Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 19
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` Entered: October 26, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`CBM2016-00100
`Patent 8,805,825 B1
`_______________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`I. INTRODUCTION
`Ford Motor Company, (“Petitioner”) filed a Request for Rehearing of
`the Decision (Paper 12, “Dec.”) denying its Petition (Paper 1, “Pet.”).
`Paper 13, “Req. Reh’g”. In accordance with our Order (Paper 14, “Order”),
`Versata Development Group, Inc. (“Patent Owner”) filed an opposition
`(Paper 15; “Opp.”), and Petitioner filed a reply (Paper 18, “Reply”). For the
`reasons that follow, the Request for Rehearing is denied.
`
`II. ANALYSIS
`A.
`Background
`
`On September 12, 2016, Petitioner filed a Petition requesting a
`covered business method patent review of claims 1–20 of U.S. Patent No.
`8,805,825 B1 (Ex. 1001, “the ’825 patent”). In its Preliminary Response,
`Patent Owner asserted, with supporting evidence, that prior to filing its
`Preliminary Response, Patent Owner filed a statutory disclaimer pursuant to
`37 C.F.R. § 1.321(a), disclaiming claims 5, 10, 15, 16, and 20. See Prelim.
`Resp. 13–14; Ex. 2009. Subsequent to the parties’ submissions, we
`authorized Petitioner to file a Reply, addressing (1) the impact of Unwired
`Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016), decided after
`Petitioner filed its Petition and cited by Patent Owner in its Preliminary
`Response, and (2) whether certain claims of the challenged patent, which
`were disclaimed statutorily by Patent Owner, should be considered in
`determining whether the challenged patent is eligible for a covered business
`method patent review. Paper 7. We authorized Patent Owner to file a sur-
`
`
`
`2
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`

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`CBM2016-00100
`Patent 8,805,825 B1
`
`reply. Id. The parties submitted their respective papers on these issues.
`Paper 10 (“Prelim. Reply”); Paper 11 (“Prelim. Sur-Reply”).
`In our Decision, we treated disclaimed claims 5, 10, and 15 as if they
`never existed, and, therefore, did not consider Petitioner’s arguments that the
`’825 patent is eligible for CBM patent review based on claims 5, 10, and 15.
` Dec. 7–8. We also considered Petitioner’s arguments with respect to how
`claims 1, 6, and 11 allegedly demonstrate that the ’825 patent is eligible for
`CBM patent review. Dec. 9–11. We determined those arguments were not
`“persuasive given the generic, broad claims, and the corresponding broad
`disclosure in the Specification of the ’825 patent.” Id. at 11.
`
`B.
`
`Petitioner’s Rehearing Request
`
`Petitioner argues that (1) Patent Owner’s disclaimer did not remove
`claims 5, 10, and 15 from consideration (Req. Reh’g 3–6; Reply 1–2); and
`(2) the Board is reading Unwired Planet1, Secure Axcess2, and Blue Calypso3
`too narrowly (id. at 7–12).
`
`C. Decision Denying Rehearing
`
`In determining whether to institute a CBM patent review, “the Board
`may deny some or all grounds for unpatentability for some or all of the
`challenged claims.” 37 C.F.R. § 42.208(b). A party requesting rehearing
`bears the burden of showing that the decision should be modified. 37 C.F.R.
`
`
`1 Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016).
`2 Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370 (Fed. Cir.
`2017).
`3 Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016).
`3
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`CBM2016-00100
`Patent 8,805,825 B1
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`§ 42.71(d). The party must identify specifically all matters we
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply. 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 relevant factors. Star
`Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000).
`Citing to Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853
`F.3d 1370 (Fed. Cir. 2017), Petitioner argues that Versata’s disclaimer did
`not remove claims 5, 10, and 15 from consideration. Req. Reh’g 3–6.
`Rembrandt dealt with marking requirements designed to give notice to the
`public that an article was patented. In particular, Petitioner argues that the
`“CBM statute, AIA § 18, focuses on the rights of the public to be free of
`patent claims that do not meet the statutory requirements for patentability.”
`Id. at 5. Petitioner contends that because the CBM statute protects the
`public, Versata’s disclaimer of claims 5, 10, and 15 after Petitioner filed its
`CBM petition does not remove claims 5, 10, and 15 from consideration by
`the Board under Rembrandt. Id. at 5; Reply 1–2. Patent Owner counters
`that Rembrandt is not relevant for determining whether a patent falls within
`the scope of CBM review. Opp. 3–4.
`We agree with Patent Owner and find instructional, Facebook, Inc.
`4
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`CBM2016-00100
`Patent 8,805,825 B1
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`and Instagram, LLC v. Skky, LLC, Case CBM2016-00091 (PTAB Sept. 28,
`2017) (Paper 12). Like the panel in Facebook, we determine that Rembrandt
`is not controlling on the issue before us.4 In Facebook, an expanded panel5
`agreed with the patent owner that there is no basis to extend the Rembrandt
`holding to the Board’s jurisdiction related to CBM patent review, because
`the court did not discuss post-grant review proceedings in its decision or the
`impact of statutory disclaimers on such proceedings. Id. at 10. In particular,
`the panel stated:
`In contrast to the patent marking statute at issue in Rembrandt,
`which expressly pertains to rights of the “public,” as well as a
`defendant’s statutory right to patent infringement defenses and
`counterclaims (also cited by the Court in Rembrandt), there is no
`analogous right to institution of a CBM patent review for the
`public generally. See Rembrandt, 853 F.3d at 1383–84. Although
`certain individuals or entities who meet the statutory requirements
`may petition for CBM patent review, institution by the Board is
`discretionary. See AIA § 18(a)(1); 35 U.S.C. § 324(a) (“The
`Director may not authorize a post-grant review to be instituted
`unless the Director determines that the information presented in
`
`
`4 The panel in Facebook also considered petitioner’s argument that the
`Board should adopt a “time-of-filing” rule in assessing the impact of post-
`filing statutory disclaimers on CBM patent review eligibility. Id. at 4.
`Petitioner, here, does not make a “time-of-filing” argument regarding the
`disclaimed claims. Rather, Petitioner’s rehearing request regarding the
`disclaimed claims is that the holding in Rembrandt is applicable to CBM
`patent reviews. Req. Reh’g 3–6; Reply 1 (“Once rights are held by a
`member of the public, they cannot be rescinded by disclaimer.”).
`5 The panel included Chief Administrative Patent Judge, David P. Ruschke,
`Deputy Chief Administrative Patent Judge Scott R. Boalick, and
`Administrative Patent Judges Justin T. Arbes, Glenn J. Perry, and Kevin W.
`Cherry.
`
`
`
`5
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`CBM2016-00100
`Patent 8,805,825 B1
`
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`the petition filed under section 321, if such information is not
`rebutted, would demonstrate that it is more likely than not that at
`least 1 of the claims challenged in the petition is unpatentable.”
`(emphasis added)); 37 C.F.R. §§ 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”), 42.208(a) (“[T]he Board may
`authorize the review to proceed.”), 42.208(b) (“At any time prior
`to institution of post-grant review, the Board may deny some or all
`grounds for unpatentability for some or all of the challenged
`claims.”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2140 (2016) (the AIA does not impose a “mandate to institute
`review”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (explaining that under § 314(a) (which is worded
`similarly to § 324(a)), “the PTO is permitted, but never
`compelled, to institute an [inter partes review] proceeding”); PO
`Br. 3–4. Thus, we are not persuaded that Rembrandt requires
`statutorily disclaimed claims to be considered when determining
`whether a patent is eligible for CBM patent review.
`Id. at 10–11.
`For these same reasons, we are not persuaded that Rembrandt requires
`statutorily disclaimed claims to be considered when determining whether a
`patent is eligible for CBM patent review.
`With respect to the remaining claims, such as claim 1, Petitioner
`argues that we applied the Federal Circuit’s holding in Unwired Planet too
`narrowly and that Unwired Planet does not require that we deny claims
`CBM review merely because the claims also cover other products or
`services. Req. Reh’g 7–8. This same argument was presented earlier
`(Prelim. Reply 1–2) and was considered in rendering our Decision. Dec.
`10–11. Accordingly, we did not overlook or misapprehend the argument.
`Petitioner’s extension of that same argument (id. at 7–12) amounts to a
`disagreement with our decision and application of Unwired Planet to the
`
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`6
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`CBM2016-00100
`Patent 8,805,825 B1
`
`present case, which is not proper for a rehearing request.
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`
`
`7
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`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`PETITIONER:
`Christopher C. Smith
`Thomas A. Lewry
`John S. LeRoy
`Frank A. Angileri
`John P. Rondini
`Jonathan D. Nikkila
`BROOKS KUSHMAN P.C.
`FPGP0130CBMR1@brookskushman.com
`
`PATENT OWNER:
`
`Robert Greene Sterne
`Salvador M. Bezos
`Michelle K. Holoubek
`Joseph E. Mutschelknaus
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`holoubek-PTAB@skgf.com
`jmutsche-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`Kent B. Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND, L.L.P.
`kchambers@tcchlaw.com
`
`Sharoon Saleem
`JONES & SPROSS, P.L.L.C.
`sharoon.saleem@jonesspross.com
`
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`8
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