercises.
`The final written decision of the Board in this case is vacated insofar as
`it denied the patent owner's motion to amend. The matter is remanded
`for the Board to issue a final decision under § 318(a) assessing the
`patentability of the proposed substitute claims without placing the
`burden of persuasion on the patent owner. The Board must follow this
`same practice in all pending IPRs unless and until the Director engages
`in notice and comment rulemaking. At that point, the court will be
`tasked with determining whether any practice so adopted is valid.
`
`Aqua Products, 2017 U.S. App. LEXIS 19293, at *86 (Fed. Cir. Oct. 4, 2017).
`
`Indeed, Judges O’Malley, Newman, Lourie, Moore, and Wallach explicitly
`found that the law always was and continues to be that “Congress explicitly placed
`the burden of persuasion to prove propositions of unpatentability on the petitioner
`for all claims, including amended claims” referring to the literal statutory text of 35
`U.S.C. § 316(d). Id. at *23. Further, Judges Judges Dyk and Reyna also found that
`the law always was and continues to be that “[u]nder the statute [35 U.S.C. § 316(d)],
`therefore, the default rule is that the patent owner does not bear the burden of
`persuasion on the patentability of its proposed amended claims.” Id. at **114-115.
`Thus, to the extent the Board issues a holding that the burden of unpatentability of
`amended claims is placed on petitioner (or that Patent Owner does not bear the
`burden of patentability), then this has always been the law where there was no
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`intervening change in the law. Transcript of Conference Call (Oct. 12, 2017) at pp.
`16-17.
`
`Further, Petitioners have already represented to the Board that they did indeed
`already anticipate the outcome in Aqua Products at the time they filed their original
`briefing, which is yet another reason why Petitioners should be forbidden from
`submitting supplemental briefing where they already had the full opportunity to
`address this in their original briefing. See Board’s Order to Expunge (July 7, 2017),
`at pp. 2-3, filed as Paper No. 34 in -01257; Paper No. 37 in -01258; Paper No. 37 in
`-01260; Paper No. 40 in -01261; and Paper No. 40 in -01262; See also Transcript of
`Conference Call (Oct. 12, 2017) at pp. 17-19, 33-37.
`
` Petitioners made this strategic decision not to seek clarification or additional
`pages at the time it filed its original briefing. See Transcript of Conference Call
`(Oct. 12, 2017) at pp. 17-19, 33-37. Petitioners should not be rewarded for their
`unreasonable choice in strategy.
`
`The Board’s Order cites to Part III of Judge Reyna’s opinion regarding a
`patent owner’s obligation to satisfy certain statutory criteria. Order at 4. Patent
`Owner has satisfied this statutory criteria in all proceedings, where BHN and Cisco
`did not even contest Patent Owner’s showing in this regard in the original briefing.
`Neither the Petitioners nor the Board’s Order cite to any portion of Aqua Products
`that indicate a change in the intervening law that would justify Petitioners to file
`supplemental briefing to correct the deficiencies of its patentability arguments that
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`it could have and should have already raised in its original briefing. Transcript of
`Conference Call (Oct. 12, 2017) at pp. 16-19, 33-37.
`IV. THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`ISSUES THAT PETITIONERS SHOULD HAVE ADDRESSED IN
`THE ORIGINAL BRIEFING BASED ON THE PRECEDENTIAL
`HOLDING IN MASTERIMAGE
`In the Order, the Board ruled that it is “persuaded by Patent Owner that
`allowing a ‘do-over’ that encompasses issues that [Petitioners] should have been
`addressed as part of the original briefing is unfair to Patent Owner.” Order at 5.
`In addition to there being no intervening change in the law, the Board
`misapprehended or overlooked that Petitioners should have applied prior art against
`the proposed substitute claims in their original briefing as laid out in the precedential
`MasterImage holding, which held:
`
`With respect to a motion to amend, once Patent Owner has set forth a
`prima facie case of patentability of narrower substitute claims over the
`prior art of arts, the burden of production shifts to Petitioner. In its
`opposition, Petitioner may explain why Patent Owner did not make out
`a prima facie case of patentability, or attempt to rebut that prima facie
`case, by addressing Patent Owner’s evidence and arguments and/or by
`identifying and applying additional prior art against proposed
`substitute claims.
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`MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 3 (PTAB July
`15, 2015) (Paper 42) (precedential) (emphasis added); see also Transcript of
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`Conference Call (Oct. 12, 2017) at pp. 16-19, 33-37. Not only is the MasterImage
`holding precedential, but the Board’s order giving guidance to the parties in these
`proceedings regarding motions to amend also instructed the parties to review
`MasterImage for guidance on motions to amend. See Board’s order giving guidance
`regarding motions to amend, slip op. at 5, 7 (PTAB March 21, 2017) filed as Paper
`No. 24 in -01257; Paper No. 23 in -01258; Paper No. 23 in -01260; Paper No. 29 in
`-01261; and Paper No. 29 in -01262.
`On the call with the Board on October 12, 2017, Petitioners’ only rebuttal to
`this argument was incorrect where they argued that the MasterImage holding did not
`apply to them when they did their original briefing. See Transcript of Conference
`Call (Oct. 12, 2017) at p. 37. A precedential order, alone, is enough that the order
`applied to Petitioners regarding applying the prior art to the proposed substitute
`claims, and, in addition to this, the Board’s order giving guidance regarding motions
`to amend cited to MasterImage for guidance in this regard.
`
`Accordingly, Petitioners’ original briefing should have already applied the
`prior art against the proposed substitute claims. See Transcript of Conference Call
`(Oct. 12, 2017) at pp. 16-19, 33-37. Thus, Petitioners were on notice prior to Aqua
`Products that they should have addressed the unamended claim elements of the
`proposed substitute claims both via MasterImage and the existing law (which Aqua
`Products did not change) as it related to Petitioner. Id. Further, as the Board’s Order
`also recognizes, Petitioners have already represented to the Board that Petitioners
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`did anticipate the outcome of Aqua Products at the time of its original briefing,
`which is discussed in more detail below.
`Thus, Petitioners should not now be able to correct the deficiencies of their
`original briefing of applying the prior art against the proposed substitute claims when
`(i) they already failed to apply the prior art against the proposed substitute claims,
`as required by MasterImage; and (ii) they anticipated the outcome of Aqua Products
`when they filed their original briefing on this issue. See Transcript of Conference
`Call (Oct. 12, 2017) at pp. 16-19, 33-37. If the Board allows the Petitioners to correct
`these deficiencies in their original briefing, then Patent Owner’s due process rights
`are violated by Patent Owner being in a worse position subsequent Aqua Products
`than Patent Owner’s position was prior to Aqua Products even though Aqua
`Products was supposed to make it easier for a Patent Owner to succeed on motions
`to amend.
`
`V. THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`FACTS AND RULINGS IN THE RECORD REGARDING THE
`EXPUNGEMENT OF CLAIM CHARTS OF BHN AND YMAX AND
`THEIR REPRESENTATIONS THAT THEY ALREADY BRIEFED
`THE ORIGINAL CLAIM LIMITATIONS TO THE PRIOR ART IN
`THEIR OPPOSITIONS TO THE MOTIONS TO AMEND
`The Board has already struck claim charts exceeding 40 pages in length filed
`by BHN in IPR2016-01261 and -01262 and 63 pages in length filed by YMAX in
`IPR2016-01258 and -01260 for grossly circumventing the page limit, providing an
`element-by-element analysis that Petitioners represented to the Board were already
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`included in their original briefing, and for being an improper way to preserve
`arguments in anticipation of the Aqua Products decision. See Board’s Order to
`Expunge (July 7, 2017), at pp. 2-3.
`The Board has already made factual findings that Petitioners BHN and Cisco
`have already represented to the Board that the charts are duplicative of arguments
`made in the original briefing and that the charts were provided to preserve arguments
`in the event that the state of the law changes in Aqua Products. See Board’s Order
`to Expunge (July 7, 2017), at pp. 2-3; see also Transcript of Conference Call (Oct.
`12, 2017) at pp. 16-19, 33-37. Thus, there is no reason for Petitioners to need
`supplemental briefing to apply the prior art against the original claim limitations that
`Petitioners have already represented to the Board were included in their original
`briefing. The Board struck the claim charts for these additional reasons as being
`duplicative to the element-by-element analysis Petitioners represented was in their
`original briefing. See Board’s Order to Expunge (July 7, 2017), at pp. 2-3.
`Further, the Board ruled that the submission of these additional claim charts
`that exceed the scope of arguments presented in the original briefing is not proper to
`preserve the analysis in anticipation of the Aqua Products decision. See Board’s
`Order to Expunge (July 7, 2017), at pp. 2-3.
`Thus, the Board misapprehended or overlooked these rulings in the record
`where the Board is now issuing an Order that is essentially completely reversing and
`ignoring the factual findings and rulings it previously made by allowing Petitioners
`to submit supplement briefing of original claim elements that Petitioners have
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`already represented to the Board are in their original briefing in addition to allowing
`Petitioners to submit supplemental briefing on these issues where the Board has
`already ruled that Petitioners did not properly preserve these additional arguments
`in anticipation of the Aqua Products decision.
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`VI. CONCLUSION
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`Based on the relevant factors articulated in the Board’s Order and herein, the
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`Order should be modified to reflect the only reasonable outcome, which is to deny
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`any supplemental briefing by Petitioners to retread and do-over its arguments
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`regarding applying the prior art against the proposed substitute claims, which were
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`wholly deficient prior to decision in Aqua Products.
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`There is no justifiable rationale for allowing Petitioners to fix their arguments
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`regarding the unpatentability of the proposed substitute claims in view of the prior
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`art. Indeed, neither Petitioners nor the Board provide any justifiable reason. The
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`precedential decision regarding motions to amend, MasterImage, already required
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`Petitioners to apply the prior art against the proposed substitute claims. Further,
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`Petitioners have already represented to the Board that they did an element-by-
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`element analysis of the proposed substitute claims in its original briefing where the
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`claim charts were merely duplicative to the analysis in its original briefing.
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`Additionally, Petitioners represented to the Board that Petitioners anticipated the
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`outcome of Aqua Products when it filed its original briefing. However, Petitioners
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`grossly circumvented the page limits of their original briefing in the submission of
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`its claim charts without asking for permission to do so, where the Board properly
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`struck those claim charts for circumventing the page limits in addition to holding
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`that Petitioners’ approach was not proper to preserve arguments in the event Aqua
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`Products ruled the way that Petitioners had anticipated.
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`Dated: October 25, 2017
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`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
`
`CERTIFICATE OF SERVICE
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`I hereby certify that on this 25th day of October 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Request for Rehearing has been served in its entirety via email
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`on the following:
`
`Wayne Stacy
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, TX 75201
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`Phone: (214) 953-6678
`Facsimile: (214) 661-4678
`wayne.stacy@bakerbotts.com
`
`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
`
`May Eaton
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7520
`Facsimile: (650) 739-7620
`may.eaton@bakerbotts.com
`
`Patrick McPherson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
`PDMcPherson@duanemorris.com
`
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-7851
`Fax: 202-776-7801
`CJTyson@duanemorris.com
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`Kyle Lynn Elliott
`Spencer Fane LLP
`1000 Walnut, Suite 1400
`Kansas City, MO 64106
`Tel: 816-292-8150
`Fax: 816-474-3216
`sfbbaction@spencerfane.com
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`Dated: October 25, 2017
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`Paper No. 66
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
`
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`14
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