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`Paper 10
`Entered: December 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SAINT LAWRENCE COMMUNICATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01244
`Patent 6,807,524 B1
`____________
`
`
`
`Before DANIEL N. FISHMAN, ROBERT J. WEINSCHENK, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`

`

`IPR2017‐01244
`
`Patent 6,807,524 B1
`
`
`INTRODUCTION
`I.
`Apple, Inc. (“Petitioner”) requests rehearing (Paper 9, “Req.”) of our
`Decision on Institution (Paper 8, “Decision” or “Dec.”) denying the Petition
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–21 and 29–42
`of U.S. Patent No. 6,807,524 B1 (Ex. 1001, the “’524 patent”) as obvious
`over various combinations of Salami1 with other references. For the reasons
`below, Petitioner’s request is denied.
`
`
`LEGAL STANDARD
`II.
`When rehearing a decision whether to institute inter partes review, we
`review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
`burden of showing a decision should be modified lies with the party
`challenging the decision,” and, “[t]he request must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed” in the record. 37 C.F.R.
`§ 42.71(d). A request for rehearing is not an opportunity to present new
`arguments. See id. An abuse of discretion may arise 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277,
`1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed.
`Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`
`
`1 R. Salami et al., Real-Time Implementation Of A 9.6 Kbit/S ACELP
`Wideband Speech Coder, Globecom’92 – IEEE Global Telecommunications
`Conference (1992). Ex. 1008 (“Salami”).
`2
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`IPR2017‐01244
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`Patent 6,807,524 B1
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`
`III. DISCUSSION
`Petitioner argues our Decision overlooked the requirements of
`37 C.F.R. § 42.108(c) by failing to consider testimonial evidence in a light
`most favorable to Petitioner. Req. 2–9. Petitioner further argues the Board
`erred by substituting our own understanding of Salami for that of the
`ordinarily skilled artisan. Id. at 9–11.
`
`
`Testimonial Evidence
`Claim 1 recites, in paraphrased pertinent part, a perceptual weighting
`filter responsive to the output signal generated by a preemphasis filter.
`Petitioner argues that the Petition identified page 448 of Salami (Ex. 1008,
`23) as disclosing such an arrangement of a perceptual weighting filter
`responsive to a preemphasized signal and cited Dr. Cohen’s Declaration
`(Ex. 1003 ¶ 114) in support of that assertion. Req. 3–4. Petitioner further
`argues Dr. Cohen’s support for its assertion is affirmative evidence that the
`ordinarily skilled artisan would have understood Salami to be disclosing this
`feature. Id. at 4–5. Still further, Petitioner contends Patent Owner’s
`testimonial evidence contrary to Dr. Cohen’s testimony created a genuine
`issue of material fact that we are required to resolve, at the institution phase,
`in Petitioner’s favor based on 37 C.F.R. § 42.108(c). Id. at 5–6. Thus,
`Petitioner asserts we overlooked this procedural requirement in our Decision
`by viewing the conflicting testimonial evidence in a light most favorable to
`Patent Owner. Id. at 6–9.
`We are not persuaded by Petitioner’s arguments. Our Decision
`specifically acknowledged that Salami discloses a preemphasis filter and
`discloses a perceptual weighting filter. Dec. 17. We further found,
`
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`IPR2017‐01244
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`Patent 6,807,524 B1
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`however, that Petitioner failed to show sufficiently that Salami discloses the
`specific structure of claim 1 that requires the perceptual weighting filter to
`receive the output signal of the preemphasis filter. Id. at 18–19.
`Specifically, the Petition asserts:
`Second, Salami discloses that the perceptual weighting
`filter is responsive to the pre-emphasized signal. For instance,
`Salami discloses that the pre-emphasis filter operates on the
`original input wideband speech signal (see [1.1]), and the
`preemphasized signal is sent to the LP filter for LP analysis (see
`[1.2]); then, the preemphasized signal is input to the perceptual
`weighting filter:
`“The LP coefficients are determined using the method
`of linear prediction analysis”; then, Salami discloses that
`“the synthetic speech is computed . . . according to a
`perceptually weighted distortion measure.”
`Ex-1008, 448. Therefore, Salami states here that the pre-
`emphasized wideband speech signal is first used for LP
`analysis, and next, the pre-emphasized signal is perceptually
`weighted and used to compute the excitation codeword.
`Pet. 33 (citing Ex. 1003 ¶¶ 114 et seq.). Our Decision made clear that this
`argument was unpersuasive:
`We discern no teaching or suggestion in this text of Salami that
`the preemphasized signal is used on a perceptual weighting
`filter. We find no support in the cited portions of Salami for
`Petitioner’s assertion that the preemphasized signal is first
`applied to LP analysis and then the same preemphasized signal
`is perceptually weighted (i.e., applied to a perceptually
`weighted filter). Petitioner’s argument in the Petition does not
`explain specifically how the cited text teaches the identified
`claim limitations and, thus, amounts to little more than an
`unsupported conclusory remark. Dr. Cohen merely repeats the
`same argument without providing any further explanation.
`Dec. 19 (citing Ex. 1003, 65). Thus, without reliance on Patent Owner’s
`arguments or testimonial evidence, our Decision found Petitioner’s above
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`IPR2017‐01244
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`Patent 6,807,524 B1
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`argument unpersuasive that Salami discloses the recited perceptual
`weighting filter that receives the output signal of the preemphasis filter.
`Dr. Cohen’s Declaration uses identical words to explain the same
`relationship between the preemphasis filter function and the perceptual
`weighting filter in Salami. Ex. 1003, 65 (¶ 114). Accordingly, far from
`creating a disputed issue of material fact, Dr. Cohen’s testimony is
`conclusory, unsupported, and “entitled to little or no weight.” 37 C.F.R.
`§ 42.65(a).
`We determined that, although Salami discloses certain functions and
`elements that may be present in an encoder, Salami does not disclose the
`structure of an encoder. Dec. at 16. Instead, Salami discloses, in its Figure
`1, the structure of a decoder that decodes a received encoded stream.
`Contrary to Petitioner’s arguments that Salami discloses the recited
`structures, the structure of an encoder may be, at most, inferred from the
`functions Salami describes.
`Supporting our interpretation of Salami, our Decision then noted
`Patent Owner’s suggestion of a possible structure of an encoder that may
`provide the encoding functions described by Salami (id. at 19 (citing Patent
`Owner’s Preliminary Response (Paper 7) 36 and Ex. 2004 ¶ 92)) and
`specifically found,
`We have no basis for presuming Patent Owner’s
`suggested arrangement of elements for an encoder in Salami is
`a correct interpretation. Nonetheless, we agree that, in the
`absence of disclosure within Salami regarding the specific
`structure of its encoder, Petitioner has not shown sufficiently
`that the ordinarily skilled artisan would have perceived Salami
`to disclose the particular arrangement recited in, for example,
`claim 1.
`
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`Patent 6,807,524 B1
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`Id. at 20.
`Therefore, we did not find a genuine issue of material fact in the
`parties’ positions. Instead, we found Petitioner’s arguments, as supported by
`Dr. Cohen’s Declaration, were insufficiently persuasive to meet its burden of
`showing a reasonable likelihood of success.
`
`
`Substituting Our Understanding for the Ordinarily Skilled Artisan’s
`Petitioner argues that we improperly substituted our own
`understanding for that of the ordinarily skilled artisan as expressed by
`Dr. Cohen. Req. 9–11. Petitioner asserts, although the Board’s expertise
`plays a role in interpreting the record, “it is impermissible for the Board to
`base its factual findings on its expertise, rather than on evidence in the
`record.” Id. at 10 (quoting Brand v. Miller, 487 F.3d 862, 869 (Fed. Cir.
`2007)). Petitioner further argues expert testimony is required for complex
`technology such as this. Id. (citing Synopsys, Inc. v. Mentor Graphics Corp.,
`814 F.3d 1309, 1320 (Fed. Cir. 2016)). In particular, Petitioner contends “it
`is insufficient to read page 448 of Salami in isolation; the background
`knowledge of a person of ordinary skill in the art is required in order to
`appreciate its disclosure.” Id. at 11.
`We are not persuaded by this argument that our Decision
`misapprehended or overlooked any issue. With respect to this argument,
`Petitioner does not “specifically identify” what was misapprehended or
`overlooked and where the matter “was previously addressed” as required by
`37 C.F.R. § 42.71(d).
`Furthermore, we are not persuaded our Decision erred in interpreting
`the record evidence. Here, we did not apply our own expertise to the
`
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`IPR2017‐01244
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`Patent 6,807,524 B1
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`exclusion of Dr. Cohen’s expert testimony. Rather, as discussed supra, we
`found the Petition, as supported by Dr. Cohen’s expert testimony,
`insufficient to persuade us of a reasonable likelihood that Petitioner would
`prevail in demonstrating unpatentability of any of the challenged claims.
`
`
`IV. CONCLUSION
`We have reviewed all of the arguments in the Request for Rehearing
`and find them to be without merit. Petitioner has not persuasively shown
`that the Decision on Institution constituted an abuse of discretion.
`
`
`V. ORDER
`In view of the foregoing discussion, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`PETITIONER:
`Andrew S. Ehmke
`Scott T. Jarratt
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`scott.jarratt.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Dr. Gregory J. Gonsalves
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`Masood Anjom
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`
`
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