Trials@uspto.gov
`571-272-7822
`
`
`Paper 14
`Date: August 29, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`IPR2023-00471
`Patent 6,844,990 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, JOHN D. HAMANN, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`Opinion Dissenting filed by KALAN, Administrative Patent Judge.
`PER CURIAM.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing of
`Decision Granting Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 14
`Date: August 29, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`IPR2023-00471
`Patent 6,844,990 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, JOHN D. HAMANN, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`Opinion Dissenting filed by KALAN, Administrative Patent Judge.
`PER CURIAM.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing of
`Decision Granting Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`
`I.
`INTRODUCTION
`ImmerVision, Inc. (“Patent Owner”) filed a Request for Rehearing
`
`(Paper 12, “Req. Reh’g”) of our Decision Granting Institution of Inter
`Partes Review (Paper 10, “Dec. on Inst.”) of U.S. Patent No. 6,844,990 B2
`(Ex. 1001). In the Decision, the majority declined to exercise discretion to
`deny institution under 35 U.S.C. § 325(d). Dec. on Inst. 30. In particular,
`the majority determined that the second part of the Advanced Bionics1
`framework was not met. Dec. on Inst. 25–30. In its Request for Rehearing,
`Patent Owner argues that the majority misapprehended material matters in
`making this determination. Req. Reh’g 3–7. For the reasons below, we
`disagree with Patent Owner and deny Patent Owner’s Request for
`Rehearing.
`
`II.
`STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). Under 37 C.F.R.
`§ 42.71(d), a patent owner who requests rehearing of a decision denying
`institution must identify specifically all matters we misapprehended or
`overlooked. Id. When reconsidering a decision on institution, we review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined 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
`
`
`1 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”).
`
`2
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
`2005).
`
`III. ANALYSIS
`Patent Owner argues that the majority misapprehended “the quantity
`and quality of expert testimony” relating to a specific claim element in
`declining to exercise discretion to deny institution under 35 U.S.C. § 325(d).
`Req. Reh’g 1. This claim element recites, in part, “correcting the
`non-linearity of the initial image, performed by retrieving image points on
`the obtained image in a coordinate system of center O’ using at least the
`non-linear distribution function and a size L of the obtained image.”
`Ex. 1001, 1:66–2:3. It is this claim element for which we found that the
`Examiner erred in evaluating the teachings of Baker and Shiota. Dec. on
`Inst. 28.
`First, Patent Owner argues that the majority “attributes eight
`paragraphs from [Dr. Kessler’s] declaration [(Ex. 1003)] as supporting a
`supposed ‘detailed explanation and interpretation of Shiota from the vantage
`point of the skilled artisan,’” but “[i]n reality, only paragraph 205 addresses
`whether Shiota teaches the relevant claim element.” Req. Reh’g 1.
`We disagree with Patent Owner. As we found in the institution
`decision, Dr. Kessler’s paragraphs 205–212 “walk[] through in detail how
`Baker and Shiota teach ‘correcting the non-linearity of the initial image
`. . . by retrieving image points on the obtained image in a coordinate
`system of center O’ using at least the non-linear distribution function and
`a size L of the obtained image.’” Dec. on Inst. 28 (citing Ex. 1003
`¶¶ 205–212; Pet. 49–55 (citing same)). Patent Owner’s Request for
`Rehearing substantively addresses only paragraph 205, makes only bald
`
`3
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`assertions as to paragraphs 206 and 207, and completely ignores the
`substance of paragraphs 208–212. See Req. Reh’g 3–5 & n.2. Hence,
`Patent Owner does not meet its burden in showing that we abused our
`discretion in finding that these paragraphs walk through how Baker and
`Shiota teach the relevant claim element.
`We also disagree with Patent Owner that “Dr. Kessler’s testimony
`relevant to the material error in question is confined to one conclusory
`paragraph.” Req. Reh’g 3. The gravamen of Patent Owner’s argument is
`that we should ignore at least paragraphs 208–212 of Dr. Kessler’s
`testimony because Petitioner does not explicitly cite these paragraphs
`again in Petitioner’s § 325(d) discussion that the Examiner materially
`erred when the Examiner found that Baker and Shiota do not teach the
`relevant claim element. Id. at 4. Petitioner, however, cited and discussed
`these paragraphs in its showing for how Baker and Shiota teach the
`relevant claim element, and thus, it is appropriate for us to consider this
`evidence for evaluating Examiner error as to what Baker and Shiota teach.
`See Pet. 49–55 (citing Ex. 1003 ¶¶ 205–212). To find otherwise would
`exalt form over substance, and would prevent us from properly
`“balanc[ing] [P]etitioner’s desire to be heard against the interest of . . .
`[P]atent [O]wner in avoiding duplicative challenges to its patent.”
`Consolidated Trial Practice Guide2 (Nov. 2019), 62.
`Second, we find unavailing Patent Owner’s argument that paragraphs
`205–207 of Dr. Kessler’s testimony are conclusory, and should be afforded
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`little weight. Req. Reh’g 4–7. In particular, we disagree with Patent Owner
`that paragraph 205 “merely summarize[s] or quote[s] the text of Shiota’s
`paragraph” 23, but rather we find that the discussed portions of paragraph 23
`provide factual support for Dr. Kessler’s testimony. Id. at 4; compare
`Ex. 1003 ¶ 205, with Ex. 1012 ¶ 23. Moreover, Dr. Kessler also relies on
`additional portions of Shiota for support for this testimony. See Ex. 1003
`¶ 205 (citing Ex. 1012 ¶¶ 23–26). In addition, at this stage, we view the
`portions of Shiota cited in Dr. Kessler’s paragraph 205 as also supporting
`paragraph 206. Id. ¶¶ 205–206. Moreover, Patent Owner does not address
`the support Dr. Kessler provides for his testimony in paragraph 207. See
`Req. Reh’g 3–4 & n.2; Ex. 1003 ¶ 207 (citing Ex. 1006, 14:64–15:19;
`Ex. 1012 ¶¶ 22–23, 25, 49).
`Third, we find unavailing Patent Owner’s argument that our
`Decision on Institution “acknowledge[d] that Dr. Kessler’s declaration
`testimony ‘is the only evidence of record concerning what the skilled
`artisan would have considered Shiota to teach,’ and that “[w]ithout this
`singular piece of evidence, Petitioner would be unable to meet its burden to
`prove error by the Examiner.” Req. Reh’g 3 (quoting Dec. on Inst. 29)
`(alteration in original). Simply put, Patent Owner overreads and takes out of
`context this statement. Rather, this statement is made in the context of
`additional evidence (i.e., Dr. Kessler’s detailed testimony) that the Examiner
`did not have the benefit of, and is the only such evidence of record at this
`stage because Patent Owner did not submit an expert declaration. See Dec.
`on Inst. 28–29. The statement does not exclude Baker and Shiota’s
`teachings, which are record evidence. Moreover, as we found in the
`institution decision, Petitioner cites to specific portions of Baker and
`
`5
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`Shiota that teach the relevant claim element. See Dec. on Inst. 16 (citing
`Ex. 1006, code (57), 5:31–37, 6:5–35, 7:6–11, 8:32–55, 9:5–13, 13:15–
`28, 14:41–16:47, Figs. 1, 6A–6B, claims 1 and 12–14; Ex. 1012, code
`(57), ¶¶ 1, 4–5, 14–17, 21–26, 29–42, 44, 48–50, claim 1). These specific
`teachings from Baker and Shiota are sufficient for purposes of institution.
`We accordingly conclude that Patent Owner has not carried its
`burden of demonstrating that the Board abused its discretion or
`misapprehended or overlooked any matters in rendering the majority
`Decision.
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`
`6
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`IPR2023-00471
`Patent 6,844,990 B2
`
`
`
`
`
`
`
`
`
`Dissenting Opinion filed by Administrative Patent Judge KALAN.
`
` I
`
` respectfully dissent from the majority decision denying Patent
`Owner’s Request for Rehearing. For the reasons expressed in my Dissenting
`Opinion of the Decision Granting Institution of Inter Partes Review, the
`Board should exercise its discretion to deny institution under 35 U.S.C.
`§ 325(d). Thus, I would grant Patent Owner’s Request for Rehearing.
`
`7
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`FOR PETITIONER:
`
`W. Karl Renner
`Karan Jhurani
`David Holt
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jhurani@fr.com
`holt2@fr.com
`
`
`FOR PATENT OWNER:
`
`Stephen Murray
`John Simmons
`Dennis Butler
`Keith Jones
`PANITCH SCHWARZE
`smurray@panitchlaw.com
`jsimmons@panitchlaw.com
`dbutler@panitchlaw.com
`kjones@panitchlaw.com
`
`8
`
`
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