`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner,
`
`
`Patent No. 8,213,970
`Filing Date: November 26, 2008
`Issue Date: July 3, 2012
`
`Inventor: Malcolm K. Beyer, Jr.
`Title: METHOD OF UTILIZING FORCED ALERTS FOR
`INTERACTIVE REMOTE COMMUNICATIONS
`
`__________________________________________________________________
`
`AGIS SOFTWARE DEVELOPMENT LLC’S
`REQUEST FOR REHEARING
`
`Case No. IPR2018-01079
`______________________________________________________________________________
`
`
`
`
`
`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION ........................................................................................... 1
`
`
`
`I.
`
`II.
`
`LEGAL STANDARD FOR REHEARING .................................................... 1
`
`III. KUBALA DOES NOT DISCLOSE CLAIM LIMITATION 1.5 ................... 2
`
`A.
`
`The Board Overlooked Petitioner’s Failure to Allege
`Obviousness for Claim Limitation 1.5 .................................................. 2
`
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`i
`
`
`
`I.
`
`INTRODUCTION
`
`On November 20, 2018, the Board issued a decision instituting inter partes
`
`review (“IPR”) of claims 1 and 3-9 (the “Challenged Claims”) of U.S. Patent No.
`
`8,213,970 (Ex. 1001, “the ’970 Patent”). Paper 9 at 2. The Board determined that
`
`Petitioner satisfied the threshold for institution as to claim 1 only. Paper 9 at 36-
`
`37. For the reasons presented herein and pursuant to 37 C.F.R. § 42.71, Patent
`
`Owner respectfully requests reconsideration and denial of the petition in its
`
`entirety.
`
`II. LEGAL STANDARD FOR REHEARING
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R. §
`
`42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. 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, an
`opposition, or a reply.
`
`When rehearing a decision on institution, a panel will 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
`
`1
`
`
`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393
`
`
`
`F.3d 1277, 1281 (Fed. Cir. 2005).
`
`III. KUBALA DOES NOT DISCLOSE CLAIM LIMITATION 1.5
`
`On August 23, 2018, Patent Owner filed a preliminary response (Paper 6,
`
`“POPR”) arguing that Petitioner failed to meet its burden to show that Kubala
`
`discloses “said forced message alert software packet containing a list of possible
`
`required responses and 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,”
`
`as required in claim limitation 1.5. POPR at 36, 38. Patent Owner identified
`
`several overlooked reasons for this deficiency. Among the reasons, Patent Owner
`
`argued expressly that Petitioner made no attempt to combine the teachings of
`
`Kubala and the “other prior art solutions,” such as “read receipts,” because there is
`
`no reason or motivation to do so. POPR at 37. Patent Owner respectfully requests
`
`reconsideration of these overlooked and/or misapprehended arguments.
`
`A. The Board Overlooked Petitioner’s Failure to Allege
`Obviousness for Claim Limitation 1.5
`
`Petitioner does not allege any obviousness combination to disclose “said
`
`forced message alert software packet containing a list of possible required
`
`responses and requiring the forced message alert software on said recipient
`
`2
`
`
`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`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.” Pet. at
`
`30; POPR at 36-37. Rather than specify a particular element or embodiment of
`
`Kubala, Petitioner submits a two-sentence explanation based on “other prior art
`
`solutions” which bear no association to Kubala’s mandatory flag 216. Pet. at 30.
`
`Petitioner does not provide any obviousness analysis to show the differences
`
`between Kubala’s embodiments and the “other prior art solutions” nor does
`
`Petitioner explain how a person of ordinary skill in the art would have understood
`
`the teachings, to the extent such teachings exist, and would have modified those
`
`teachings to arrive at the claim limitation 1.5 and the claimed invention as a whole.
`
`In its findings of fact, the Board credited the Petition but relied only on an
`
`unrelated opinion from the Williams Declaration. Pet. at 31 (citing Ex. 1003 at
`
`103). Accordingly, the Board misapprehended the Petition and associated
`
`evidence and found an obviousness combination where none existed. Moreover,
`
`the Board’s conclusion that it discerned no “incompatibility” in using both flags
`
`and read receipts was not based on any evidence in either the Petition or supporting
`
`declaration. Paper 9 at 31.
`
`As Patent Owner stated in its POPR, Petitioner failed to present any
`
`obviousness analysis to support a combination based on Kubala and the “other
`
`3
`
`
`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`prior art solutions” such as “read receipts” which are two distinct approaches.
`
`
`
`POPR at 37. The Board misapprehends the “prior art solutions” in Kubala and
`
`overlooks the fact that Kubala distinguishes between prior art approaches based on
`
`flags (as in flag 216) and those based on return receipts. Pet. at 30. In the same ¶
`
`0006 to which the Board bases its findings of fact, Kubala states:
`
`Prior art solutions have provided the ability to mark
`an e-mail message with a priority flag that indicates a
`normal priority, a high priority, or a highest priority,
`thereby allowing an employee to identify and respond
`to the most important e-mail messages from the
`sender's perspective.
`
`Ex. 1005, ¶ 0006. Kubala then contrasts the flag-based approach with the general
`
`statement about return receipts, to which the Board relies on for disclosure of claim
`
`limitation 1.5.
`
`Other prior art solutions have provided the ability to
`generate return receipts to the sender when the
`sender's e-mail message is received at its intended
`destination or when the recipient opens the e-mail
`message, thereby providing an acknowledgment that
`a particular message has been received and/or
`opened.
`
`Ex. 1005, ¶ 0006.
`
`
`
`As argued in the preliminary response, this single sentence referring to
`
`“other prior art solutions” is not included in Kubala’s mandatory flag 216
`
`embodiment and Petitioner does not submit the “other prior art solutions” in
`
`4
`
`
`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`combination with the requisite obviousness analysis. Accordingly, Petitioner
`
`
`
`failed to identify how the prior art discloses or suggests the “said forced message
`
`alert software packet containing a list of possible required responses and 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,” as required by claim limitation 1.5.
`
`POPR at 36-38.
`
`IV. CONCLUSION
`
`But for the Board’s misapprehension, the Board would have found no
`
`“reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`of the claims challenged in the Petition.” For the foregoing reasons, Patent Owner
`
`respectfully requests reconsideration in favor of a denial of institution of the
`
`Petition in its entirety.
`
`
`
`Dated: December 4, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Vincent J. Rubino, III/
`
`
`
`
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: vrubino@brownrudnick.com
`
`
`5
`
`
`
`
`
`
`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`Peter Lambrianakos (Reg. No. 58,279)
`Enrique W. Iturralde (Reg. No. 72,883)
`Back-up Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`Email: eiturralde@brownrudnick.com
`
`6
`
`
`
`
`
`
`
`IPR2018-01079
`U.S. Patent No. 8,213,970
`
`CERTIFICATE OF SERVICE
`
`A copy of AGIS SOFTWARE DEVELOPMENT LLC’S REQUEST FOR
`
`REHEARING has been served on Petitioner’s counsel of record at the
`
`correspondence of the Petitioner as follows:
`
`Jonathan Tuminaro (Reg. No. 61,327)
`Robert E. Sokohl (Reg. No. 36,013)
`Karen Wong-Chan (Reg. No. 69,235)
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`1100 New York Avenue
`N.W., Washington, D.C. 20005
`jtuminar-PTAB@sternekessler.com
`rsokohl-PTAB@sternekessler.com
`kwchan-PTAB@sternekessler.com
`PTAB@sternekessler.com
`
`
`
`December 4, 2018
`
`
`
`By:
`
`/Vincent J. Rubino, III /
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: vrubino@brownrudnick.com
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
