Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 11
`Entered: December 12, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENT INC.,
`Petitioner
`
`v.
`
`PLECTRUM LLC,
`Patent Owner
`____________
`
`IPR2017-01430
`Patent 5,978,951
`____________
`
`
`Before KEN B. BARRETT, MIRIAM L. QUINN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`

`

`IPR2017-01430
`Patent 5,978,951
`
`
`I. INTRODUCTION
`Unified Patents Inc. (hereafter “Petitioner”) filed a Request for Rehearing
`(Paper 10, “Req. Reh’g”) of the Decision entered in this case (Paper 8, “Dec.”) in
`which we instituted an inter partes review of claims 8 and 11 and denied
`institution of claims 1–6, 12–14, and 21–24 of U.S. Patent No. 5,978,951 (“the
`’951 patent,” Ex. 1001). In its Request for Rehearing, Petitioner contends that in
`denying institution for some of the claims, we misapprehended the teachings of the
`prior art based on inaccuracies in arguments advanced by Plectrum LLC (“Patent
`Owner”), and overlooked some supportive evidence and obviousness positions in
`the Petition. Req. Reh’g 1–12. For the reasons set forth below, Petitioner’s
`Request for Rehearing is denied.
`
`II. DISCUSSION
`
`A party requesting rehearing has the burden to show a decision should be
`
`modified by specifically identifying all matters the party believes were
`misapprehended or overlooked, and the place where each matter was addressed
`previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When
`rehearing a decision on institution, we review the decision for an abuse of
`discretion. 37 C.F.R. § 42.71(c). 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).
`Petitioner alleges that we misapprehended the teachings of Cheriton in
`challenges to claims 1, 2, and 21 because: (1) we impermissibly relied upon Patent
`Owner’s arguments relating to Cheriton’s disclosure of “rows” and failed to credit
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`IPR2017-01430
`Patent 5,978,951
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`Petitioner’s expert opinion regarding the understanding of the reference; (2) any
`reliance on Patent Owner’s argument on the use of blocks, rather than rows, in
`Cheriton is unsupported, and Ross is mischaracterized by Patent Owner as
`disclosing alternatives to rows; and (3) the Board misapprehended the significance
`of Fujishima and committed legal error by requiring a showing that no other type
`of organizational structure could be used besides rows. Req. Reh’g 1–12.
`The Request for Rehearing repeatedly refers to alleged mischaracterizations
`in Patent Owner’s assertions. However, as discussed in the Decision, it is the
`failure of the Petition to demonstrate a reasonable likelihood of prevailing on its
`assertion that the challenged claims are obvious—and not the Patent Owner’s
`assertions—that was determinative. See Dec. 14–16.
`We are aware, as the Petitioner argues (see Req. Reh’g 4–5), that there is no
`requirement under § 103 that claim terms be described verbatim in a prior art
`reference. As discussed in the Decision, however, the issue of an explicit
`disclosure of the term “row” in Cheriton was not in itself determinative. See Dec.
`14–16. The Decision states that institution was denied because the Petition failed
`demonstrate a reasonable likelihood of prevailing on the obviousness challenge
`based on lack of adequate support in Cheriton for the alleged teaching of a
`comparison of values associated with a row in a cache, as well as the lack of
`support for the expert’s view that it would have been obvious to one of skill in the
`art to compare the cache value by row. Id. The disclosures in Cheriton that
`Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at
`14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill
`in the art concerning row comparisons in caches is conclusory and, therefore,
`deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human
`Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better
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`IPR2017-01430
`Patent 5,978,951
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`than the soundness of the reasons supporting it.”). Petitioner’s argument that
`Fujishima’s disclosure of 4-way set associative cache organized by rows, which
`corroborates its expert’s testimony, misses the point. Although the use of rows in
`4-way set associative caches may have been known, the Petition fails to provide
`sufficient support to identify why one of skill in the art would view Cheriton as
`teaching or suggesting the specific limitations associated with the use of rows.
`Petitioner refers to the Decision’s statement that “Petitioner’s reference to
`Fujishima also fails to demonstrate that it was known to one of skill in the art that
`caches, such as those in Cheriton, would have to use rows,” then arguing that it
`was legal error to “require[] an explicit showing” that no other type of
`organizational structure but rows could be used in a 4-way associative cache
`system. Req. Reh’g 7. This assertion is not accurate. Although we likely would
`have viewed as strong evidence any prior art that disclosed that all 4-way
`associative caches must use rows, Petitioner was not limited in how it could have
`provided support for its assertion that Cheriton teaches the “row” limitation in the
`view of one of skill in the art. But the issue remains that the Petition was deficient.
`Moreover, we do not agree with Petitioner’s assertion that there was
`misapprehension on our part because the Petition used Fujishima to demonstrate
`that a person of skill in the art would have understood that Cheriton’s cache
`memory had rows, but not to modify Cheriton. Req. Reh’g 11–12. The Decision
`makes clear that we considered the issue of whether Fujishima demonstrates a
`person of skill in the art’s alleged understanding of Cheriton. See Dec. 15–16.
`Petitioner’s additional arguments concerning Patent Owner’s purported
`mischaracterizations of Cheriton and Ross (see Req. Reh’g 4–6, 8–10), also do not
`support the grant of Petitioner’s request. As discussed above, the basis of the
`partial denial of institution was based upon the deficiencies of the Petition. Even if
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`there were inaccuracies in some of Patent Owner’s arguments, they are of no
`moment to the denial of institution.
`The Rehearing Request argues claims 12–14 on similar issues presented for
`claims 1, 2, and 21, and for claims 3–6 and 22–24 by virtue of dependencies. See
`Req. Reh’g 10–11. For the reasons discussed above, we similarly find that was no
`misapprehension or overlooking of matters as to these claims.
`
`
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we abused
`
`our discretion, or that we misapprehended or overlooked any issue, in denying
`institution of inter partes review of claims 1–6, 12–14, and 21–24 of the ’951
`patent in this case.
`
`IV. ORDER
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing is
`
`denied.
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`IPR2017-01430
`Patent 5,978,951
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`PETITIONER:
`David L. Cavanaugh
`Daniel V. Williams
`WILMER CUTLER PICKERING HALE AND DORR LLP
`David.Cavanaugh@wilmerhale.com
`daniel.williams@wilmerhale.com
`
`Roshan Mansinghani
`Jonathan Stroud
`UNIFIED PATENTS INC.
`Roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`PATENT OWNER:
`Zachariah S. Harrington
`Larry D. Thompson, Jr.
`Matthew J. Antonelli
`ANTONELLI, HARRINGTON & THOMPSON LLP
`zac@ahtlawfirm.com
`larry@ahtlawfirm.com
`matt@ahtlawfirm.com
`
`
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`6
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