Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 14
`Entered: June 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BUNGIE, INC.
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`
`
`
`
`
`Case IPR2017-01600
`Patent 6,910,069 B1
`
`
`
`
`Before SALLY C. MEDLEY, MARC S. HOFF, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 14
`Entered: June 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BUNGIE, INC.
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`
`
`
`
`
`Case IPR2017-01600
`Patent 6,910,069 B1
`
`
`
`
`Before SALLY C. MEDLEY, MARC S. HOFF, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2017-01600
`Patent 6,910,069 B1
`
`
`I. INTRODUCTION
`
`
`Bungie, Inc. (“Petitioner”) filed a Request for Rehearing (Paper 12,
`
`“Req.”) of our Decision Denying Institution mailed January 9, 2018 (Paper
`11, “Dec.”).
`
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. 35 U.S.C.
`§ 42.71(d). 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. Id.
`For the reasons provided below, we deny Petitioner’s request for
`rehearing.
`
`A. Principles of Law
`
`When rehearing a decision on institution, we review the decision for
`
`an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion
`may be determined 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.
`See Star Fruits S.N.C. v. United States, 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). The party requesting
`rehearing has the burden of showing the decision should be modified, which
`includes specifically identifying all matters the party believes we
`misapprehended or overlooked. See 37 C.F.R. § 42.71(d).
`
`
`
`2
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`IPR2017-01600
`Patent 6,910,069 B1
`
`
`B. Discussion
`In our Decision, we concluded that the information presented did not
`
`show a reasonable likelihood that Petitioner would prevail in establishing
`that claims 1–5, 7, 8, and 11–13 are rendered obvious by Francis1 and
`Gilbert.2 Dec. 13. Specifically, we determined that the combination of
`Francis and Gilbert, taken together, did not disclose “identifying a pair of
`participants of the network that are connected wherein [1] a seeking
`participant contacts a fully connected portal computer, [2] which in turn
`sends an edge connection request to [3] a number of randomly selected
`neighboring participants to which the seeking participant is to connect.”
`Dec. 9–12.
`
`Petitioner argues in the Request that the Decision “overlooks
`Petitioner’s arguments regarding the prior art as a whole and the rationale
`for combining the teachings of Francis (EX1005) and Gilbert (EX1021).”
`Req. 1. Petitioner alleges that the Board “criticized the ground Petitioner
`presented because, in the Board’s view, neither Francis nor Gilbert alone
`disclosed all aspects” of the method step at issue. Id.
`
`Petitioner further argues that the Board overlooked extensive
`arguments that Francis and Gilbert are properly combined. Req. 9.
`
`We are not persuaded that we overlooked a matter previously
`addressed by Petitioner.
`
`
`1 Paul Francis, Yallcast: Extending the Internet Multicast Architecture, NTT
`Information Sharing Platform Laboratories (Sept. 30, 1999) (Ex. 1005)
`(“Francis”).
`2 U.S. Patent No. 6,490,247 B1, filed June 26, 1996, issued Dec. 3, 2002
`(Ex. 1021) (“Gilbert”).
`
`3
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`IPR2017-01600
`Patent 6,910,069 B1
`
`
`Petitioner argues in the Request that “[t]he Board seems to agree
`that the Gilbert prior art reference discloses aspects (1) and (2)—which
`Gilbert plainly does—and focused its distinction of Gilbert on aspect (3).”
`Req. 5 (citing Dec. 9–10). Petitioner continues: “The Board also seems to
`agree that the Francis prior art reference discloses aspect (3)— which
`Francis also plainly does— and focused its distinction of Francis on
`aspect (2).” Id. Petitioner then alleges that “[t]here is no reasonable
`disagreement that, taken together, Francis and Gilbert teach the entire
`scope of the step at issue.” Id. at 2.
`Petitioner alleges specifically that the Board agreed that Gilbert
`“discloses that a portal computer sends a connection request.” Req. 7. In
`fact, our Decision stated that
`Gilbert discloses that the joining (“additional”) node “first
`contacts a [single] node it knows to be already connected on
`the network.” Ex. 1021, 6:33–34. That “known” node then
`“provides information [to the joining node] regarding an
`adjacent node to the additional node.” Ex. 1021, 6:40-42.
`Gilbert thus discloses that a portal computer sends a
`connection request to at most one ‘neighboring’ participant.
`Dec. 9 (emphasis added).
`
`Thus, we expressed in the Decision the finding that Gilbert does not
`disclose sending an edge connection request to a number of neighboring
`participants (i.e., at least two), and that Gilbert does not disclose
`identifying a pair of participants of the network that are connected, both
`of which are required by independent claim 1.
`Petitioner also argues that its position “that Francis discloses (3) ‘a
`number of randomly selected neighboring participants to which the
`seeking participant is to connect’ has also withstood the Board’s scrutiny .
`
`4
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`IPR2017-01600
`Patent 6,910,069 B1
`
`
`. . . [T]he Decision explicitly recognized that Francis discloses ‘choosing
`neighboring participants in a random manner to connect to.’” Req. 8
`(citing Dec. 12). The relevant section of the Decision reads, in full:
`Merely choosing neighboring participants in a random manner
`to connect to, as Francis does here, is not the same as sending a
`request to a number of randomly selected neighboring
`participants. Petitioner has not explained how Francis and
`Gilbert would be combined to teach a portal computer
`“send[ing] an edge connection request to a number of
`randomly selected neighboring participants.”
`Dec. 12.
`Petitioner concedes that Gilbert does not disclose sending a
`connection request to a number of randomly selected neighboring
`participants. Pet. 55. As explained in the Decision, Francis discloses
`connecting to randomly selected nodes existing on the network:
`“[E]ach member M establishes a small number of other
`members – three or four – as mesh neighbors. These members
`are randomly selected . . . . [M]esh neighbors are randomly
`chosen . . . . Efficient random selection is achieved through a
`frame delivery mode called ‘mesh anycast’, whereby a
`discovery message takes a random walk along the mesh,
`randomly stopping at some member.”
`Dec. 10 (quoting Pet. 51 (citing Ex. 1005, 14)).
`Petitioner tacitly admits that Francis does not disclose sending an
`edge connection request, by explaining that Gilbert, rather than Francis, is
`the reference relied upon for a teaching of this claim element. Pet. 51.
`As a preliminary matter, Petitioner’s argument that it provided
`
`argument concerning motivation to combine in three sections of its Petition,
`whereas Patent Owner “provided virtually no basis to contest those
`arguments and no corresponding evidence,” is not relevant to this Request
`
`5
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`IPR2017-01600
`Patent 6,910,069 B1
`
`for Rehearing specifically, and is not probative of Petitioner’s general
`contention that a trial should be instituted on these claims. Req. 10.
`
`Petitioner’s argument on rehearing that the Board overlooked the
`argument that Francis and Gilbert are properly combined first refers to
`remarks made in the introductory section of the Petition. Req. 11 (citing Pet.
`17–26). Petitioner argues that Gilbert teaches that there is “ample flexibility
`in the design and selection of techniques for adding nodes to networks.”
`Req. 12 (citing Pet. 18, 24–25).
`
`Petitioner then cites its summary of the asserted ground for
`unpatentability. Req. 13 (citing Pet. 40–41). Here, Petitioner relies on
`language from KSR International Co. v. Teleflex Inc., 550 U.S. 98 (2007), to
`support its contention that the person having ordinary skill would have
`implemented Gilbert’s portal node process for adding a node because “(1) it
`was obvious to apply a known technique to yield predictable results and
`(2) obvious to use a known technique to improve similar devices.” Req. 13–
`14.
`Petitioner argues that motivation to modify Francis in view of Gilbert
`
`with regard to “a seeking participant contacts a fully connected portal
`computer” was discussed at pages 49–50 of the Petition. Req. 14.
`
`Petitioner then contends that a person having ordinary skill would
`have modified Francis to use Gilbert’s teachings of a portal node in order to
`improve network security and provide messaging efficiencies. Req. 15–16
`(citing Pet. 53–55).
`
`Petitioner’s arguments do not persuade us that we misapprehended or
`overlooked any points made in the Petition. In our Decision, we explicitly
`referred to pages 53–55 of the Petition in discussing Francis’s teaching of
`
`6
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`IPR2017-01600
`Patent 6,910,069 B1
`
`“rendezvous hosts,” and Petitioner’s argument that modifying Francis’s
`rendezvous host with the features of Gilbert’s portal computer would
`provide some messaging efficiencies. Dec. 11. We concluded that
`Petitioner “fails to explain sufficiently why it would have been obvious to
`combine Francis and Gilbert to have a seeking participant contact a fully
`connected portal computer as claimed.” Id. at 11–12.
`
`As stated by Petitioner, pages 17–26 of the Petition are introductory
`material discussing techniques in the relevant art for adding a node to a
`network. Such material merely provides basis for further argument later in
`the Petition. As such, we do not agree that the Board misapprehended or
`overlooked this material. It informed our understanding of the arguments
`that we cited in the Decision.
`
`Pages 40–41 of the Petition provide only a general discussion of
`Gilbert and Declarant Dr. Bambos’s opinion concerning the combination of
`Gilbert and Francis.
`
`Pages 49–50 of the Petition merely assert that Gilbert discloses “a
`joining node contacting a fully connected portal computer.” Petitioner
`alleges similarities between Francis’s rendezvous host and Gilbert’s
`“dynamic and flexible approach for using a portal computer to manage a
`network.”
`
`In the Board’s view, however, these portions of the Petition were fully
`considered in reaching our decision, and we did not overlook or
`misapprehend these portions. We maintain our finding that Francis does not
`teach an edge connection request. See Dec. 12. We maintain our conclusion
`that Petitioner has not established that Francis “encourages the use of a
`multi-functional node on the network,” or that “Gilbert, in turn, describes
`
`7
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`IPR2017-01600
`Patent 6,910,069 B1
`
`precisely such multi-functional nodes.” Pet. 54; see Dec. 11–12. Petitioner
`has not substantiated its allegation that it would have been obvious to
`modify Francis to include Gilbert’s “joinder module,” or that Gilbert’s
`network manager is a “perfect complement” to the functionality of Francis’s
`“rendezvous host.” Pet. 54.
`
`
`ORDER
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
`
`is denied.
`
`
`
`
`FOR PETITIONER:
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`
`FOR PATENT OWNER:
`
`James Hannah
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`8
`
`
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