`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 26
`Entered: July 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018–01079
`Patent 8,213,970 B2
`____________
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`ZADO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Case IPR2018-01079
`Patent 8,213,970 B2
`
`
` INTRODUCTION
`AGIS Software Development, LLC (“Patent Owner”) seeks rehearing
`(Paper 12, “Request” or “Req. Reh’g.”) of the Institution Decision (Paper 9,
`“Decision” or “Inst. Dec.”) in this proceeding, in particular, the
`determination that Google, LLC (“Petitioner”) demonstrated a reasonable
`likelihood it would prevail in showing unpatentablility of claim 1 of the
`challenged patent based on the combination of Kubala and Hammond.
`Patent Owner asserts that the Board’s determination is incorrect because: (1)
`the Board “overlooked and/or misapprehended” argument that “Petitioner
`made no attempt to combine the teachings of Kubala and the ‘other prior art
`solutions [disclosed in Kubala],’ such as ‘read receipts,’ because there is no
`reason or motivation to do so”; and (2) the Decision “overlooks the fact that
`Kubala distinguishes between prior art approaches based on flags (as in flag
`216) and those based on return receipts.” Id. at 2, 4.
`For the reasons discussed below, we deny the Request.
` DISCUSSION
`The applicable standard for granting a request for rehearing of a
`petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party
`seeking rehearing has the burden of showing the decision should be
`modified:
` (d) Rehearing. . . . The burden of showing a decision should
`be modified lies with the party challenging the decision. 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, and
`opposition, or a reply.
`37. C.F.R. § 42.71(d).
`
`2
`
`
`
`Case IPR2018-01079
`Patent 8,213,970 B2
`
`
`With regard to the ground at issue (i.e., Kubala combined with
`Hammond), Petitioner relies on Kubala, a printed patent application, as the
`primary reference. For limitation 1.5, which recites “requiring the forced
`message alert software on said recipient PDA/cell phone to transmit an
`automatic acknowledgment to the sender PDA/cell phone as soon as said
`forced message alert is received by the recipient,” Petitioner relies on
`Kubala’s disclsoure of automotaically sending, when an e-mail arrives at its
`intended destination, a return receipt to the sender, thereby providing
`acknowledgement that the e-mail has been received by the intended
`recipient. Paper 2, 30 (“Petition” or “Pet.”) (citing Ex. 1005 ¶ 6). Because
`Kubala describes sending a return receipt as a prior art solution, Patent
`Owner argued in the Preliminary Response that Petitioner must show a
`motivation to combine this feature with “Kubala’s device,” e.g., the device
`described in Kubala as the alleged invention. Paper 6, 36–37 (“Prelim.
`Resp.”). According to Patent Owner, Petitioner failed to articulate sufficient
`reasoning. Id. In particular, Patent Owner argued there is no motivation to
`combine return receipts with Kubala’s device, which uses flags to indicate to
`e-mail recipients that a mandatory response is required. Id. Patent Owner
`argued, furthermore, that an ordinarily skilled artisan would have understood
`Kubala to teach away from using return receipts in Kubala’s device. Id. In
`the Request, Patent Owner asserts that we overlooked and/or
`misapprehended its arguments. Req. Reh’g 2–5. We disagree.
`We considered, and addressed, Patent Owner’s arguments, and found
`them to be unavailing. Inst. Dec. 30–32. As noted in the Decision,
`Petitioner’s declarant, Mr. Williams, articulated a rationale to combine,
`namely that due to uncertainty as to whether an e-mail message was
`
`3
`
`
`
`Case IPR2018-01079
`Patent 8,213,970 B2
`
`received, return receipts provided a well-known benefit. Id. at 31–32 (citing
`Ex. 1003 ¶ 103). Also discussed in the Decision, based on the record at the
`time, we disagreed that Kubala teaches away from the use of return receipts,
`and provided the reasons for disagreement, explaining that contrary to Patent
`Owner’s arguments, there was no evidence of incompatibility between
`sending return receipts and flagging e-mail messages to indicate requirement
`of a mandatory response. Id. at 30–32. Thus, we considered Patent Owner’s
`arguments in rendering the Decision.
`CONCLUSION
`For the foregoing reasons, Patent Owner has not shown that the Board
`misapprehended or overlooked a matter. We, therefore, are not persuaded to
`modify the Decision.
`
`
` ORDER
`
`Accordingly, it is:
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2018-01079
`Patent 8,213,970 B2
`
`For PETITIONER:
`
`Jonathan Tuminaro
`Robert Sokohl
`Karen Wong-Chan
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`jtuminar-ptab@sternekessler.com
`rsokohl-ptab@sternekessler.com
`kwchan-ptab@sternekessler.com
`
`For PATENT OWNER:
`
`Vincent Rubino
`Peter Lambrianakos
`Enrique Iturralde
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`plambrianakos@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`
`5
`
`
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