Paper 13
`Trials@uspto.gov
`Entered: March 14, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-01280
`Patent 7,844,037 B2
`____________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`Trials@uspto.gov
`Entered: March 14, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-01280
`Patent 7,844,037 B2
`____________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition to institute inter partes
`review of claims 1–16 and 181 of U.S. Patent No. 7,844,037 B2 (Ex. 1001,
`“the ’037 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”).
`Qualcomm Incorporated (“Patent Owner”) filed a Patent Owner Preliminary
`Response. Paper 10 (“Prelim. Resp.”). The Board issued a Decision
`denying institution of inter partes review. Paper 11 (“Decision”; “Dec.”).
`On March 4, 2019, Patent Owner filed a timely Request for Reconsideration
`of the Decision. Paper 12 (“Request”; “Req.”).
`For the reasons that follow, Petitioner’s request for rehearing is
`denied.
`
`II.
`
`STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” The party
`requesting rehearing has the burden of showing that the decision from which
`rehearing is sought should be modified and “[t]he 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.” 37 C.F.R. § 42.71(d).
`
`
`1 The Petition also sought inter partes review of claims 19–25. However,
`because those claims have been statutorily disclaimed, they are treated as if
`they were never part of the ’037 patent. See Dec. (Paper 11), 5–6. For the
`same reasons, we do not address any arguments in the Request that refer to
`claims 19–25.
`
`2
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`III. ANALYSIS
`First, Petitioner argues that the Board overlooked the fact that the
`Examiner never relied on Brown in addressing the features of dependent
`claims 2, 5, 6, 12, 13, 14, 15, 16, and 18 of the ’037 patents. Req. 3–5. For
`example, Petitioner points to a rejection of then-pending claim 16, which
`issued as claim 15, in which the Examiner relied solely on Fostick for the
`limitation recited in the claim. Id. at 4 (citing Ex. 1002, 182–85).
`Therefore, according to Petitioner, “the Office did not cite or rely on any
`teachings from Brown in addressing the features of claim 16” and “[t]he
`Office’s treatment of many other then-pending claims is no different.” Id.
`(citing Ex. 1002, 182–85).
`Petitioner further argues that in contrast to the rejections during
`prosecution, “the Petition specifically applies disclosure from Brown to
`features of claims 2, 5, 6, 12, 13, 14, 15, 16, [and] 18, . . . each earlier
`addressed by Fostwick during prosecution.” Id. at 4–5 (citing Ex. 1002,
`182–85). Petitioner further argues that the correction of this
`“misapprehension[] or oversight[] shifts the Becton[2] factors to favor
`institution of the Petition.” Id. at 5 (emphasis added); see also id. at 11–15
`(arguing the Becton factors in light of corrected misapprehensions or
`oversights).
`We are not persuaded that we misapprehended or overlooked the
`Examiner’s use of Brown during the prosecution of the ’037 patent. “A
`claim in dependent form shall be construed to incorporate by reference all
`
`
`2 Becton, Dickinson & Company v. B. Braun Melsungen AG, Case
`IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8)
`(informative).
`
`3
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`the limitations of the claim to which it refers.” 35 U.S.C. § 112 ¶ 4. 3 A
`corollary of that rule is that any finding made by the Examiner regarding
`how a prior art reference teaches a limitation recited in an independent claim
`similarly applies to the dependent claim. Stated differently, although the
`Office Action did not explicitly state that the Examiner was relying on
`Brown for a limitation recited in dependent claim 16, because the rejection
`encompasses all of the limitations in both dependent claim 16 and
`independent claim 1 from which it depends, such an incorporation was
`implicit. Therefore, contrary to Petitioner’s arguments, the Examiner relied
`on Brown in rejecting all of the dependent claims in the July 24, 2009 Office
`Action. See Ex. 1002, 178–185.
`Second, Petitioner argues that we overlooked or misapprehended the
`Office’s use of Brown in rejecting claims during the prosecution of the
`’037 patent. Req. 5–7. Specifically, Petitioner notes that the Office never
`rejected the claims that eventually issued in the ’037 patent over Brown and
`thus, never applied Brown to the prompting step which was added in an
`amendment. Id. at 5–6. Instead, Petitioner points out that after the applicant
`amended the claims to include the prompting step, the Office “presented a
`new rejection over a different combination (Fostwick and Burg) and made
`no statement about the propriety of the prior rejection or whether Patent
`Owner’s arguments regarding Brown were persuasive.” Id. at 6 (citing
`Ex. 1002, 144, 149). Petitioner further argues that the correction of this
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 112. Because the ’037 patent issued from an application filed
`before the effective date of the AIA, we apply the pre-AIA version of
`section 112.
`
`4
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`“misapprehension[] or oversight[] shifts the Becton factors to favor
`institution of the Petition.” Id. at 7 (emphasis added); see also id. at 11–15
`(arguing the Becton factors in light of corrected misapprehensions or
`oversights).
`Contrary to Petitioner’s argument, the Board neither overlooked nor
`misapprehended the prosecution of the ’037 patent. To the contrary, the
`Decision explicitly discusses what Petitioner says the Board overlooked or
`misapprehended. For example, the Decision included the following
`discussion of Patent Owner’s argument relating to the amendment of the
`claims during prosecution, which states that new prior art was asserted after
`the amendment of the claim to include the prompting step:
`More specifically, Patent Owner argues that following a
`rejection based on Fostick and Brown, Applicant amended
`claim 1 to include the “prompting a user” step. Id. at 36–37
`(citing Ex. 1002, 165). Patent Owner further argues that
`Applicant argued, in light of the claim amendment, that Brown
`does not teach the limitation; instead, according to Applicant,
`Brown teaches that “the messages were either (i) sent over the
`same voicepath as the incoming call, and/or (ii) the messages
`were sent without requesting user input in response to an
`incoming call.” Id. at 37–38 (citing Ex. 1002, 166–68). Patent
`Owner further argues “the Examiner understood that Brown
`did not disclose [the prompting step] and withdrew the
`rejection over the combination of Fostick and Brown in the
`subsequent office action. Id. at 38 (citing Ex. 1002, 141)
`(emphasis omitted). However, according to Patent Owner,
`“Petitioner argues that the very same limitation is disclosed in
`Brown.” Id. at 39 (emphasis omitted).
`Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors,
`we explicitly found that although the Examiner originally rejected the claims
`based on Brown, “[f]ollowing an amendment to the claims adding the
`prompting step along with arguments by the applicant explaining why
`
`5
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`Brown did not teach that new limitation, the Examiner shifted to new
`references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142–
`149, 156–168, 178–181). In other words, twice we explicitly acknowledged
`what Petitioner now argues we overlooked.
`Moreover, as we found in the Decision, contrary to Petitioner’s
`argument, the Examiner at least implicitly—if not explicitly—addressed
`Brown and the prompting step. The Examiner found that none of the cited
`prior art taught the prompting step:
`Regarding claims 1, 19, and 30, in combination with
`other limitations of the claims, the prior art of record fails to
`disclose or specifically suggested in response to receiving the
`incoming call, prompting a user of the first computing device to
`enter user input that instructs the first computing device to
`handle the incoming call by composing, while not answering
`the incoming call, a message to a user of the second computing
`device; and responsive to receiving the incoming call and the
`user entering the user input, automatically addressing the
`message to the second computing device using the message
`identifier determined from the incoming call.
`Dec. 14–15 (quoting Ex. 1002, 35) (emphasis added in Decision). Because
`the Examiner was aware of Brown and that it was prior art of record, the
`Examiner found Brown did not teach the prompting step.
`Third, Petitioner argues that the Board “misapprehends or overlooks
`differences between the Petition’s comprehensive application of Brown to
`the independent claims and, by contrast, the Office’s limited reliance on
`Brown as to the independent claims during prosecution.” Req. 9.
`Specifically, Petitioner argues that although the Examiner relied on Brown
`as a supporting reference, the Petition identifies Brown as a primary
`reference that teaches each limitation of the independent claim. Id. at 8–9.
`Petitioner further argues that the correction of this “misapprehension[] or
`
`6
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`oversight[] shifts the Becton factors to favor institution of the Petition.” Id.
`at 9 (emphasis added); see also id. at 11–15 (arguing the Becton factors in
`light of corrected misapprehensions or oversights).
`However, the Board’s analysis focused on the prompting step and
`whether the Petition’s arguments regarding Brown were previously
`considered and rejected by the Office. See Dec. 15 (“Although the other
`references relied on in the Petition for other claims[’] limitations are
`different, the focus of Petitioner’s arguments relating to the prompting step
`are the same as the Examiner considered and rejected during original
`examination of the application that issued as the ’037 patent.”). Therefore,
`whether the Petition relied on Brown for other limitations is inapposite.
`Accordingly, we did not overlook the differences between how Brown was
`used by the Examiner compared to how it was used in the Petition.
`Fourth, Petitioner argues that we overlooked the fact that the Petition
`cites additional sections of Brown not cited by the Examiner. See Req. 9–
`11. Specifically, Petitioner states that the Examiner cited only paragraph 27
`and applicant cited paragraph 30 and the corresponding steps in figures. Id.
`9–10. On the other hand, the Petition cites to nine paragraphs and eight
`claims cited by neither the Examiner nor the applicant during prosecution.
`Id. at 10. This includes paragraph 26, which is relied on by Petitioner for the
`prompting step. Id. at 10 (citing Pet. 17). Petitioner further argues that the
`correction of this “misapprehension[] or oversight[] shifts the Becton factors
`to favor institution of the Petition.” Id. at 11 (emphasis added); see also id.
`at 11–15 (arguing the Becton factors in light of corrected misapprehensions
`or oversights).
`
`7
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`We disagree. As we found in the Decision, with regard to the
`prompting step, the Petition relies on the same embodiments considered by
`the Examiner during the prosecution of the ’037 patent:
`Specifically, Petitioner relies on Brown Figure 2 embodiment
`(as discussed in paragraph 26) and the Brown Figure 4
`embodiment (as discussed in paragraph 30). See id. at 17–18;
`Ex. 1005 ¶¶ 26, 30. During prosecution of the ’037 patent, the
`Examiner initially rejected the claims of the application based
`on, inter alia, the Brown Figure 2 embodiment (as discussed in
`paragraph 27). See Ex. 1002, 181; Ex. 1005 ¶ 27.
`Additionally, the applicant argues that neither the Brown Figure
`2 embodiment nor the Brown Figure 4 embodiment taught the
`prompting step. Ex. 1102, 167–68.
`Dec. 10. Although the applicant did not specifically direct the Examiner to
`Brown paragraph 26, the applicant directed the Examiner to Brown Figure 2,
`which has the same teachings. Compare Ex. 1005 ¶ 26 (discussing blocks
`202 and 204 in Figure 2), with id. at Fig. 2 (reciting the steps for blocks 202
`and 204).
`Additionally, the other paragraphs cited in the Petition were not for
`the prompting step, which was the focus of our analysis.
`Fifth, Petitioner argues that “[t]he misapprehensions or oversights
`described above affected the Decision[’]s application of at least the first,
`second, third, and fourth Becton factors, all of which were weighed in the
`Decision against institution.” Req. 11. More specifically, Petitioner argues
`that “absent the misconceptions or oversights described in this Request, the
`totality of the Becton factors would weigh in favor of institution of the
`Petition.” Id. at 15; see also id. at 11–15 (applying Becton factors).
`For the reasons explained above, we are not persuaded that we
`misapprehended or overlooked any material facts. Moreover, Petitioner
`
`8
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`never explicitly nor implicitly addressed the Becton factors in the Petition,
`and new arguments are not permitted in a request for rehearing absent
`exceptional circumstances, of which none have been identified here.
`Accordingly, Petitioner has not carried its burden of demonstrating we
`misapprehended or overlooked any matters in our Decision denying
`institution of inter partes review, and certainly not to an extent which would
`constitute an abuse of discretion.
`
`IV. ORDER
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`9
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`tar@fr.com
`riffe@fr.com
`
`PATENT OWNER:
`
`Brian W. Oaks
`Chad Walters
`Charles Yeh
`Eliot Williams
`Joseph Akalski
`Jessica Lin
`BAKER BOTTS L.L.P.
`brian.oaks@bakerbotts.com
`chad.walters@bakerbotts.com
`charles.yeh@bakerbotts.com
`eliot.williams@bakerbotts.com
`joe.akalski@bakerbotts.com
`jessica.lin@bakerbotts.com
`
`
`10
`
`
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