Paper 13
`Entered: June 13, 2013
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00088
`Patent 7,254,621
`____________
`
`Before JAMESON LEE, MICHAEL W. KIM, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`Universal Electronics Exhibit 2007, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`
`
`
`
`IPR2013-00088
`Patent 7,254,621
`
`
`
`On May 22, 2013, Oracle filed a request for rehearing (“Req.”) of the
`Board’s decision (“Dec.”), dated May 14, 2013, which instituted inter partes
`review of claims 1-9 and 17 of Clouding IP’s Patent 7,254,621 (“the ’621 patent”).
`The request for rehearing is denied.
`
`BACKGROUND
`The Board granted Oracle’s petition and instituted an inter partes review of
`claims 1-9 and 17 of the ’621 Patent as anticipated by Schilit under
`35 U.S.C. § 102. The Board denied all other asserted grounds as being redundant
`in light of the grounds for which review was instituted for the same claims. (Dec.
`12-13). Oracle seeks reconsideration of the Decision denying the petition on the
`ground that claims 1-9 and 17 are unpatentable as obvious under 35 U.S.C. § 103
`over Barrett and Schilit.
`
`ANALYSIS
`When rehearing a decision on petition, a panel will review the decision for
`an abuse of discretion. 37 C.F.R. § 42.71(c).
`In rendering the Decision, the Board weighed relevant factors and exercised
`its discretion in denying as redundant the alleged ground that claims 1-9 and 17 are
`unpatentable as obvious under 35 U.S.C. § 103 over Barrett and Schilit. Oracle
`asserts that our decision not to institute review on the ground of obviousness based
`on Barrett and Schilit was unreasonable for several reasons. The argument is
`unpersuasive.
`Oracle contends that the ground of obviousness based on Barrett and Schilit
`is not redundant to the ground of anticipation based on Schilit alone, because the
`Petition relied on Barrett, and not Schilit, for certain limitations of claims 1, 5, 8, 9,
`
`2
`
`Universal Electronics Exhibit 2007, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`
`
`IPR2013-00088
`Patent 7,254,621
`
`
`and 17 and because the systems of Barrett and Schilit are fundamentally different
`with respect to these limitations. Oracle’s contentions are misplaced. The proper
`focus of a redundancy designation is not on whether the applied prior art
`disclosures have differences, for it is rarely the case that the disclosures of different
`prior art references will be literally identical. Instead, as has been explained in an
`expanded panel decision in Liberty Mutual Ins. Co. v. Progressive Casualty Ins.
`Co., CBM2012-00003 (Paper No. 7), at *2 (PTAB Oct. 25, 2012) (Patent Review
`Processing System), the focus is on whether Petitioner articulated a meaningful
`distinction in terms of relative strengths and weaknesses with respect to application
`of the reference disclosures to one or more claim limitations.
`While Oracle did identify in the Petition several limitations of independent
`claims 1, 5, 8, 9, and 17 that are allegedly disclosed by both Barrett and Schilit,
`Oracle did not articulate any meaningful distinction between those separate
`disclosures in terms of potential strengths and weaknesses in the application of
`each disclosure to those claim limitations. Because Oracle alleges that all the
`features of the claims at issue are disclosed by Schilit, the ground based on a
`combination of Barrett and Schilit is redundant in the absence of the Petition’s
`explanation as to why Barrett is more preferred for satisfying some elements, while
`Schilit is more preferred for satisfying some other elements.
`The Board exercised its discretion in not instituting review on the ground of
`obviousness based on Barrett and Schilit, in light of the institution of review of the
`same claims on the ground of anticipation over Schilit. As provided in 37 C.F.R.
`§ 42.108(a), “[w]hen instituting inter partes review, the Board may authorize the
`review to proceed on all or some of the challenged claims and on all or some of the
`grounds of unpatentability asserted for each claim.” In that connection, note that
`
`3
`
`Universal Electronics Exhibit 2007, Page 3
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`IPR2013-00088
`Patent 7,254,621
`
`
`Part 42, Title 37, Code of Federal Regulations, is construed to secure the just,
`speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`Oracle contends:
`Petitioner submits that an obviousness ground by definition
`cannot be redundant with an anticipation ground. The two grounds
`are premised on different statutory provisions and engender
`fundamentally different legal standards and analyses. This is a
`difference with a substantial practical impact.
`
`
`
`(Req. 2-3). Oracle’s contention is misplaced, as it misdirects the focus. Yes, the
`two statutory grounds are not the same, just as the specific disclosures of Barrett
`and Schilit are not the same. But that is not the issue. What matters for
`determining redundancy of grounds is whether Petitioner has articulated
`meaningful distinction in the potential strength and weaknesses of the applied prior
`art. If, according to the petitioner, multiple grounds are equally good, the Board
`can exercise discretion to institute review based on less than all grounds.
`Oracle contends the following:
`To overcome anticipation, the Patent Owner need only show that
`Schilit fails to disclose a single element of the claim, however trivial.
`
`If the Patent Owner were to succeed in arguing that Schilit fails to
`disclose any element for which Barrett has been shown in the Petition
`to have a corresponding disclosure, it would become necessary and
`prudent to adjudicate the non-instituted obviousness ground in the
`instant proceeding. Failing to do so would cause the Petitioner or
`other interested parties to re-start the entire process by filing a new
`petition setting forth the previously non-instituted ground. That
`would be an inefficient use of the Board’s and the parties’ resources
`and such an approach would frustrate the intent of Congress and the
`Office to provide an efficient and effective alternative to patent
`litigation.
`
`(Req. 3; emphasis added.) Oracle’s contentions are not persuasive. First of all, the
`obviousness contention does not acknowledge that any claim limitation is not
`
`4
`
`Universal Electronics Exhibit 2007, Page 4
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`
`
`IPR2013-00088
`Patent 7,254,621
`
`
`disclosed by at least one of Barrett and Schilit. Thus, the obviousness contention
`also would fail if the Patent Owner only shows that a single claim limitation is not
`disclosed by either Barrett or Schilit, however trivial. Also, in its anticipation
`contention, Oracle’s Petition expresses no tentativeness or lack of confidence in
`connection with finding that any claim limitation is disclosed in Schilit.
`Moreover, the Board maintains impartiality in weighing relevant factors of a
`case to render a decision. Discretion is not exercised with the goal of placing
`either party in a better or worse position to prevail. As set forth above, if Oracle
`believed that Schilit had certain weaknesses as compared to Barrett with regard to
`some claim limitations, it was incumbent upon Oracle to identify those weaknesses
`so as to allow the Board to recognize and weigh that factor in rendering the
`decision to institute review.
`Oracle contends that unlike the situation in Liberty Mutual, in which the
`petitioner presented 422 grounds of unpatentability, Oracle is only asking for one
`additional ground, which will not significantly burden the Board or cause
`unnecessary delays. While the number of grounds presented is a factor in
`determining redundancy, it is not alone determinative. It ultimately remains a
`matter of discretion whether to proceed with any redundant ground. There is no
`magical number that defines the floor in determining redundancy.
`Oracle contends the following:
`Moreover, the Board has indicated that under this factual
`scenario, when two proposed unpatentability challenges are based
`upon different combinations of references with distinct and non-
`cumulative teachings, and different facts are being applied to the
`claims in each respective rejection, the proposed rejections do not
`present the same unpatentability issue and do not present redundant
`grounds for review.
`
`5
`
`Universal Electronics Exhibit 2007, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`
`
`IPR2013-00088
`Patent 7,254,621
`
`
`(Req. 5-6.) Oracle then cites two Board decisions as supporting this contention.
`Oracle is incorrect. The cited Board decisions do support the proposition that
`when the same facts are relied upon in multiple grounds, the grounds may be
`redundant. However, that does mean the converse is also true. As set forth above,
`it is rarely the case that the disclosures of different prior art references will be
`literally identical. But, in the absence of the Petitioner identifying meaningful
`distinctions in terms of relative strengths and weaknesses of the different prior art
`references, it is within the discretion of the Board to conclude that even with
`different facts in different grounds, multiple grounds may nevertheless be
`redundant.
`For all the reasons set forth above, Oracle has not shown that not instituting
`review on the ground of obviousness based on Barrett and Schilit constitutes an
`abuse of discretion.
`Oracle further requests that the Board provide express guidance on certain
`issues. However, a request for rehearing is not an appropriate forum to seek
`guidance. Nor is it appropriate for the Board to advise Oracle on specific action to
`take in this case, no matter what the forum.
`
`CONCLUSION
`Oracle’s request for rehearing is denied.
`
`
`
`
`6
`
`
`
`peb
`
`Universal Electronics Exhibit 2007, Page 6
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`
`
`
`
`IPR2013-00088
`Patent 7,254,621
`
`For PETITIONER:
`Greg Gardella
`and
`Scott McKeown
`OBLON SPIVAK
`CPDocketGardella@oblon.com
`cpdocketmckeown@oblon.com
`
`
`
`For PATENT OWNER
`
`Tarek Fahmi
`and
`Amy Embert
`FAMHI, SELLERS, EMBERT & DAVITZ
`tarek.fahmi@tnfip.com
`amy.embert@fseip.com
`
`
`7
`
`Universal Electronics Exhibit 2007, Page 7
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111