Trials@uspto.gov
`571-272-7822
`
` Paper 9
`
`
` Entered: April 27, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01777
`Patent 8,749,507 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`571-272-7822
`
` Paper 9
`
`
` Entered: April 27, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01777
`Patent 8,749,507 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2016-01777
`Patent 8,749,507 B2
`
`
`
`I. INTRODUCTION
` Apple Inc. (“Petitioner”) filed a Request for Rehearing (Paper 8,
`“Req. Reh’g”) of the Decision (Paper 7, “Dec.”), in which, based on the
`information presented in the Petition (Paper 1, “Pet.”), we denied institution
`of an inter partes review of claims 1–5, 9–12, and 14–17 of U.S. Patent No.
`8,749,507 B2 (Ex. 1001, “the ’507 patent”). Petitioner contends that our
`Decision misapprehended the meaning of a key limitation and the disclosure
`of the asserted prior art. Req. Reh’g 1. For the reasons stated below,
`Petitioner’s Request for Rehearing is denied.
`
`II. STANDARD OF REVIEW
`“The burden of showing a decision should be modified lies with the
`party challenging the decision,” and the challenging party “must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed” in a
`paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing
`of our Decision denying the Petition, it must show an abuse of discretion.
`See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel
`will review the decision for an abuse of discretion.”). An abuse of discretion
`occurs when a “decision was based on an erroneous conclusion of law or
`clearly erroneous factual findings, or . . . a clear error of judgment.” PPG
`Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed.
`Cir. 1988).
`
`III. ANALYSIS
`Petitioner contends that the Decision misconstrued the limitation we
`identified as the “determining a press limitation” (Dec. 11), i.e., the
`
`2
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`IPR2016-01777
`Patent 8,749,507 B2
`
`
`
`limitation reciting “determining a press if: the pressure is greater than a
`pressure threshold, the change in pressure is greater than a change in
`pressure threshold, and a first interval has elapsed.” Req. Reh’g 2–3.
`Petitioner argues that we “found that ‘the first two conditions [recited in the
`“determining a press limitation”] must be maintained for the duration of the
`first interval.’” Id. (citing Dec. 5, 14–15). Petitioner asserts that our
`“interpretation [of the “determining a press limitation”] . . . is not supported
`by the specification, and improperly excludes from the scope of the claims”
`the embodiments purported described in the Specification. Id. at 4–6
`(emphasis added). Petitioner further argues that our “interpretation would
`constitute an improper importation” of the features of exemplary
`embodiments into the claims. Id. at 6–7 (emphasis added).
`Petitioner mischaracterizes our Decision. We did not expressly
`construe the “determining a press limitation” or interpreted the limitation to
`require the first two conditions recited in the limitation be maintained for the
`duration of a first interval. See Dec. 7–8. Rather, we found that, as
`illustrated in Figure 3 of the ’507 patent, “the meaning of the ‘first interval
`has elapsed’ condition as an integral part of the ‘determining a press
`limitation’ may be very different from its meaning in isolation.” Id. at 14–15
`(emphasis added). We determined, based on the plain language of the claim
`limitation and the disclosure in the Specification, that the “determining a
`press limitation” recites a single concept of determining a press when all
`three conditions recited in the limitation are satisfied. Id. at 11–12. We
`found, therefore, a proper obviousness analysis must address the
`“determining a press limitation” as an integral whole, including the meaning
`
`3
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`IPR2016-01777
`Patent 8,749,507 B2
`
`
`
`of the “first interval has elapsed” condition as a part of the “determining a
`press limitation,” and show how a reference or a combination of references
`teaches or renders the limitation as a whole obvious. Id. at 12, 14–15 (citing
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). We found that the
`Petition did not present such an analysis. Id. at 12, 15.
`Petitioner does not argue that it was erroneous for us to require such
`an analysis. Instead, Petitioner argues that, because the claims use the open-
`ended transitional phrase “comprising,” the broadest reasonable
`interpretation of the “determining a press limitation” “requires only that
`there be at least one scenario in which the satisfaction of [the three recited
`conditions] . . . results in a determination of a press.” Req. Reh’g 8–10.
`Petitioner, however, does not identify where in the Petition this argument
`was presented. Petitioner’s argument appears to be a new argument
`presented for the first time in its Request for Rehearing to address the
`deficiencies in the Petition that were identified in our Decision.
`It was Petitioner’s affirmative duty to explain how the challenged
`claims should be construed and how, as so construed, they are unpatentable.
`See 37 C.F.R. § 42.104(b)(3)–(4). Hence, had Petitioner intended to argue,
`based on the open-ended transitional phrase “comprising” used in the claims,
`an interpretation of the “determining a press limitation” that differs from the
`meaning indicated by the plain language of the claim limitation or the
`disclosure in the Specification, such an analysis should have been made
`explicit in the Petition. A rehearing request is not a supplemental petition.
`Nor is it an opportunity to present new arguments or evidence that could
`have been presented and developed in the first instance in the Petition.
`
`4
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`IPR2016-01777
`Patent 8,749,507 B2
`
`
`
`Simply put, we could not have misapprehended or overlooked arguments or
`evidence that were not presented or developed in the Petition.
`In support of its claim construction argument, Petitioner submits an
`Administrative Law Judge’s order on claim construction from the related
`U.S. International Trade Commission proceeding, which was not evidence
`of record at the time of our Decision. Req. Reh’g 7 (citing Ex. 1010, 59). In
`general, new evidence is not allowed in a Request for Rehearing, absent
`showing of good cause. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012). Petitioner does not explain why there is
`good cause to admit Exhibit 1010 with its Request for Rehearing.
`Nonetheless, even when we consider Exhibit 1010, it would not change the
`outcome of the Petitioner’s Request for Rehearing because we could not
`have misapprehended or overlooked evidence that was not presented or
`developed in the Petition.
`Petitioner argues that, based on Petitioner’s claim construction
`presented in the Request for Rehearing, Toda teaches the “determining a
`press limitation.” Req. Reh’g 10–13. Petitioner’s unpatentability arguments
`are unpersuasive because they are predicated, at least in part, upon
`Petitioner’s claim construction arguments that were not presented or
`developed in the Petition. In addition, Petitioner again mischaracterizes our
`Decision. For instance, with respect to the “first interval has elapsed”
`limitation, Petitioner contends that our Decision “found that [Toda teaches]
`‘if the time interval of 30 milliseconds elapses, . . . a press . . . is eventually
`determined.’” Id. at 12 (emphasis added) (citing Dec. 14). The cited
`paragraph of the Decision, however, states as follows:
`
`5
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`IPR2016-01777
`Patent 8,749,507 B2
`
`
`
`Petitioner’s second theory is similarly deficient. Petitioner
`contends that step 103 of the flowchart depicted in Figure 11 of
`Toda teaches elapsing of a time interval because Figure 11 shows
`that, if the time interval of 30 milliseconds elapses, the process
`follows the “no” branch towards routine “3,” where, as shown in
`Figure 17, a press (i.e., “Switch Inputting On”) is eventually
`determined.
`
`Dec. 14 (emphases added) (citing Pet. 27). Petitioner plainly
`mischaracterizes our summary of Petitioner’s unpersuasive contentions as
`our own finding. Clearly, any error here is Petitioner’s, not ours.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion or that we misapprehended or overlooked any matter
`in our Decision denying the Petition. Petitioner, therefore, has not carried its
`burden of demonstrating that our Decision denying the Petition should be
`modified. See 37 C.F.R. § 42.71(d).
`
`V. ORDER
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
`is DENIED.
`
`
`
`
`6
`
`
`
`IPR2016-01777
`Patent 8,749,507 B2
`
`
`
`PETITIONER:
`Gianni Minutolli
`Robert Buergi
`DLA PIPER LLP (US)
`gianni.minutoli@dlapiper.com
`robert.buergi@dlapiper.com
`
`
`
`7
`
`PATENT OWNER:
`Michael Fleming
`Babak Redjaian
`IRELL & MANELLA LLP
`mfleming@irell.com
`bredjaian@irell.com
`
`
`
`
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