`Trials@uspto.gov
`571-272-7822
`
`
`Paper: 82
`Date: December 4, 2023
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2021-01413
`Patent 10,621,228 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request on
`Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
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`
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`IPR2021-01413
`Patent 10,621,228 B2
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`INTRODUCTION
`I.
`Unified Patents, LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1–7 (the “challenged claims”) of
`U.S. Patent No. 10,621,228 B2 (Ex. 1001, “the ’228 Patent”). We
`determined, based on the record at that time, that the ’228 patent was eligible
`for inter partes review, and instituted review on all challenged claims on the
`grounds presented in the Petition. Paper 15 (“Institution Decision” or “Inst.
`Dec.”).
`We entered a Final Written Decision (Paper 58, “Decision” or “Dec.”)
`finding that Petitioner had demonstrated by a preponderance of the evidence
`that the challenged claims are unpatentable. Patent Owner filed a Request
`for Rehearing of the Decision. Paper 69 (“PO Req.” or “Req. Reh’g”). We
`address the issues raised in Patent Owner’s request below.
`A. Legal Standards
`The applicable requirements for a request for rehearing are set forth in
`37 C.F.R. § 42.71(d), which provides:
`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, a reply, or a sur-reply.
`We review our Decision under an abuse of discretion standard.
`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 judgment
`in weighing relevant factors. 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
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`(Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`“Substantial evidence is ‘such relevant evidence as a reasonable mind might
`accept as adequate to support a conclusion.’” OSI Pharm., LLC v.
`Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (quoting Consol. Edison
`Co. v. N.L.R.B., 305 U.S. 197, 229 (1938)). “The substantial evidence
`standard asks ‘whether a reasonable fact finder could have arrived at the
`agency’s decision.’” OSI Pharm., 939 F.3d at 1381–82 (quoting Gartside,
`203 F.3d at 1312).
`B. New Evidence or Argument in Reply
`Patent Owner asserts that “[t]he Board failed to address Patent
`Owner’s argument that Petitioner’s Reply and Dr. Bederson’s Reply
`Declaration (Ex. 1038) were improper because they presented new
`arguments and evidence that were not in the Petition.” PO Req. 2 (citing
`PO Sur-reply 1–2).
`We disagree with Patent Owner’s assertions. First, the Board is not
`required to address every argument raised by a party or explain every
`possible reason supporting the Board’s conclusions. See Novartis AG v.
`Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017). Second, we
`disagree that Petitioner’s arguments and evidence submitted in reply are
`improper. Rather, they are responsive to arguments raised by Patent Owner
`in its Response. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078–
`1080 (Fed. Circ. 2015) (evidence submitted with an expert declaration filed
`with petitioner’s reply does not violate 37 C.F.R. § 42.23(b) where the
`expert declaration is responsive to patent owner’s arguments). Third, we
`fully considered Patent Owner’s arguments and evidence, but determined
`that Petitioner’s arguments and evidence were persuasive.
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`For example, Patent Owner argues in its Sur-reply that Petitioner’s
`Reply is improper because “several paragraphs of Dr. Bederson’s new
`declaration now claims it would have been obvious that Okamura’s cluster
`map matrix forms a map” although “[t]he Petition provided no obviousness
`analysis based on Okamura alone.” PO Sur-reply, 1 (citing Pet. Reply 3;
`Ex. 1038 ¶¶ 32–37; Pet. 19–20). However, Dr. Bederson’s testimony
`responds to Patent Owner’s argument and Dr. Reinman’s testimony that
`“Okamura alone does not render obvious a “map view including…an
`interactive map” and statement that the Petition “provides no obviousness
`analysis based on Okamura’s cluster maps.” Ex. 1038 ¶ 32 (citing PO Resp.
`34–37), see also id. ¶¶ 33–37. Petitioner’s reply and Dr. Bederson’s
`declaration (Ex. 1038) do not violate 37 C.F.R. § 42.23(b) where they are
`clearly responsive to Patent Owner’s arguments and evidence. See Belden,
`805 F.3d at 1078–1080.
`C. Limitations [1b], [1d], [1e], and Claim 3
`1. Construction of “Responsive To”
`
`Patent Owner argues that “[t]he Board should have construed this
`phrase and adopted Patent Owner’s construction of ‘responsive to,’” after
`“Petitioner relied on prior art requiring separate intervening inputs (rather
`than the single claimed input directly causing display of the claimed view).”
`PO Req. 3.
`With respect to claim construction, however, Patent Owner took the
`position in its Response that it “does not believe claim construction is
`required because the plain and ordinary meaning of the claims is clear.” PO
`Resp. 26. Petitioner was in accord, stating in the Petition that “no terms of
`the ’228 patent warrant construction beyond their ordinary and customary
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`meaning.” Pet. 8. We agreed with the parties that “no claim terms require
`express construction.” Dec. 18 (citing Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Nonetheless, with respect to these limitations, Patent Owner made the
`argument that “the claimed ‘map view’ displayed in response to the ‘first
`input’ must ‘includ[e]’ first and second ‘thumbnail image[s] … on the
`interactive map.’” PO Resp. 52. Patent Owner further argued that “[i]f
`Okamura and Flora were combined as Petitioner proposes, the PLACE tab
`413 (first input), would only cause Okamura’s cluster map display area 414
`(map view) and Flora’s geographic map 46 (interactive map) to be displayed
`without Flora’s icons 58, 59 (thumbnail image[s]) ‘on the interactive map’
`as claimed.” PO Resp. 52–53.
`In our analysis, we pointed out that “[t]he Petition explains that
`Okamura describes responsive to a first input (depressing PLACE tab 413),
`a cluster map display area 414 is displayed (causing a map view to be
`displayed) on a display interface of Okamura’s content playback application
`(on an interface). Dec. 47 (citing Pet. 14–20). “Combined with Flora,” we
`explained, “Okamura’s cluster map display area 414 (map view) displays
`content as taught by Flora’s geographic map 46 (interactive map) and media
`viewer 64, where Okamura’s content is indicated at various locations on the
`map by Flora’s icons 58 and 59 (first location selectable thumbnail image,
`second location selectable thumbnail image).” Dec. 47–48) (citing Pet. 20–
`29. We noted that “Patent Owner’s argument that the combination would
`not result in displaying Flora’s icons ignores Okamura and Flora’s
`contributions to Petitioner’s proposed combination.” Dec. 48.
`Our resolution of the dispute as to whether the asserted prior art met
`these claim limitations did not require an express construction of the term
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`“responsive to” as Patent Owner now argues in retrospect, but rather applied
`the plain and ordinary meaning of the claims consistent with the express
`position of the parties taken during the proceedings. Although Patent Owner
`might now disagree with the outcome of our decision on these issues, such
`disagreement is not a basis for rehearing.
`2. Limitations [1b], [1d], and [1e]
`
`Patent Owner argues that “paragraph [64] of Dr. Bederson’s second
`declaration improperly introduced new evidence and argument not presented
`in the Petition.” PO Req. 4. Patent Owner asserts that “[t]he Petition did not
`argue that selecting Okamura’s PLACE tab 413 (first input) would cause the
`display of Flora’s geographic map 46 (interactive map) with Flora’s icons
`58, 59 (thumbnail image[s]) “responsive to” that that first input.” Id. at 5
`(citing Pet. 28–30). “In fact,” Patent Owner argues, “Petitioner and
`Dr. Bederson declined to acknowledge the causal relationship expressly
`required by the ‘responsive to’ claim term.” PO Req. 5.
`We disagree with Patent Owner. This argument is similar to Patent
`Owner’s argument that we address in Section I.B above. Dr. Bederson’s
`declaration is not improper. Rather, it is directly responsive to Patent
`Owner’s arguments and Dr. Reinman’s testimony. For example, Paragraph
`64 of Dr. Bederson’s declaration begins by stating that
`[t]he Patent Owner and Dr. Reinman argue “[n]owhere . . . does
`Okamura or Flora, alone or in combination, disclose that the
`‘map view’ displayed in response to the ‘first input’ would
`‘include[e]’ first and second ‘thumbnail image[s] . . . on the
`interactive map’ as claimed.” POR, 52-54 (underlining and
`italics in original). I do not agree.
`Ex. 1038 ¶ 64. Dr. Bederson then goes on to explain why he believes Patent
`Owner and Dr. Reinman are incorrect based on his understanding of the
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`teachings of Okamura and Flora. Id. This is responsive testimony, to which
`Patent Owner had an opportunity to respond, and is not improper. See
`Belden, 805 F.3d at 1078–1080.
`Moreover, contrary to Patent Owner’s argument here, the Petition
`explains that in Okamura, “selection of PLACE tab 413 causes the single
`interface [in Okamura] to display cluster map display area 414 (map view)
`on the interface,” and a person of ordinary skill in the art “would have been
`motivated to combine Okamura and Flora such that when organizing content
`according to location, Okamura’s cluster map display area 414 displays
`content as taught by Flora’s geographic map 46 and media viewer 64, where
`Okamura’s content is indicated at various locations on the map by Flora’s
`icons 58 and 59.” Pet. 18, 22.
`Patent Owner has not demonstrated that there was an error that
`warrants rehearing related to this issue.
`3. Claim 3
`
`
`
`Patent Owner argues that “[t]he Board misapprehended the Petition
`and overlooked Patent Owner’s arguments,” because “the Petition
`(i) expressly quoted and relied on Okamura’s intervening mouse-hover
`operation for displaying information 418 (see, Pet. 19) and corresponding
`‘software’ (see, Pet. 25-27), and (ii) cited back to the same discussion in
`relation to the ‘indication feature’ of claims 2-3.” PO Req. 6–7. Patent
`Owner also argues that “[t]he Board also overlooked Patent Owner’s
`argument that it is “‘impermissible’ to ‘pick and choose’ from the relevant
`portions of Okamura ‘to the exclusion of’ when and how information 418 is
`displayed.” Id. at 7.
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`IPR2021-01413
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`We disagree. Claim 3 depends from dependent claim 2. With respect
`to claim 2, the Petition states that
`regarding displayed
`teachings
`[c]ombining Okamura’s
`information 418 with Flora would have resulted in Okamura’s
`cluster map display area 414 (the map view) including
`Okamura’s displayed information 418 showing the number of
`contents being displayed with Flora’s icons 58 and 59, including
`the first of icons 58 and 59; thus, the first icon would include
`Okamura’s displayed information 418 showing the number of
`contents associated with that first icon (includes a first indication
`feature associated with the first location selectable thumbnail
`image), where the displayed information 418 for the first icon
`(the first indication feature) shows the number of files in the first
`set of digital files at the location associated with the first icon
`(being based on a number of digital files in the first set of digital
`files).
`Pet. 63. With respect to claim 3, the Petition further states that
`
`
`the combination of Okamura and Flora provides that information
`418 for each icon, including information 418 for the first icon
`(the first indication feature), would have been connected to each
`of icons 58 and 59, including the first icon (the first location
`selectable thumbnail image), by overlapping each icon (is
`connected to the first location selectable thumbnail image).
`Id. at 66–67.
`Nowhere with respect to claims 2 or 3 does the Petition state that it is
`relying on an “intervening mouse-hover operation” for these claims, as
`Patent Owner now argues. The mere fact that a petition may cite to other
`portions of the document for purposes of reference or context does that mean
`that the express combination being described should be ignored or
`embellished, as Patent Owner appears to be doing here. Rather, as we
`explained in our Decision,
`[t]he Petition explains that Okamura’s teaches depressing the
`“PLACE” tab (first input) which causes the display of cluster
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`map display area 414, and in the combination Okamura’s display
`area 414 (the map view) displays content indicated at various
`locations on Flora’s geographic map 46 by icons 58 and 59. See
`Pet. 14–18, 62–67. Okamura’s information 418
`teaches
`displaying the number of contents for each icon and would have
`been connected to each icon by overlapping as taught by
`Okamura’s Figures 19–21. Id. That Okamura also teaches a
`feature whereby a user operation, such as a mouse movement,
`may display information 418 is not part of Petitioner’s
`combination and therefore not relevant to Petitioner’s proposed
`combination, which simply utilized the teaching that information
`418 is displayed in overlapping form.
`Dec. 106 (citing Ex. 1038 ¶ 72). Patent Owner has not demonstrated that
`there was an error that warrants rehearing of this issue.
`D. Limitations [1n], [1p], and Claim 5
`1. Construction of Limitations [1n] and [1p]
`
`
`
`Patent Owner asserts that “[t]he Decision misapprehended Patent
`Owner’s argument” as “Patent Owner did not seek to read Fig. 32 into claim
`1.” PO Req. 8 (citing PO Resp. 28–29, 32; PO Sur-reply 6–8). Patent
`Owner explains that it “relied on the ‘express words recited in the claim’
`while noting that Fig. 32 ‘discloses an exemplary embodiment consistent
`with those express words.’” PO Req. 8.
`Patent Owner also asserts that the Decision overlooked Patent
`Owner’s argument that including the first name and second name at separate
`times would “conflict with” the “responsive to” relationship between the
`“second input” and display of the “people view” and its constituent
`elements. PO Req. 9 (citing PO Sur-reply 7).
`Although Patent Owner admits that “claim 1 does not recite the word
`‘simultaneously,’” Patent Owner nonetheless faults the Decision for not
`explaining “how a view that includes only a ‘first name’ but not a ‘second
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`name’ can qualify as the claimed ‘people view.’” PO Req 9. Patent Owner
`argues that “[t]he Board’s misapprehension of Patent Owner’s arguments
`warrants rehearing.” Id. at 10.
`We disagree with Patent Owner. The Decision explains our analysis
`and rationale regarding this issue as follows:
`Patent Owner states in its Response that it “does not believe
`claim construction is required because the plain and ordinary
`meaning of the claims is clear.” PO Resp. 26. In its Response,
`however, Patent Owner points to Figure 32 of the ’228 patent as
`“an exemplary embodiment showing a people view 1400 that
`includes ‘a thumbnail of [each person’s] face along with their
`name,’” concluding that “the ‘people view’ must ‘includ[e]’ both
`a ‘first name’ and a ‘second name’ displayed in the same view.”
`Id. at 29 (citing Ex. 2038 ¶¶ 80–81) (emphasis added). Patent
`Owner then later argues that “[n]owhere does Okamura disclose
`or suggest any means for simultaneously including a second
`name in that same view.” PO Resp. 63 (emphasis added).
`Claim 1, however, does not recite the term “simultaneously” that
`Patent Owner now seeks to add, nor can the claim be reasonably
`read to impose such a requirement. Moreover, Patent Owner
`provides no compelling rationale for
`incorporating its
`interpretation of Figure 32 as “an exemplary embodiment” in
`order to restrict claim 1 in this way. The Federal Circuit has
`repeatedly explained that “[a] particular embodiment appearing
`in the written description may not be read into a claim when the
`claim language is broader than the embodiment.” SuperGuide
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004) (emphasis added). We, therefore, decline Patent Owner’s
`invitation do so here.
`Dec. 63–64.
`Patent Owner’s arguments on rehearing do not change our view. In
`its papers, Patent Owner looked to the claim language and Figure 32 to
`argue that “[n]owhere does Okamura disclose or suggest any means for
`simultaneously including a second name in that same view.” PO Resp. 63
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`(emphasis added). In our view, Patent Owner uses its interpretation of
`Figure 32 as a basis to incorporate a limitation (“simultaneously”) that does
`not appear in claim 1, as Patent Owner now concedes. See PO Req. 9
`(“claim 1 does not recite the word simultaneously”). As we explained in our
`Decision, we agreed with Petitioner that Okamura teaches limitations [1n]
`and [1p] and we credited the testimony of Dr. Bederson because it is
`consistent with the teachings of Okamura. See Dec. 61–63 (citing Ex. 1002
`¶¶ 110–114, 118–122). Patent Owner has not demonstrated that there was
`an error that warrants rehearing of this issue.
`2. Construction of Claim 5
`
`Patent Owner asserts that “[t]he Board overlooked the same argument
`and evidence when it disagreed that claim 5 requires simultaneously
`including a ‘first indication feature’ and a ‘second indication feature’ in the
`same ‘map view.’” PO Req. 11. Patent Owner argues that “[b]ecause the
`Board applied the ‘same analysis’ of limitations [1n], [1p] to claim 5, the
`Board should rehear Patent Owner’s claim construction argument as to claim
`5 for the same reasons discussed immediately above.” Id.
`For the reasons we discussed in Section I.D.1, Patent Owner has not
`demonstrated that there was an error that warrants rehearing of this issue.
`3. Limitations [1n] and [1p]
`
`
`
`
`
`Patent Owner asserts that “[t]o the extent the Board rehears the
`construction issues, it should also rehear the finding that Okamura meets
`limitations [1n] and [1p].” PO Req. 11–12. Patent Owner argues that “[f]or
`‘people view’ limitations [1n] and [1p], Petitioner relied only on Okamura
`under Ground 1,” and “Patent Owner established that Okamura fails to
`disclose that its face cluster display area 431 (alleged people view) includes
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`both a “first name” and second name” in the same view, as required by the
`express language of claim 1.” Id.
`For the reasons we discussed in Section I.D.1, Patent Owner has not
`demonstrated that there was an error that warrants rehearing of this issue.
`4. Claim 5
`
`
`
`Patent Owner asserts that “claim 5, when properly construed, requires
`a ‘map view’ that includes a ‘first indication feature’ and a ‘second
`indication feature’ in the same view.” PO Req. 12. Patent Owner argues
`that it “established Okamura requires a mouse hover to display an indication
`feature and that ‘doing so displays a number of contents indication for one
`location thumbnail image only.’” Id. (citing PO Resp. 66–68; PO Sur-reply
`22). Patent Owner requests that “[t]o the extent the Board rehears its
`construction requiring the simultaneous display of the claimed elements in
`the views, it should also rehear its finding that Okamura meets this
`limitation.” Id.
`Patent Owner also asserts that “the Board adopted a new obviousness
`theory Petitioner raised for the first time in reply,” that “Okamura ‘renders
`obvious claim 5’ under an interpretation requiring ‘simultaneous’ inclusion
`of first/second indication features.” Id. at 13 (citing PO Sur-reply 2, 22;
`Dec. 109; Ex. 1038 ¶ 73). Patent Owner asserts that “[t]he Board did not
`address Patent Owner’s objection or Dr. Bederson’s relevant testimony.” Id.
`Because we decline Patent Owner’s request to rehear the construction
`of claim 5, we decline to rehear the finding that the asserted prior art meets
`the limitations of claim 5. With respect to Patent Owner’s assertion that we
`“adopted a new obviousness theory Petitioner raised for the first time in
`reply,” we disagree.
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`With respect to claim 5, we explained that Petitioner provided
`evidence that the combination of Okamura and Flora teaches claim 5
`because
`Okamura’s cluster map display area 414 (the map view) includes
`Okamura’s displayed information 418 displayed with Flora’s
`icons 58 and 59, including the second of the icons 58 and 59;
`thus, the second icon would include Okamura’s displayed
`information 418 showing the number of contents associated with
`the second icon (includes a second indication feature associated
`with the second location selectable thumbnail image) where
`displayed information 418 for the second icon shows the number
`of files in the second set of digital files at the location associated
`with the second icon (being based on a number of digital files in
`the second set of digital files).
`Dec. 107–108 (citing Ex. 1004 ¶ 240, Fig. 19; [Pet.] Sections VI.A.3.e,
`VI.A.3.j, VI.A.4).
`In response to Patent Owner’s argument that “[n]owhere, however,
`does Okamura disclose or suggest any means for simultaneously including
`two indication features in that same view using Okamura’s cursor,” we
`explained that “[c]laim 1 does not include the term ‘simultaneously’ that
`Patent Owner seeks to add, nor can the claim be reasonably read to impose
`such a requirement.” Dec. 108 (citing id. at Dec. Sec. II.E.1.c.3). We found
`that “[t]he same analysis applies equally as well to dependent claim 5.” Id.
`We then explained that “Patent Owner’s argument is flawed because
`Okamura’s displayed information 418 shows the number of contents
`associated with both the first and second of icons 58 and 59 (first indication
`feature and second indication feature) displayed for each icon.” Id. at 109.
`We then pointed out that Dr. Bederson explained (in response to Patent
`Owner’s “simultaneous” argument) that
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`in the combination, “Okamura’s displayed information 418
`showing the number of contents [][is] displayed with Flora’s
`icons 58 and 59,” where Okamura’s cluster map display area 414
`includes “displayed information 418 for the first icon (the first
`indication feature) [that] shows the number of files in the first set
`of digital files at the location associated with the first icon” and
`“displayed information 418 for the second icon [the second
`indication feature] [that] shows the number of files in the second
`set of digital files at the location associated with the second
`icon.” Id., 63, 68. Thus, a POSITA would have understood or at
`least found obvious that in the combination, because information
`418 displaying contents is displayed with each of Flora’s icons
`58 and 59 (which includes the first and second claimed thumbnail
`images), the first indication feature and the second indication
`feature are provided for each of the icons.
`Dec. 109 (citing Ex. 1038 ¶ 73).
`Because Dr. Bederson’s testimony is responsive to Patent Owner’s
`“simultaneous” argument raised by Patent Owner in its Response (see
`Ex. 1036 ¶ 73 (citing PO Resp. 66–67)), and Patent Owner had an
`opportunity to respond to the testimony, Dr. Bederson’s testimony is
`appropriate to consider and does not violate 37 C.F.R. § 42.23(b). See
`Belden, 805 F.3d at 1078–1080. Accordingly, Patent Owner has not
`demonstrated that there was an error that warrants rehearing of this issue.
`E. Okamura/Flora Combination
`Patent Owner asserts that the Decision overlooked the following
`arguments:
`1. Patent Owner argued, citing Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1068 (Fed. Cir. 2016), that Petitioner’s proposed
`combination would eliminate Okamura’s “primary objective” of
`presenting multiple cluster maps having differing scales to avoid
`the scaling issues associated with presenting only a single map.
`POR, 10, 44-45, 48-49; POSR 11-12; EX1004, Fig. 18, ¶¶0019,
`0093, 0215, 0219; EX2038, ¶¶113-116;
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`2. Patent Owner argued that Okamura’s stated preference is
`relevant to whether a person of skill in the art would combine
`Okamura and Flora, even if it does not teach away, citing Polaris
`Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1070 (Fed. Cir.
`2018). POR, 47-49; POSR, 13-14; and
`3. Petitioner’s Okamura Figs. 27A-B argument was not in the
`Petition and was presented for the first time in the Reply. PO Sur-
`reply 14–15; Pet. 22–27.
`PO Req. 13–14.
`Patent Owner’s citations to Trivascular and Polaris are related to
`Patent Owner’s argument that a person of ordinary skill in the art would not
`combine Okamura with Flora because Flora’s use of a geographic map is
`similar to art allegedly “disparaged” by Okamura, because use of such a
`geographic map “makes it difficult to intuitively grasp the geographical
`correspondence between individual contents,” and Okamura allegedly
`“emphasizes the importance of showing content from different locations
`simultaneously regardless of how geographically far apart those locations
`are.” See PO Resp. 40 (quoting Ex. 1004 ¶ 8), 42. Patent Owner concludes
`that such evidence “teaches away from Petitioner’s proposed use of Flora’s
`scalable geographic map because a POSITA ‘would be discouraged from
`following the path set out in the reference, or would be led in a direction
`divergent from the path that was taken by the applicant.’” Id. at 44.
`We fully considered all of Patent Owner’s arguments concerning its
`position that a person of ordinary skill in the art would not have combined
`Okamura and Flora in the manner proffered by Petitioner. See Dec. 90– 92,
`97–101. Simply because we do not mention Trivascular or Polaris by name
`or distinguish them expressly, does not mean that Patent Owner’s arguments
`were not considered in rendering the Decision. The Board is not required to
`address every argument raised by a party or explain every possible reason
`
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`

`IPR2021-01413
`Patent 10,621,228 B2
`
`
`supporting the Board’s conclusions. See Novartis AG v. Torrent Pharms.
`Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017).
`With respect to Patent Owner’s argument that Okamura’s Figures
`27A–B were discussed by Petitioner for the first time in the Reply, as we
`have noted several times already, Petitioner is not required to anticipate each
`and every possible argument that a Patent Owner may raise in its Response.
`As long as Petitioner’s arguments and evidence provided in its Reply are
`responsive to the issues raised in Patent Owner’s Response and Patent
`Owner has an opportunity to respond to the evidence, Petitioner does not run
`afoul of 37 C.F.R. § 42.23(b). See Belden Inc. v. Berk-Tek LLC, 805 F.3d
`1064, 1078–1080 (Fed. Circ. 2015) (evidence submitted with an expert
`declaration filed with petitioner’s reply does not violate 37 C.F.R. § 42.23(b)
`where the expert declaration is responsive to patent owner’s arguments).
`F. Burden Shifting
`Patent Owner argues that the Decision “faults Patent Owner for not
`arguing a skilled artisan ‘that the ordinary artisan in this field of endeavor
`does not possess the knowledge and skills rendering him incapable of
`combining the prior art references.’” PO Req. 14 (citing Dec. 100). Patent
`Owner argues that “[t]his is legal error,” because “[t]o require Patent Owner
`to demonstrate that a skilled artisan is incapable of combining the prior art
`improperly shifted the burden to Patent Owner.” Id. Patent Owner
`misconstrues the Decision.
`The Decision points out that while Patent Owner asserts that
`“Petitioner does not provide an independent rationale for combining
`Okamura, Flora, Wagner and Gilley,” Patent Owner “provides no argument
`or discussion related to this point and cites to no particular authority to
`support it,” meaning that Patent Owner’s assertion is unsupported attorney
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`IPR2021-01413
`Patent 10,621,228 B2
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`argument. Dec. 100. This observation in the Decision does not “improperly
`shift the burden to Patent Owner to prove patentability” as Patent Owner
`now alleges. Rather, the Decision points out that according to Dystar, “the
`proper question is whether the ordinary artisan possesses knowledge and
`skills rendering him capable of combining the prior art references,” and that
`Patent Owner provides no argument or evidence on that question. Id. (citing
`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d
`1356, 1368, (Fed. Cir. 2006).
`The Decision then goes on to explain that
`Dr. Bederson testifies that a person of ordinary skill in the art
`“would have combined Okamura and Flora . . . using known
`programming techniques, adjusting the software of Okamura’s
`content playback application such that cluster map display area
`414 includes Flora’s teachings” and “would have recognized the
`combination’s results would have been predictable . . . because
`it is simple substitution of one known element . . . for another.”
`Ex. 1002 ¶¶ 83, 84, 86 (emphasis added).
`Dec. 101.
`The Decision also points out that
`Petitioner provides a proposed combination of prior art that is
`supported by the evidentiary record, and is explained in ample
`detail by the reasoned testimony of Dr. Bederson. Petitioner also
`identifies a number of benefits of the proposed combination that
`would have served as a reasoned basis for a person of ordinary
`skill in the art to combine the prior art in the manner described in
`the Petition.
`
`Id.
`
`Patent Owner’s argument that “the Decision improperly rested on
`Patent Owner’s alleged failure to establish that the skilled artisan was not
`incapable,” and that “[t]he Board also overlooked Patent Owner’s argument
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`IPR2021-01413
`Patent 10,621,228 B2
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`that Petitioner failed to establish ‘a skilled artisan would have been
`motivated’ to combine Okamura, Flora and Gilley” is simply meritless.
`
`II. CONCLUSION
`
`For the reasons stated above, Patent Owner has not demonstrated an
`abuse of discretion meriting a rehearing of the issues raised in the request.
`
`
`Outcome of Decision on Rehearing:
`
`Claims
`1–7
`1–7
`1–7
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`1–7
`
`103(a)
`
`
`
`Overall
`Outcome
`
`
`References
`Okamura, Flora1
`Okamura, Flora, Wagner
`Okamura, Flora, Gilley
`Okamura, Flora,
`Wagner, Gilley
`
`
`Denied Granted
`
`
`
`
`
`
`
`
`1–7
`
`1–7
`
`
`
`
`1 Because each of the challenged claims is held unpatentable on the ground
`combining Okamura, Flora, Wagner, and Gilley as a basis for
`unpatentability, we do not reach the other asserted grounds in the Petition.
`
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`IPR2021-01413
`Patent 10,621,228 B2
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`Final Outcome of Final Written Decision after Rehearing:
`
`
`
`Claims
`
`35
`U.S.C. §
`
`References
`
`1–7
`
`1–7
`
`103(a)
`
`103(a)
`
`1–7
`
`103(a)
`
`1–7
`
`103(a)
`
`Overall
`Outcome
`
`
`
`Okamura, Flora2
`Okamura, Flora,
`Wagner
`Okamura, Flora,
`Gilley
`Okamura, Flora,
`Wagner, Gilley
`
`
`Claims
`Shown
`Unpatentable
`
`
`
`
`
`
`1–7
`
`1–7
`
`Claims Not
`Shown
`Unpatentable
`
`
`
`
`
`
`
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`2 Because each of the challenged claims is held unpatentable on the ground
`combining Okamura, Flora, Wagner, and Gilley as a basis for
`unpatentability, we did not reach the other asserted grounds in the Pet