IPR2017-01934
`Patent No. 8,799,468
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`UNIFIED PATENTS INC.,
`Petitioner,
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`v.
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`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner.
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`____________
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`IPR2017-01934
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`U.S. Patent 8,799,468
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`____________
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`Patent No. 8,799,468
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
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`v.
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`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner.
`
`____________
`
`IPR2017-01934
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`U.S. Patent 8,799,468
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`____________
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ................................................................................. ii
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`I.
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`Summary ........................................................................................................... 1
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`II. Legal Standard ................................................................................................. 2
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`III. Argument .......................................................................................................... 3
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`IV. Conclusion ......................................................................................................... 7
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`i
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`Cases
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`TABLE OF AUTHORITIES
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`Nexeon Ltd. v. OneD Material, LLC, IPR2017-00543, Paper 14 (P.T.A.B. Sep. 21,
`2017) .......................................................................................................................... 2
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`Rules
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`37 C.F.R. § 42.71(d) ..............................................................................................1, 2
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`ii
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`I. SUMMARY
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`Petitioner requests rehearing under 37 C.F.R. § 42.71(d) of the Board’s
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`Decision Denying Institution of Inter Partes Review (Paper 10, “Decision”) holding
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`that, for Ground 1, Petition for Inter Partes Review (Paper 1, “Petition”) did not
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`establish a reasonable likelihood that Petitioner would prevail in showing the
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`unpatentability of certain claims of U.S. Patent 8,799,468 (Ex. 1001, “the ’468
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`patent”).
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`The Board denied institution of Ground 1 by finding that Petitioner did not
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`show how the prior art taught a gateway unit receiving controller instructions from
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`a controller node through a service provider network. (Decision at 7–13.) But the
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`Petition cited to a prior art passage (i.e., U.S. Patent 5,987,611 to Freund, Ex. 1004,
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`“Freund”) disclosing exactly that—controller instructions received through a
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`service provider network. (Petition at 29 and 39–40 (citing Ex. 1004 at 22:22–31).)
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`Petitioner’s declarant, Norman Hutchinson, Ph.D., testified explicitly that the
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`gateway units receive controller instructions from the controller node through a
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`service provider network. (Ex. 1003, “Hutchinson Declaration,” at ¶¶ 99 and 117.)
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`The Board overlooked this evidence and did not reference or discuss this passage in
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`deciding whether to institute.
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`The Decision stopped analyzing Freund one line before this passage, though
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`it was cited by Petitioner. (Compare Decision at 11–12 (citing Freund at 21:57–64
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`1
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`and 22:7–21), with Petition at 29 and 39–40 (citing Ex. 1004 at 22:22–31).) In
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`overlooking this explicit disclosure, the Decision also mistakenly concluded that the
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`Hutchinson Declaration does not address the embodiment of Freund’s Fig. 3B, to
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`which 22:22–31 relates. (See Decision at 12.) Thus, Ground 1 was improperly
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`denied. (Decision at 12–13).
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`Petitioner respectfully requests that the Board reconsider its decision and
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`institute inter partes review of claims 1–5, 9, 12, 19, 23–27, and 33 under Ground 1
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`of the Petition.
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`II. LEGAL STANDARD
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each matter
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`was previously addressed in a motion, an opposition, or a reply.” (37 C.F.R.
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`§ 42.71(d).) Here, Petitioner requests rehearing of matters the Board overlooked
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`from evidence cited in and submitted with its Petition. This request should be granted
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`because the overlooked evidence is clearly missing from the Board’s analysis and
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`would have directly addressed an allegedly missing disclosure from the prior art if
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`it had been properly analyzed. (See Nexeon Ltd. v. OneD Material, LLC, IPR2017-
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`00543, Paper 14 (P.T.A.B. Sep. 21, 2017) (granting request for rehearing decision
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`and overturning denial of institution based on misapprehension of prior art).)
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`2
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`III. ARGUMENT
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`Claim 1 of the ’468 patent recites:
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`each of the plurality of gateway units comprising … a
`second network interface coupled to the service provider
`network and configured
`to receive
`the controller
`instructions from the controller node through the service
`provider network.
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`(Ex. 1001 at 18:39–46, emphasis added.) This limitation is designated as claim
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`“1[f]” in the Petition and is discussed in Ground 1 with respect to at least Fig. 3B of
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`Freund. (Petition at 38–40.) Fig. 3B of Freund is reproduced below:
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`As explained in the Petition, Freund discloses gateway units (clients) with
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`network interfaces that connect the clients to the service provider network (Internet)
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`through “Points-of-Presence” (POPs), which may include “a series of modems…, a
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`server or LAN, and one or more router.” (Petition at 38–39 (citing Ex. 1004 at 21:57–
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`64).) The Petition further clarified that controller instructions are received by the
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`clients from the supervisor server over the network interfaces:
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`[O]ver this connection, the network interface will receive
`controller instructions. (EX1004, 22:23-27 (“the monitor
`contacts the central supervisor application 373 on the ISP
`supervisor server 372 in order to receive access rules”)).
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`(Petition at 39–40; Hutchinson Declaration at ¶ 117.) This explanation elaborated on
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`an earlier statement introducing Fig. 3B:
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`With respect to Fig. 3B, Freund discloses that the clients
`(e.g., client 310a) receive access rules (i.e., controller
`instructions) from
`the supervisor before users are
`permitted to use certain network resources. (EX1004,
`22:22-31; EX1003, ¶¶98-99).
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`(Petition at 29; Hutchinson Declaration at ¶¶ 98–99.)
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`The cited section of Freund recites, in its entirety:
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`The Client Monitor on the client PC (e.g., monitor 311a)
`monitors the log-in process. Once the limited access to the
`Internet is established, the monitor contacts the central
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`4
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`supervisor application 373 on the ISP supervisor server
`372 in order to receive access rules and other required
`components. Once the central supervisor application 373
`is satisfied that the Client Monitor has received the
`appropriate access rules and is working satisfactory, it
`contacts the POP server 320a to signal that the user now
`has full Internet access.
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`(Ex. 1004 at 22:23–27, emphases added.)
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`Therefore, the Petition showed that Freund discloses “gateway units . . .
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`configured to receive the controller instructions from the controller node through the
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`service provider network,” as recited by limitation 1[f] of the ’468 patent. This is
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`because Freund explicitly discloses the client monitor receiving access rules from
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`the supervisor through the service provider network.
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`The Board overlooked these disclosures in Freund, as well as their
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`explanations in the Petition and Hutchinson Declaration, when it concluded that
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`“Freund … does not disclose client 310 (the ‘gateway unit’) receiving rules from the
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`supervisor node over Internet 340 in [the embodiment of Fig. 3B].” (Decision at 11–
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`12.) Instead, the Board analyzed an incomplete portion of Petitioner’s Freund
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`citations.
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`First, the Board acknowledged that Freund’s Fig. 3B shows an “ISP-based
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`embodiment” including a supervisor node (supervisor 373) located remotely from a
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`5
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`client 310 and connected to the client 310 through POPs 320a. (Decision at 11.) It
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`then stated that “client 310 does not receive rules from supervisor 373 over Internet
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`340,” but that “[i]nstead, POP 320a receives rules from supervisor 373 over Internet
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`340.” (Decision at 11.)
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`For support, the Decision only cites to Freund at 21:57–64 and 22:7–21.
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`(Decision at 11–12.) This overlooks Petitioner’s citation of Freund at 22:22–31
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`(Petition at 29), which directly contradicts the Board’s finding that the Freund
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`clients do not receive rules from the supervisor. This oversight of Freund’s
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`description, concurrent Petition explanation, and supporting direct testimony
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`(Hutchinson Declaration) should be reconsidered.
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`Additionally, the Decision alleges that “Dr. Hutchinson does not address this
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`alternate embodiment,” referring to Fig. 3B, and thus accords his testimony little
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`weight. (Decision at 12.) This statement misapprehends his testimony, and overlooks
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`that the embodiment of Fig. 3B was discussed several times by Dr. Hutchinson:
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`With respect to Fig. 3B, Freund discloses that the clients
`(e.g., client 310a) receive access rules (i.e., controller
`instructions) from
`the supervisor before users are
`permitted to use certain network resources. (EX1004,
`22:22-31).
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`(Hutchinson Declaration at ¶ 99; see also Hutchinson Declaration at ¶¶ 98, 117, 132,
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`172–174, and 177–180.)
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`6
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`Thus, the Board overlooked evidence that directly refutes its assertion that
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`“client 310 does not receive rules from supervisor 373 over Internet 340” (Decision
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`at 11). This oversight directly led to the improper denial of institution of Ground 1
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`of the Petition. (Id. at 9 and 11-12.)
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`IV. CONCLUSION
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`For the reasons set forth above, Petitioner requests that the Board institute a
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`rehearing to grant institution of inter partes review for claims 1–5, 9, 12, 19, 23–27,
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`and 33 of the ’468 patent pursuant to Ground 1 of the Petition.
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`Dated: March 28, 2018
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`Respectfully submitted,
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`ROPES & GRAY LLP
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`By: /Scott A. McKeown/
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`Scott A. McKeown
`Reg. No. 42,866
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`Phone: +1-202-508-4740
`Fax: +1-617-235-9492
`scott.mckeown@ropesgray.com
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`Attorneys for Petitioner, Unified Patents
`Inc.
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`IPR2017-01934
`Petitioner’s Request for Rehearing
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing PETITIONER’S REQUEST
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`FOR REHEARING UNDER 37 C.F.R. § 42.71(d) was served by filing this
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`document through the Patent Trial and Appeal Board End to End (PTAB E2E) as
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`well as providing a courtesy copy via electronic mail to the following attorneys of
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`record for the Patent Owner listed below:
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`Jeffrey G. Toler (Lead Counsel)
`Reg. No. 38,342
`Toler Law Group, PC
`8500 Bluffstone Cove, Suite A201
`Austin, TX 78759
`jtoler@tlgiplaw.com
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`Aakash Parekh (Back-up Counsel)
`Reg. No. 63,536
`Toler Law Group, PC
`8500 Bluffstone Cove, Suite A201
`Austin, TX 78759
`aparekh@tlgiplaw.com
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`Dated: March 28, 2018
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`By: /Crena Pacheco/
`Name: Crena Pacheco
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`ROPES & GRAY LLP
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