Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 59
`Entered: August 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Petitioner.
`____________
`
`Case IPR2016-01737
`Patent 8,880,862 B2
`____________
`
`
`Before DEBRA K. STEPHENS, GEORGIANNA W. BRADEN, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper No. 59
`Entered: August 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Petitioner.
`____________
`
`Case IPR2016-01737
`Patent 8,880,862 B2
`____________
`
`
`Before DEBRA K. STEPHENS, GEORGIANNA W. BRADEN, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2016-01737
`Patent 8,880,862 B2
`
`
`
`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) timely filed a Request for Rehearing under
`37 C.F.R. § 42.71(d) on April 12, 2018. Paper 58 (“Req. Reh’g”).
`Petitioner’s Request for Rehearing seeks reconsideration of our Final
`Written Decision (Paper 57, “Decision”) entered on March 13, 2018.
`Petitioner disagrees with the Decision due to alleged errors in claim
`construction that resulted in the Board’s misapprehension of the asserted
`prior art reference Settsu as reading on Patent Owner’s proposed substitute
`claims, specifically the limitation of “preloading during the same boot
`sequence.” Reh’g Req. 1–4 (emphasis omitted).
`For the reasons provided below, we deny Petitioner’s request with
`respect to making any change thereto.
`
`II. ANALYSIS
`A request for rehearing “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.”
`37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of
`showing the decision should be modified. Id.
`Petitioner requests rehearing of our construction of the limitation
`“preloading . . . .during the same boot sequence” as incorrect, arguing we
`erred by overlooking (1) the plain language of the substitute claims by too
`narrowly construing “preloading” as occurring before receipt of any
`command (Req. Reh’g 5) (emphasis omitted), (2) Petitioner’s argument
`regarding the timing requirements for “preloading” (id.) (emphasis omitted),
`(3) Petitioner’s declarant’s testimony one of ordinary skill would have
`understood that “preloading in the substitute claims is broad enough to
`
`2
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`IPR2016-01737
`Patent 8,880,862 B2
`
`
`include transfer of data from disk into memory based on a command to load
`that is received by the controller over a computer bus.” Id. at 6 (citing
`Ex. 1043 ¶ 71) (emphasis omitted).
`
`Petitioner contends that construing “preloading” as occurring “during
`the same boot sequence” is “defied by the very embodiment cited by Patent
`Owner when offering that language in its Motion to Amend.” Id. at 7 (citing
`Paper 19 (citing Ex. 2017, 41:7–9, 42:17–20, 43:13–14, Fig. 7B).
`According to Petitioner, the cited embodiment fails to suggest that
`preloading is limited temporally with respect to when a command is received
`over a computer bus. Id. at 8. Petitioner argues that the specification
`explicitly contemplates both before (“prior to commencement of the boot
`process”) and after (“continued after the boot process begins”). Id. (citing
`Ex. 1001, 21:48–52; Paper 37, 8).
`
`Petitioner further contends that Patent Owner’s expert’s testimony
`does not support a broad construction of “preloading.” Id. at 9. Specifically,
`Petitioner argues that Dr. Back admitted under cross-examination that the
`data storage controller may engage in the preloading process while already
`servicing requests for preloaded data (i.e., after a command to load). Id.
`(citing Ex. 1046, 120:13–121:11). According to Petitioner, “by confirming
`that preloading in the ’862 Patent occurs after a command has been received,
`Dr. Back endorsed an understanding of ‘preloading’ that is broader than the
`implicit construction required by the Decision.” Id. at 9–10.
`First, as explained in the Decision, when construing the claims at
`issue (1) we looked at the language of the claims themselves, (2) we
`consulted the patent’s specification to help clarify the meaning of claim
`terms, because the claims “must be read in view of the specification, of
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`3
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`IPR2016-01737
`Patent 8,880,862 B2
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`which they are a part,” Trading Techs. Int’l, v. eSpeed, Inc., 595 F.3d 1340,
`1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52
`F.3d 967, 979 (en banc), aff’d, 517 U.S. 370 (1996)), and (3) we reviewed
`“the patent’s prosecution history in proceedings in which the patent has been
`brought back to the [US Patent and Trademark Office] for a second review”
`(Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)).
`See Decision, 6–7.
`Second, contrary to Petitioner’s arguments, we considered Petitioner’s
`argument (and the cited supporting evidence) with respect to preloading in
`regards to the proposed substitute claims and in regards to each piece of
`prior art (or combination of prior art teachings). Decision, 48–53.
`Specifically, we found that Petitioner had failed to demonstrate that the cited
`art disclosed “preloading” boot data into a “volatile” memory –– the
`proposed substitute claims require both elements. Id. Additionally, we
`found that the prior art cited fails to disclose or teach “preloading” as
`required by the proposed substitute claims. Id. As noted in the Decision, we
`determined that Settsu does not disclose preloading control information
`“during the same boot sequence in which a boot device controller receives a
`command over the computer bus to load the portion of boot data,” as recited
`in the substitute claims. Id. at 53. We further stated that we “understand
`Settsu to load after a command has been received over a computer bus.
`Additionally, we do not understand Settsu to access the preloaded portion of
`the boot data in compress[ed] form from the volatile memory.” Id.
`(emphasis added).
`Furthermore, we are not persuaded by Petitioner’s argument that the
`“preloading in the substitute claims” would have been understood by an
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`IPR2016-01737
`Patent 8,880,862 B2
`
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`ordinarily skilled artisan as “broad enough to include transfer of data from
`disk into memory based on a command to load ” (Req. for Reh’g 6). The
`claim language does not recite, nor does the Specification disclose, “transfer
`of data from disk into memory based on a command to load”; rather, the
`claim recites preloading occurs during the same boot sequence.
`Petitioner’s argument regarding Dr. Back’s testimony is similarly
`unpersuasive (id. at 9). Whether requests for “preloaded boot data” may be
`received “while it is preloading other boot data” does not address the claims
`recitation in light of the Specification, as discussed in our Decision.
`We note that merely disagreeing with our analysis or conclusions does
`not serve as a proper basis for a rehearing, because it does not show an
`overlooked or misapprehended matter.
`For the forgoing reasons, Petitioner has not shown that the Board
`misapprehended or overlooked arguments or evidence in interpreting
`“preloading . . . .during the same boot sequence . . . .” as recited in the
`proposed substitute claims. For the same reasons as discussed in the
`Decision, Petitioner’s Request for Rehearing similarly is not persuasive as to
`Petitioner’s position on the construction of this claim element or its
`application to the cited prior art. Petitioner’s arguments regarding this
`limitation fails to identify what we misapprehended or overlooked as
`required by 37 C.F.R. § 42.71(d). Thus, Petitioner has not carried its burden
`of demonstrating that the Board’s Decision should be modified. See 37
`C.F.R. § 42.71(d).
`
`IV. ORDER
`It is hereby ORDERED that Petitioner’s request for rehearing is
`
`denied.
`
`5
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`IPR2016-01737
`Patent 8,880,862 B2
`
`
`For PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Andrew Patrick
`Katherine A. Lutton
`James Huguenin-Love
`Robert Andrew Schwentker
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`patrick@fr.com
`lutton@fr.com
`huguenin-love@fr.com
`schwentker@fr.com
`
`
`For PATENT OWNER:
`
`Joseph Edell
`Richard Zhang
`FISCH SIGLER LLP
`Joe.Edell.ipr@fischllp.com
`Richard.Zhang.ipr@fischllp.com
`
`Kayvan B. Noroozi
`NOROOZI PC
`kayvan@noroozipc.com
`
`
`
`
`
`
`6
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