Trials@uspto.gov Paper 15
`571-272-7822
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`Entered: July 20, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00319
`Patent 8,923,941 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2017-00319
`Patent 8,923,941 B2
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`A. INTRODUCTION
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`
`
`Apple Inc. (“Petitioner”) filed a Request for Rehearing (Paper 13,
`“Req.”) of our June 6, 2017, Decision (Paper 10, “Dec.”), which granted
`institution of inter partes review of claims 1, 2, and 6–13 of U.S. Patent No.
`8,923,941 B2 (Ex. 1001, “the ’941 patent”), but denied institution of inter
`partes review of claims 3–5 of the ’941 patent. In particular, Petitioner
`requests rehearing of our decision denying institution of inter partes review
`of claim 3. Req. 1.
`Petitioner argues that (1) we overlooked Petitioner’s previously-
`submitted arguments and material facts showing the applied art teaches or
`suggests an “application specific interface (API)” under our construction of
`that term, (2) we misapplied the relevant law in construing “application-
`specific interface (API),” and (3) we misapplied our 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 what a person of ordinary skill in the art would have understood
`regarding the meaning of “application-specific interface (API).” Id. at 1, 4,
`9. We have considered Petitioner’s Request for Rehearing, and, for the
`reasons set forth below, Petitioner’s Request is denied.
`
`B. STANDARD OF REVIEW
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” “An abuse of
`discretion occurs 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.”
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`IPR2017-00319
`Patent 8,923,941 B2
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`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must
`identify, with specificity, all matters that the requesting party believes the
`Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`Nevertheless,
`[a] request for rehearing is not an opportunity merely to disagree
`with the panel’s assessment of the arguments or weighing of the
`evidence, or to present new arguments or evidence. It is not an
`abuse of discretion to have performed an analysis or reached a
`conclusion with which Petitioner disagrees, and mere
`disagreement with the Board’s analysis or conclusion is not a
`proper basis for rehearing.
`Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB
`Jan. 28, 2016) (Paper 9).
`
`C. DISCUSSION
`1. Failure to Find that Applied References Teach the Disputed Limitation
`Petitioner argues that, although we disagreed with its proposed
`construction for the term “application specific interface (API),” “Petitioner
`provided ample support in the Petition for finding claim 3 unpatentable even
`under the Board’s construction.” Req. 1–2. In particular, Petitioner argues
`that:
`
`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
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`IPR2017-00319
`Patent 8,923,941 B2
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`the structure of any wire line message received by the computer
`platform.”
`Req. 2.
`We are not persuaded that we overlooked Petitioner’s arguments or
`evidence. Petitioner is correct that we were not persuaded by its proposed
`construction for the term “application-specific interface (API).” Dec. 11–12.
`Specifically, relying on a known definition of an “API,” Petitioner argued
`that “APIs are thus characterized by their broad applicability to different
`applications—and not “application specific” as such.” Pet. 14 (emphasis
`added; citing Ex. 1003 ¶ 62).1 As we explained in our Decision on
`Institution, however, we are unable to accept Petitioner’s proposed
`construction of this term as the broadest reasonable interpretation for at least
`three reasons. Id. at 9. First, because the term appears in the identical form,
`namely, “application-specific interface (API),” in both claim 3 and in the
`Specification, Petitioner has not provided persuasive evidence to support its
`argument that this term contains a typographical error. Id. at 9–10. Second,
`despite established standards for claim construction, Petitioner “would have
`us assume a particular typographical error in the term ‘application-specific
`interface (API)’ and then turn directly to extrinsic evidence to construe the
`term as rewritten by Petitioner.” Id. at 10–11. Third, we rejected
`Petitioner’s proposed construction for the term “application-specific
`interface (API)” “because we find that construction is inconsistent with the
`
`
`1 Patent Owner disputed Petitioner’s proposed construction, but chose not to
`offer one of its own. Prelim. Resp. 13. Instead, Patent Owner reserved the
`right to offer claim constructions if we instituted review, but argued “that
`claim construction is not necessary to deny the Petition.” Id.
`4
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`IPR2017-00319
`Patent 8,923,941 B2
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`explanation of the meaning of the term in the Specification of the ’941
`patent.” Id. at 11–12.2
`As Petitioner acknowledges, “the Board did not provide an actual
`definition for ‘application-specific interface (API)’ in the Institution
`Decision.” Id. (citing Dec. 11–12). Nevertheless, Petitioner argues that the
`statements in Craw, as cited in the quoted portion of Petitioner’s Request,
`indicate that, when implemented, the data dictionary is directed
`to a particular application. . . . For these reasons, the proposed
`ground as described
`in
`the Petition describes how,
`in
`implementation, Luo in view of Craw describes an application-
`specific interface ‘directed to a particular application’ according
`to the Board’s construction.
`Id. at 2–4 (emphasis added). However, Petitioner misunderstands our reason
`for denying institution on claim 3.
`Here, we were not persuaded by Petitioner’s proposed construction;
`and, because Petitioner’s arguments with respect to the unpatentability of
`claim 3 are based on that construction, we were not persuaded that Petitioner
`had shown a reasonable likelihood of prevailing in showing the
`unpatentability of claim 3 on the grounds asserted. Dec. 12 (“Because
`Petitioner’s assertions challenging claim 3 are based on its construction of
`this term, we do not consider further Petitioner’s challenges to claim 3 as
`rendered obvious over Luo and Craw or over Mault, Al-Ali, and Lee;3 and
`
`
`2 Petitioner appears to ignore our first two reasons for rejecting its proposed
`construction of the disputed claim term and to focus in this Request
`exclusively on the third reason. See Req. 2.
`3 Petitioner does not seek rehearing of our determination that Petitioner fails
`to demonstrate a reasonable likelihood of prevailing in showing that the
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`IPR2017-00319
`Patent 8,923,941 B2
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`we deny institution of inter partes review of claim 3 on either asserted
`ground.” (citations omitted)).
`Petitioner argues that, based on the its application of the teachings of
`Luo and Craw to the limitations of claim 3 under its proposed construction
`of the term “application-specific interface (API),” we also should have found
`that the combined teachings of the applied references would have taught or
`suggested the disputed term as it presumes that we could have construed it.
`Req. 3–4. After rejecting Petitioner’s construction of the disputed term,
`however, the record lacks sufficient evidence to show that there is a
`reasonable likelihood that a challenged claim could be found unpatentable
`by applying the teachings of those references to a different construction of
`that term.4 We evaluate the arguments and evidence as presented by the
`Petitioner in its Petition, including arguments presented for alternative claim
`constructions, if any. Here, Petitioner did not argue for an alternative
`construction of the disputed term or for the application of the teachings of
`Lou and Craw to such an alternative construction. Pet. 14–15, 27.5 We
`
`combined teachings of Mault, Al-Ali, and Lee teach or suggest the
`additional limitations of claim 3. See Req. 1–4.
`4 In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015),
`aff’d, 136 S. Ct. 2131 (2016), the Supreme Court held that the Board was not
`barred from instituting review and finding claims unpatentable based on a
`reference the petition did not identify as part of the grounds asserted against
`those claims. “The fact that the petition was defective is irrelevant because a
`proper petition could have been drafted.” Cuozzo, 793 F.3d at 1274.
`Nevertheless, instituting on such available, but unasserted grounds, is at the
`Board’s discretion.
`5 See Ex. 1003 ¶¶ 62 (“APIs are thus characterized by their broad
`applicability between different applications—and not ‘application specific’
`as would have been understood by a person of ordinary skill in the art.”
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`cannot have overlooked or misapprehended an argument that the Petitioner
`did not make.6
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`2. Misapplication of Relevant Claim Construction Law
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`Petitioner further argues that:
`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.
`Req. 4. We disagree.
`
`“In some cases, the ordinary meaning of claim language as understood
`by a person of skill in the art may be readily apparent even to lay judges, and
`claim construction in such cases involves little more than the application of
`the widely accepted meaning of commonly understood words.” See Phillips
`v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). We
`disagree, however, that, if the claim term is not plain on its face, we always
`must look to both intrinsic and extrinsic evidence. As our reviewing court
`explained in Phillips,
`because extrinsic evidence can help educate the court regarding
`
`
`(Emphasis added.)), 92 (“Thus, a person of ordinary skill would have
`recognized that the data dictionary acts as an API.”).
`6 Petitioner further argues that claim 3 only requires that the “application-
`specific interface (API)” “can utilize a particular application.” Req. 9 n.1;
`see id. at 7–8. Petitioner misquotes the Specification. Ex. 1001, 26:18–19
`(“an application-specific interface (API) can utilize the data as required for
`a particular application.” (emphasis added)); see Ex. 1001, 30:63–65 (similar
`language in claim 3). Petitioner, however, did not rely on this language in
`its claim construction arguments and may not raise it now. Pet. 14–15.
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`the field of the invention and can help the court determine what
`a person of ordinary skill in the art would understand claim terms
`to mean, it is permissible for the district court in its sound
`discretion to admit and use such evidence. In exercising that
`discretion, and in weighing all the evidence bearing on claim
`construction, the court should keep in mind the flaws inherent in
`each type of evidence and assess that evidence accordingly.
`415 F.3d at 1319 (emphasis added). Thus, we generally turn to extrinsic
`evidence when the claim term’s meaning is not plain on its face and the
`intrinsic evidence does not provide an adequate basis for construing the
`term. See Dec. 10–11 (citing Teva Pharmaceuticals USA, Inc. v. Sandoz,
`Inc., 574 U.S. ___, 135 S.Ct. 831, 840 (2015)).
`Petitioner proposed a construction of the term “application-specific
`interface (API)” that turned on our agreeing that the term, as it appeared in
`claim 3 and in the Specification, included an error. Pet. 14. In particular,
`Petitioner stated that “[t]he recitation the term ‘specific’ [in claim 3] appears
`to be a typographical error” and that “[t]he ’941 Patent written description
`uses the identical phraseology as claim 3 and thus repeats the apparent error
`of claim 3.” Id. Having presumed an error, Petitioner proceeds to construe
`the disputed term based on the presumed error. As we explained in our
`Decision, however, the fact that the same abbreviation, “API,” that
`Applicant used, had another known meaning at the time of the filing of the
`application that later issued as the ’941 patent is not persuasive evidence of
`an error in the language of claim 3 or in the Specification of the ’941 patent,
`or both. Dec. 9–10. In particular, as we noted in the Decision on Institution,
`First, because the term appears in the identical form, namely,
`“application-specific interface (API),” in both claim 3 and in the
`Specification, Petitioner has not provided any evidence to
`support its argument that this term contains a typographical error.
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`The similarity of the abbreviation “API” selected by the patentee
`to a well-known abbreviation may be nothing more than a
`coincidence. Further, even assuming that Petitioner is correct
`and that this term contains a typographical error, on this record,
`we cannot be certain whether the error is in the words of the term
`(i.e., “application programming
`interface,”
`rather
`than
`“application-specific interface”) or the letters of the abbreviation
`(i.e., “ASI,” rather than “API”).
`Id. Moreover, “the prosecution history [of the ’941 patent] consistently uses
`the term ‘application-specific interface (API).’ Ex. 1002, 47–48, 55, 95,
`132, 157. Thus, we find no evidence of a typographical error in the
`prosecution history.” Dec. 10 n.3.
`Petitioner argues that we “focuse[d] on the ‘application-specific
`interface’ portion of the term, yet overlook[ed] the ‘API’ portion of the
`term.” Req. 7. This is incorrect. We simply were not persuaded that the
`abbreviation should be given preference over the text that it abbreviates or
`that we should give dispositive weight to a known meaning for the
`abbreviation that was not otherwise associated with the text consistently
`used in claim 3, the Specification, and the prosecution history. Thus, we did
`not read “API” out of claim 3, we simply declined on this record to read
`Petitioner’s preferred meaning for “API” into claim 3. See id.
`In the absence of persuasive evidence of a typographical error in
`claim 3 or in the Specification of the ’941 patent, Petitioner was required to
`construe the disputed term based on the plain and ordinary meaning of the
`language of the claim including any explanation or clarification of that
`meaning provided by the Specification and the prosecution history. See Dec.
`10–11. “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
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`term.” Id. at 10–11 (citing Teva Pharmaceuticals, 135 S.Ct. at 840).
`Petitioner did not do this. Instead, Petitioner presumed an error in spite of
`the consistent use of the claim term as it appeared in the claim, the
`Specification, and the prosecution history; disregarded the language of the
`Specification explaining the meaning of the term; reimagined the claim
`language; and construed that reimagined claim language in light of extrinsic
`evidence. Pet. 14–15. This was both unpersuasive and a misapplication of
`the relevant law of claim construction.
`Petitioner argues that we erred by failing either to determine the plain
`and ordinary meaning of the disputed claim term (Req. 5–8) or to look to
`extrinsic evidence to construe the disputed claim term (id. at 8–9). The
`burden of showing a reasonable likelihood of prevailing on an assertion of
`unpatentability rests upon the petitioner. That burden includes providing
`persuasive claim constructions for terms, the construction of which is
`necessary to demonstrate a reasonable likelihood of prevailing in showing
`unpatentability. Here, we determined that (1) Petitioner’s assertion of the
`unpatentability of claim 3 rested on a particular construction of a single term
`in claim 3 and (2) that, as a threshold matter, Petitioner failed to persuade us
`that this construction was reasonably likely to be correct. Dec. 8–12.
`Consequently, on the existing record, we determined that Petitioner failed to
`demonstrate a reasonable likelihood that it would prevail in showing that
`claim 3 was unpatentable on its asserted grounds. Id. at 12.
`
`3. Failure to Credit Petitioner’s Assertion of Disputed Facts
`
`Petitioner argues that we “misapplied the relevant rules by finding in
`favor of Patent Owner regarding a factual disagreement.” Req. 10. In
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`particular, Petitioner argues that “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.’” Id. (citation omitted). Claim
`construction involves questions of law and fact, and Petitioner argues that,
`“[a]t this stage, . . . the Board’s own rules require that any disputes of fact be
`weighed in favor of the Petitioner.” Id. at 11. Petitioner, however,
`fundamentally misunderstands the nature of the institution of inter partes
`review and the scope of Rule 42.108(c).
`At institution, the burden of demonstrating a reasonable likelihood of
`prevailing in showing the unpatentability of the challenged claims rests on
`and does not shift from the petitioner. This is true for all questions of law
`and fact necessary to find such a reasonable likelihood of prevailing. As
`explained in the Office Trial Practice Guide, we “may not authorize a trial
`where the information presented in the petition, taking into account any
`patent owner preliminary response, fails to meet the requisite standard for
`instituting the trial.” Office Trial Practice Guide, 77 Fed. Reg. 48756 (Aug.
`12, 2012) (emphases added); see 35 U.S.C. § 314. The patent owner may
`choose to file a preliminary response addressing some or all such questions,
`and it may choose to present its arguments in its preliminary response with
`or without testimonial support, or it may choose to remain silent during the
`preliminary proceeding. See Travelocity.com L.P. v. Cronos Tech., LLC,
`Case CBM2014-00082, slip op. at 10 (PTAB Oct. 16, 2014) (Paper 12)
`(“[C]ontrary to Petitioner’s assertion, [at institution,] nothing may be
`gleaned from the Patent Owner’s challenge or failure to challenge the
`grounds of unpatentability for any particular reason.”). The patent owner’s
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`choice in this regard has no effect whatsoever on the allocation of the burden
`to the petitioner.
`Rule 42.108(c) places limited conditions on the petitioner’s ability to
`meet its burden. If the patent owner chooses to file a declaration providing
`testimony in support for its preliminary response and if that declaration
`testimony creates an issue of material fact between the petitioner’s assertions
`and the patent owner’s response, then and only for the limited purpose of
`determining whether institution of inter partes review is appropriate, the
`disputed issues of material fact are viewed in the light most favorable to the
`petitioner. Patent Owner submitted no testimonial evidence in this
`proceeding, and, consequently, there are no disputed material facts at issue
`such that Petitioner’s assertions are entitled to any favorable inferences on
`those issues.
`On this record, we remain unpersuaded by Petitioner’s factual
`assertions in support of its proposed construction of the term “application-
`specific interface (API).”
`
`IV. ORDER
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
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`IPR2017-00319
`Patent 8,923,941 B2
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`For PETITIONER
`
`Michelle K. Holoubek
`Michael D. Specht
`Mark J. Consilvio
`STERNE, KESSLER, GOLDSTEIN & FOX
`holoubek-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`mconsilvio-PTAB@skgf.com
`PTAB@skgf.com
`
`For PATENT OWNER
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
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