`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`_____________________
`
`Case IPR2017-00319
`U.S. Patent No. 8,923,941
`_____________________
`
`
`PETITIONER’S REQUEST FOR
`REHEARING OF INSTITUTION DECISION
`
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`
`I.
`
`II.
`
`
`Standard of Review.......................................................................................... 1
`
`The Board overlooked Petitioner’s previously-submitted arguments
`and material facts showing the prior art still discloses an “application
`specific interface (API)” under the Board’s revised construction ................... 1
`
`III. The Board misapplied the relevant law in construing the phrase
`“application-specific interface (API).” ............................................................ 4
`
`A.
`
`B.
`
`If the identical term as used in the specification was clear, then
`the term as used in the claim should have been given its
`ordinary and customary meaning. ......................................................... 5
`
`If the term as used in the claim needed clarification, then the
`Board cannot rely on the specification’s identical use of that
`term, and must look to extrinsic evidence. ............................................ 8
`
`IV. The Board misapplied its own rules regarding finding disputes of fact
`in favor of the Petitioner at institution by improperly crediting Patent
`Owner’s unsupported attorney argument over Petitioner’s evidence of
`a POSA ............................................................................................................ 9
`
`V.
`
`Conclusion .....................................................................................................12
`
`
`
`
`
`
`- i -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`Petitioner Apple Inc. (“Apple”) requests partial rehearing under 37 C.F.R. §
`
`42.71(d)(1) of the Board’s Institution Decision (Paper 10) with respect to claim 3
`
`of U.S. Patent No. 8,923,941 (“the ’941 Patent”), entered on June 6, 2017.
`
`I.
`
`Standard of Review
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R. §
`
`42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a single
`request for rehearing without prior authorization from the
`Board. The burden of showing a decision should be
`modified lies with the party challenging the decision. 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.
`
`II. The Board overlooked Petitioner’s previously-submitted arguments and
`material facts showing the prior art still discloses an “application-
`specific interface (API)” under the Board’s revised construction.
`
`While the Board disagreed with Petitioner’s proposed claim construction, it
`
`does not necessarily follow that Petitioner could not prevail under the Board’s
`
`revised claim construction. While Petitioner originally proposed a claim
`
`construction
`
`it believed commensurate with
`
`the “broadest
`
`reasonable
`
`construction,” the applied art also satisfies the Board’s construction. Indeed, as
`
`shown below, Petitioner provided ample support in the Petition for finding claim 3
`
`- 1 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`
`unpatentable even under the Board’s construction.
`
`While the Board did not provide an actual definition for “application-
`
`specific interface (API)” in the Institution Decision (see Paper 10, pp. 11-12), the
`
`Board did state that, “the Specification explains that the ‘application-specific
`
`interface (API)’ is directed to a ‘particular application,’ rather than broadly to
`
`different applications.” Paper 10, p. 12 (emphasis omitted). In declining to institute
`
`inter partes review of claim 3, the Board overlooked Petitioner’s explanation of
`
`why the art is also directed to a particular application.
`
`The Petition stated that the referenced data dictionary of Craw “acts as an
`
`API.” Petition, p. 27. But the Petition also stated that “Craw teaches that a device
`
`receiving such a serial output string would have been able to extract the parameters
`
`from the serial data string (e.g., for appropriate display of the health information).”
`
`Id. Here, the Petition cites to Craw, ¶0048, which states, “[a]cting on the received
`
`information may depend on the goal of the application.” The Petition also cites to
`
`Craw, ¶0202, which states, “[t]he dictionary table may be used to recognize what
`
`to extract by specifying the data segments that encompass the structure of any
`
`wire line message received by the computer platform.”
`
`These statements in Craw indicate that, when implemented, the data
`
`dictionary is directed to a particular application. The Petition further supports this,
`
`by explaining that “[o]nce the data is received, the parameter values are extracted
`
`- 2 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`based on the pre-defined protocols and specifications. . . . Once extracted, the
`
`data is further processed for display by using the dictionary.” Petition, p. 21. So
`
`while the data dictionary provides a generic interface when considered in the
`
`abstract, when actually implemented, the data dictionary’s use is tailored to the
`
`specific application it is intended to complement. And as described in the Petition,
`
`the proposed ground was not based on Craw alone or in the abstract; rather, the
`
`proposed ground of unpatentability applies Luo in view of Craw. Petition, p. 27.
`
`The health monitoring device of Luo is the specific application, and implementing
`
`the data dictionary of Craw allows the data for Luo’s specific application to be
`
`serialized “such that Luo’s subject heart rate and subject respiration rate
`
`parameters could be extracted from the physiological information and such that a
`
`plurality of subject physical activity parameters could be extracted from the
`
`motion-related information.” Petition, p. 26. That is, when considering Craw’s
`
`dictionary as incorporated into Luo’s health monitoring device, the data dictionary
`
`(i.e., the claimed application-specific device (API)) “can utilize” the data as
`
`required for a particular application, namely the pre-defined protocols and
`
`specifications from the specific health monitoring device of Luo. Petition, pp. 25-
`
`27.
`
`For these reasons, the proposed ground as described in the Petition describes
`
`how, in implementation, Luo in view of Craw describes an application-specific
`
`- 3 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`interface “directed to a particular application” according to the Board’s
`
`construction.
`
`III. The Board misapplied the relevant law in construing the phrase
`“application-specific interface (API).”
`
`The Board either should have found the term “application-specific interface
`
`(API)” plain on its face, such that no analysis of either intrinsic or extrinsic
`
`evidence was necessary, or, finding that further analysis was necessary, the Board
`
`should have looked to extrinsic evidence such as Dr. Sarrafzadeh’s Declaration
`
`without stopping at the intrinsic evidence. This is because the intrinsic evidence
`
`sheds no further light on the meaning of the term “application-specific interface
`
`(API)” than the claim itself—as the Board notes, the specification uses the exact
`
`same language as the claim, and does not further define the term. Paper 10, p. 9.
`
`According to MPEP 2173.05(a)(III):
`
`a patentee or applicant may use terms in a manner
`contrary to or inconsistent with one or more of their
`ordinary meanings if the written description clearly
`redefines the terms. See, e.g., Process Control Corp. v.
`HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d
`1029, 1033 (Fed. Cir. 1999) . . . ; Hormone Research
`Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 15
`USPQ2d 1039 (Fed. Cir. 1990). Accordingly, when there
`is more than one meaning for a term, it is incumbent
`
`- 4 -
`
`
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`IPR2017-00319
`U.S. Patent No. 8,923,941
`upon applicant to make clear which meaning is being
`relied upon to claim the invention.
`
`Further, as the Board states,
`
`if the ordinary and customary meaning is not plain, we
`look to the specification to glean the meaning of the term
`. . . . We also may look to the prosecution history to try to
`discern a claim term’s meaning. . . . When we are unable
`to construe the claim term from such intrinsic evidence,
`we may turn to extrinsic evidence to aid in construing the
`claim term.
`
`Paper 10, p. 10.
`
`A.
`
`If the identical term as used in the specification was clear, then
`the claimed term should have been given its ordinary and
`customary meaning.
`
`As noted by the Board in its Institution Decision, the specification is only
`
`consulted for guidance “if the ordinary and customary meaning is not plain.” Paper
`
`10, p. 10 (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, the
`
`claim term itself provides a definition by conjoining the phrase “application-
`
`specific interface” with the well-known acronym “API”. This does not appear to be
`
`a situation where an otherwise meaningless acronym was written into the claim as
`
`a shortcut. As discussed in the Petition, the term “API” had a well-known and
`
`accepted ordinary meaning in the art at the time of alleged invention. Petition, pp.
`
`- 5 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`14-15. “Application-specific interface” had no ordinary meaning nor was it
`
`meaningfully described in the specification, other than its co-location with the
`
`well-known term “API.” Petition, pp. 14-15. As described in the Petition, the plain
`
`and ordinary meaning of the phrase “application-specific interface (API),” thus
`
`includes an application interface that specifies how some software components
`
`should interact with each other. Petition, pp. 14-15; Ex. 1003, ¶62. Given that the
`
`claim term—which explicitly uses the well-known acronym “API” as an
`
`alternative name within the claim for “application-specific interface”—would have
`
`been clearly understood by a POSA to refer to an API, additional limitations (such
`
`as “directed to a particular application”) should not have been imported from the
`
`specification into the claim.
`
`Further, as also discussed in the Petition, this is not a case where the
`
`specification redefines the term as used in the claim. Petition, p. 14. A single
`
`statement in the specification that “an application-specific interface (API) can
`
`utilize the data as required for a particular application” does not constitute an
`
`implicit or explicit redefinition of the well-known term “API,” which is required
`
`for the Patent Owner to be his own lexicographer. See, Multiform Desiccants Inc.
`
`v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); MPEP 2111.01(IV). This is
`
`evidenced by Patent Owner’s own inability to articulate a definition for the term.
`
`As noted by the Board, “Patent Owner does not state why [Petitioner’s
`
`- 6 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`construction is incorrect] or propose an alternative construction.” Paper 10, p. 9. If
`
`the specification so clearly defined this term such that the plain and ordinary
`
`meaning of “API” should be read out of the claim, then Patent Owner similarly
`
`should have been able to point to a correct definition in the specification. However,
`
`Patent Owner was unable to point to a definition in the specification, because there
`
`is none.
`
`The Board likewise was unable to find a clear definition in the specification;
`
`while the Board describes what it believes to be a characteristic of the term
`
`(“directed to a ‘particular application’”), the Board does not provide an actual
`
`definition. The Board instead focuses on the “application-specific interface”
`
`portion of the term, yet overlooks the “API” portion of the term. The Board
`
`eschews the commonly-understood meaning of the term “API,” substituting
`
`instead vague language in the specification regarding the “application-specific
`
`interface (API)[’s]” capabilities: that it “can utilize the data as required for a
`
`particular application.” Ex. 1001, 26:17-19 (emphasis added). In doing so, the
`
`Board improperly reads the term “API” out of the claim.
`
`It is also important to note that the specification does not say that the
`
`interface “is directed to” a particular application as alleged by the Board, only that
`
`it “can utilize the data as required for a particular application.” Id. “Can utilize”
`
`implies that there are other options available that can also be utilized, while “is
`
`- 7 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`directed to” implies only a single option. What an application is capable of is not a
`
`definition, nor does it mean that the application is limited to just that one thing.
`
`Specifically, a disclosure that an interface “can utilize” data for a particular
`
`application is simply not the same as saying that an interface “is directed to” a
`
`particular application, as alleged by the Board. As such, the Board improperly
`
`misapplied the law by discarding the plain and ordinary meaning to a POSA of a
`
`claim term, in favor of a statement in the specification regarding a term’s
`
`capability that constitutes neither a definition nor a disavowal of the meaning to a
`
`POSA.
`
`B.
`
`If the term in the claim needed clarification, then the Board
`cannot rely on the specification’s identical use of that term, and
`must look to extrinsic evidence.
`
`To the extent that there is a disagreement regarding the “ordinary and
`
`customary meaning” of “application-specific interface (API),” such that reference
`
`to the intrinsic evidence is necessary, then the Board must agree that further
`
`reference to the extrinsic evidence is necessary because the specification provides
`
`no further explanation for that claim term. As discussed above, the specification
`
`characterizes how the “application-specific interface (API)” can be utilized. But
`
`such a capability is not a definition that clarifies the full meaning of an otherwise
`
`- 8 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`unclear term, such that the term can be construed without anything more.1 Instead,
`
`since the specification sheds no further light on the claim term’s definition, it is
`
`appropriate to consult extrinsic evidence. Teva Pharmaceuticals USA, Inc. v.
`
`Sandoz, Inc., 574 U.S. __, 135 S. Ct. 831, 840 (2015). Here, the Petition provides
`
`such extrinsic evidence in the form of declaratory evidence—the Declaration of
`
`Dr. Majid Sarrafzadeh. Dr. Sarrafzadeh describes what the term “application-
`
`specific interface (API)” would mean to a POSA—“an application interface that
`
`specifies how some software components should interact with each other.” Ex.
`
`1003, ¶¶62-63.
`
`Assuming (as we must if we are looking to the specification) that the term at
`
`issue has no ordinary and customary meaning, the Board improperly misapplied
`
`the law by dismissing the necessity for Petitioner’s extrinsic evidence regarding the
`
`meaning of “application-specific interface (API)” to a POSA.
`
`IV. The Board misapplied its own rules regarding finding disputes of fact in
`favor of the Petitioner at institution by improperly crediting Patent
`Owner’s unsupported attorney argument over Petitioner’s evidence of a
`POSA
`
`As discussed above, if the Board felt that no ordinary and customary
`
`1 Petitioner notes that, if the claim only requires that an application interface “can
`
`utilize a particular application,” then that feature is clearly taught by the prior art as
`
`discussed in Section II above.
`
`- 9 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`meaning was available for the term “application-specific interface (API),” then the
`
`proper claim construction required analysis of extrinsic evidence (since the
`
`intrinsic evidence provided no more of a definition than the claim term itself). The
`
`Board’s denial of Petitioner’s construction thus misapplied the relevant rules by
`
`finding in favor of Patent Owner regarding a factual disagreement.
`
`Rule 42.108(c) indicates that “a genuine issue of material fact created by
`
`such testimonial evidence will be viewed in the light most favorable to the
`
`petitioner solely for purposes of deciding whether to institute a inter partes
`
`review.” (Amendments to the Rules of Practice for Trials Before the Patent Trial
`
`and Appeal Board, 81 Fed. Reg. 18750, 18763 (April 1, 2016).)
`
`While the ultimate question of claim construction is a question of law, the
`
`claim construction in this instance is based on an underlying finding of fact—
`
`specifically, what the term “application-specific interface (API)” means to a
`
`POSA. Here, Petitioner presented evidence regarding the meaning of the term to a
`
`POSA. Petition, pp. 14-15; Ex. 1003, ¶¶62-63. Even had Patent Owner presented
`
`opposing evidence, the Board’s own rules dictate that the Board find in favor of the
`
`Petitioner’s evidence. 37 C.F.R. 42.108(c). Here, the Patent Owner actually
`
`presented no evidence, merely unsupported attorney argument amounting to a
`
`complaint that the definition was improper, without providing any alternative or
`
`any rationale as to why Petitioner’s proposed construction was too broad. Paper 10,
`
`- 10 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`p. 9 (“Patent Owner also contends that this construction is improper under the
`
`broadest reasonable interpretation standard, but, as with the previous term, Patent
`
`Owner does not state why or propose an alternative construction” (emphasis
`
`added)).
`
`The construction at the institution phase is a “preliminary” construction.
`
`Should Patent Owner be able to present a cogent argument and evidence during
`
`trial regarding the proper claim construction and why Petitioner’s proposed
`
`construction is improper, then the Board will have an opportunity to make a final
`
`claim construction after review of all such information. At this stage, however, the
`
`Board’s own rules require that any disputes of fact be weighed in favor of the
`
`Petitioner. As such, the Board should not disregard Petitioner’s previously-
`
`presented evidence of how a POSA would have understood the term at issue.
`
`- 11 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`
`V. Conclusion
`If the Board’s “preliminary” construction stands as a “final” construction,
`
`then the Board overlooked the discussion in the Petition showing that the cited art
`
`discloses the claim elements even as construed by the Board. Further, the Board
`
`misapplied the relevant case law in looking to the specification, but no further, to
`
`construe the claim term. Finally, the Board misapplied its own rules by deciding a
`
`factual dispute in favor of the Patent Owner rather than the Petitioner. The Board
`
`should grant rehearing under 37 C.F.R. § 42.71 and institute inter partes review of
`
`claim 3 of the ’941 Patent based on Luo in view of Craw.
`
`
`
`Date: June 20, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`
` Michelle K. Holoubek (Reg. No. 54,179)
`Attorney for Petitioner
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`
`
`- 12 -
`
`
`
`IPR2017-00319
`U.S. Patent No. 8,923,941
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies that a true and correct copy of the foregoing
`
`PETITIONER’S REQUEST FOR REHEARING OF INSTITUTION
`
`DECISION was served on June 20, 2017 in its entirety on the following counsel
`
`of record for Patent Owner:
`
`Justin B. Kimble (Lead Counsel)
`Nick Kliewer (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`jrastegar@bcpc-law.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`Date: June 20, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`5388021_1.docx
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`
`
`
` Michelle K. Holoubek (Reg. No. 54,179)
`Attorney for Petitioner
`
`
`
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