UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`___________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`RPX CORPORATION
`Petitioner
`
`v.
`
`MD SECURITY SOLUTIONS LLC
`Patent Owner
`___________
`
`IPR2016-00285
`Patent 7,864,983
`___________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and WILLIAM M. FINK
`Administrative Patent Judges.
`
`
`
`
`
`___________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`RPX CORPORATION
`Petitioner
`
`v.
`
`MD SECURITY SOLUTIONS LLC
`Patent Owner
`___________
`
`IPR2016-00285
`Patent 7,864,983
`___________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and WILLIAM M. FINK
`Administrative Patent Judges.
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`
`Page
`
`STATEMENT OF FACTS ............................................................................. 1
`
`LEGAL STANDARD .................................................................................... 3
`
`III. THE BOARD ABUSED ITS DISCRETION IN THIS CASE ...................... 3
`
`A.
`
`B.
`
`The Board’s Institution Decision Was Based On A Clearly
`Erroneous Factual Finding Regarding Milinusic ................................. 3
`
`The Board Committed Legal Error When It Instituted Review
`Based On Information Not Presented In The Petition ......................... 7
`
`IV. CONCLUSION ............................................................................................. 10
`
`
`
`-i-
`
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`2Wire, Inc. v. TQ Delta LLC,
`IPR2015-00240, Paper 18 (PTAB May 29, 2015) ............................................... 9
`
`CAE Screenplates Inc. v. Heinrich Fiedler GmbH,
`224 F.3d 1308 (Fed. Cir. 2000) ............................................................................ 6
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) ............................................................................ 6
`
`PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc.,
`840 F.2d 1565 (Fed. Cir. 1988) ............................................................................ 3
`
`Federal Statutes
`
`35 U.S.C. § 103(a) ..................................................................................................... 1
`
`35 U.S.C. § 313 ................................................................................................ 8, 9, 10
`
`35 U.S.C. § 314(a) ..................................................................................................... 7
`
`35 U.S.C. § 316(a)(8) ............................................................................................... 10
`
`Regulations
`
`37 C.F.R. § 42.1(b) .................................................................................................... 9
`
`37 C.F.R. § 42.71(c) ................................................................................................... 3
`
`37 C.F.R. § 42.71(d) .................................................................................................. 3
`
`37 C.F.R. § 42.104(b)(4),(5) ...................................................................................... 8
`
`
`
`-ii-
`
`
`
`
`
`I.
`
`STATEMENT OF FACTS
`On December 4, 2015, Petitioner RPX Corporation (“Petitioner”) filed a
`
`petition (“Petition”) for inter partes review of claims 1-20 of U.S. Patent No.
`
`7,864,983 (Ex. 1001, the “’983 Patent”). See IPR2016-00285, Paper 1. MD
`
`Security Solutions LLC (“Patent Owner”) filed a preliminary response on March
`
`14, 2016, in which it argued, inter alia, that Milinusic1 does not disclose “a
`
`processor” as required by claims 1 and 11 of the ’983 Patent. IPR2016-00285,
`
`Paper 8 (“Prelim. Resp.”) at 16-20.
`
`In its June 6, 2016 Institution Decision, the Board authorized the institution
`
`of inter partes review for claims 1-20 on the following grounds:
`
`
`
`
`
`Claims 1–8, 11, and 18–20 as obvious under 35 U.S.C. § 103(a) over
`
`Milinusic and Osann; and
`
`Claims 9, 10 and 12–17 as obvious under 35 U.S.C. § 103(a) over
`
`Milinusic, Osann, and Ozer.2
`
`Paper 9 (“Inst. Dec.”) at 20. The Board declined to institute inter partes review of
`
`claims 1-8, 11, and 18-20 on the proposed grounds of obviousness over Lee. 3 Id.
`
`
`1 U.S. Patent No. 7,106,333 B1, issued September 12, 2006 (Ex. 1003)
`(“Milinusic”).
`2 U.S. Patent Application Publication No. 2004/0120581 A1, published June 24,
`2004 (Ex. 1005) (“Ozer”).
`3 U.S. Patent Application Publication No. 2005/0267605 A1, published December
`1, 2005 (Ex. 1002) (“Lee”).
`
`-1-
`
`
`
`
`
`Claim 1 requires, “a processor . . . arranged to . . . receive the image
`
`obtained by said at least one camera.” Ex. 1001, Claim 1. Claim 11 similarly
`
`requires “a processor which . . . receives the image obtained by the at least one
`
`camera.” Ex. 1001, Claim 11. In the Institution Decision, the Board found
`
`Petitioner’s allegations were sufficient to show that Milinusic meets this limitation
`
`based on a misquoted sentence in Milinusic at Col. 4, lines 30-32:
`
`We understand Patent Owner to be arguing that this cited
`portion does not explicitly require the processor (as
`opposed to other parts of server 210) to receive the data.
`We have considered this, but we do not agree because the
`next sentence in Milinusic, referring to CPU 360, states:
`‘[i]t is also preferably configured to receive and
`distribute surveillance data to a requesting surveillance
`client 240’ (id. at 4:30–32). Because CPU 360 expressly
`‘receives . . . surveillance data,’ Dr. Lavian’s conclusion
`that a person of ordinary skill in the art would have
`understood CPU 360 is arranged to receive images
`obtained by a camera (see Ex. 1010 ¶ 128) is supported
`by the record before us.
`
`Inst. Dec. at 14 (emphasis added).
`
`Milinusic, however, uses the word “retrieve,” not “receive.” At Col. 4, lines
`
`30-32, Milinusic states, “[i]t is also preferably configured to retrieve and distribute
`
`surveillance data to a requesting surveillance client 240 or based upon
`
`predetermined distribution criteria.” Ex. 1003, Col. 4, lines 30-32 (emphasis
`
`added).
`
`-2-
`
`
`
`
`
`Neither the Petition nor Petitioner’s declarant provides any discussion of this
`
`sentence of Milinusic, asserts that this sentence in Milinusic meets the “processor”
`
`limitation of Claims 1 and 11, or asserts that “retrieve” is synonymous with
`
`“receive.”
`
`II. LEGAL STANDARD
`
`When rehearing a decision on a petition, the Board will review the decision
`
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs
`
`when a “decision was based on an erroneous conclusion of law or clearly
`
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
`
`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988). See
`
`also 37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the
`
`party believes the Board misapprehended or overlooked”).
`
`III. THE BOARD ABUSED ITS DISCRETION IN THIS CASE.
`
`A. The Board’s Institution Decision Was Based On A Clearly
`Erroneous Factual Finding Regarding Milinusic.
`
` The Board instituted review based on a clearly erroneous factual finding that
`
`the CPU 360 in Milinusic “expressly ‘receives . . . surveillance data,’” when, in
`
`fact, Milinusic states that the CPU 360 is “configured to retrieve and distribute
`
`surveillance data to a requesting surveillance client 240.” Compare Int. Dec. at 14
`
`with Ex. 1003, Col. 4, lines 30-32 (emphasis added). The Board has not found that
`
`the terms “retrieve” and “receive” are synonymous, and neither the Petition nor
`
`-3-
`
`
`
`
`
`Petitioner’s declarant provide any discussion of this sentence of Milinusic, asserts
`
`that this sentence in Milinusic meets the “processor” limitation of Claims 1 and 11,
`
`or asserts that “retrieve” is synonymous with “receive.”
`
`Claim 1 of the ’983 Patent requires “a processor coupled to said at least one
`
`camera and arranged to control said at least one camera and receive the image
`
`obtained by said at least one camera.” Ex. 1001, Col. 14:1-3. Claim 11 of the ’983
`
`Patent requires “providing a processor which controls the at least one camera and
`
`receives the image obtained by the at least one camera.” Id. at Col. 15:30-32.
`
`Patent Owner argued in its preliminary response that Petitioner failed to cite
`
`support for its assertion that Milinusic disclosed a processor that receives images
`
`as required by claim 1 and 11. Prelim. Resp. at 17-19. Specifically, Patent Owner
`
`argued that the portion of Milinusic cited in the Petition and by Petitioner’s
`
`declarant only discussed that surveillance server 210 received surveillance data,
`
`but there was no disclosure that CPU 360 received surveillance data. Inst. Dec. at
`
`13-14 (citing Prelim. Resp. at 18-19).
`
`Considering Patent Owner’s position, the Board explained, “[w]e understand
`
`Patent Owner to be arguing that this cited portion does not explicitly require the
`
`processor (as opposed to other parts of server 210) to receive the data.” Inst. Dec.
`
`at 14. The Board, however, rejected Patent Owner’s position because “the next
`
`sentence in Milinusic, referring to CPU 360, states ‘[i]t is also preferably
`
`-4-
`
`
`
`
`
`configured to receive and distribute surveillance data to a requesting surveillance
`
`client 240.” Id. (citing Ex. 1003, Col. 4:30-32). The Board further credited
`
`Petitioner’s declarant, stating “[b]ecause CPU 360[] expressly ‘receives . . .
`
`surveillance data,’ Dr. Lavian’s conclusion that a person of ordinary skill in the art
`
`would have understood CPU 360 is arranged to receive images obtained by a
`
`camera is supported by the record before us.” Id. (citation omitted).
`
`Milinusic, however, does not disclose that CPU 360 “receives” surveillance
`
`data. To the contrary, the Milinusic specification states that that CPU 360 “is also
`
`preferably configured to retrieve and distribute surveillance data to a requesting
`
`surveillance client 240.” Ex. 1003, Col. 4:30-32 (emphasis added). Whether the
`
`Board misread or simply confused the Milinusic disclosure with the claim
`
`language of the ’983 Patent, the Board made an erroneous factual finding by
`
`reading “receive” instead of “retrieve.” The Board’s erroneous factual finding
`
`directly lead to the equally erroneous conclusion that Petitioner’s declarant, Dr.
`
`Lavian, was justified in concluding that that Milinusic teaches a processor that
`
`receives images.
`
`The erroneous substitution of “receive” for “retrieve” completely changes
`
`the disclosure of Milinusic. The sentence cited by the Board states that the CPU
`
`360 “is configured to retrieve and distribute surveillance data to a requesting
`
`surveillance client 240.” Ex. 1003, Col. 4, lines 30-32 (emphasis added). If the
`
`-5-
`
`
`
`
`
`surveillance client 240 is making a request for surveillance data, it is the
`
`surveillance client 240, not CPU 360, that would receive the surveillance data.
`
`Milinusic confirms this: “[s]urveillance client 240 is preferably configured to
`
`allow a user to retrieve surveillance data or specified reports by issuing a request to
`
`surveillance server 210.” Id. at Col. 3, lines 34-37. Thus, under the correct
`
`reading of Milinusic, the CPU 360 is not “a processor . . . [that] receives the image
`
`obtained by the at least one camera,” as required by Claims 1 and 11.
`
`The Board has not made any finding that the claim term “receive” is
`
`synonymous with Milinusic’s term “retrieve.” Neither the Petition nor the
`
`Petitioner’s declarant ever addressed Col. 4, lines 30-32 or the meaning of
`
`“receive” and “retrieve.” “Receive” and “retrieve” have distinct meanings and
`
`should be interpreted accordingly. See, e.g., Helmsderfer v. Bobrick Washroom
`
`Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (citing Applied Med. Res. Corp.
`
`v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.4 (Fed. Cir. 2006) (“[T]he use of
`
`two terms in a claim requires that they connote different meanings . . . .”)); CAE
`
`Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000)
`
`(“In the absence of any evidence to the contrary, we must presume that the use of
`
`these different terms in the claims connotes different meanings.”). In fact,
`
`Milinusic uses the terms “receive” and “retrieve” distinctly because the portion of
`
`Milinusic discussed in the Petition states that surveillance data is “received” by the
`
`-6-
`
`
`
`
`
`surveillance server 210 but that CPU 360 “retrieves and distributes surveillance
`
`data to a requesting surveillance client 240.” Compare Ex. 1003, Col. 4, lines 28-
`
`30 with Ex. 1003, Col. 4, lines 30-32. This further confirms that the claim term
`
`“receive” is not synonymous or interchangeable with Milinusic’s term “retrieve.”
`
`Had the Board accurately recited Milinusic, it would have noted that
`
`Milinusic suffered from the same flaw as Lee.4 The Board declined to institute
`
`inter partes review on Petitioner’s proposed ground of obviousness over Lee
`
`because it found that Lee “fails to provide any disclosure regarding microprocessor
`
`150 receiving images” and thus did not sufficiently show how Lee teaches the
`
`recited processor limitation of claims 1 and 11. Inst. Dec. at 9. Likewise, an
`
`accurate reading of Milinusic clearly shows that Milinusic also “fails to provide
`
`any disclosure regarding [CPU 360] receiving images” and therefore does not
`
`sufficiently show how Milinusic teaches the recited processor limitation of claims
`
`1 and 11. The Board’s factual finding to the contrary rested entirely on its
`
`erroneous reading of Milinusic.
`
`B.
`
`The Board Committed Legal Error When It Instituted Review
`Based On Information Not Presented In The Petition.
`The Board abused its discretion when it based its decision to institute inter
`
`partes review on information that was not presented in Petitioner’s petition. Under
`
`
`4 U.S. Patent Application Publication No. 2005/0267605 A1, published December
`1, 2005 (Ex. 1002) (“Lee”).
`
`-7-
`
`
`
`
`
`35 U.S.C. § 314(a), “the Director may not authorize an inter partes review to be
`
`instituted unless the Director determines that the information presented in the
`
`petition filed under section 311 and any response filed under section 313 shows
`
`that there is a reasonable likelihood that the petitioner would prevail with respect to
`
`at least 1 of the claims challenged in the petition.” Further, the rules require that
`
`“[t]he petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon,” and the petition “must identify . . .
`
`[t]he exhibit number of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge.” 37 C.F.R.
`
`§ 42.104(b)(4), (5) (emphasis added).
`
`With respect to the “processor” limitation of Claims 1 and 11, neither the
`
`Petition nor Petitioner’s declarant ever discussed or even cited Col. 4, lines 30-32
`
`of Milinusic, as noted in Patent Owner’s preliminary response. See Prelim. Resp.
`
`at 17-19 (addressing all of the portions of Milinusic cited in the Petition and by
`
`Petitioner’s declarant). In response to Patent Owner’s argument the Board
`
`instituted review based on its own interpretation and analysis of Milinusic. See
`
`Inst. Dec. at 14 (citing Ex. 1003, Col. 4:30-32) (“We have considered this, but we
`
`do not agree because the next sentence in Milinusic, referring to CPU 360, states:
`
`-8-
`
`
`
`
`
`‘[i]t is also preferably configured to receive and distribute surveillance data to a
`
`requesting surveillance client 240.’”).
`
`The Board has repeatedly refused to institute review based on arguments
`
`presented in a declaration but not discussed sufficiently in a petition. See, e.g.,
`
`2Wire, Inc. v. TQ Delta LLC, IPR2015-00240, Paper 18 at 11 (PTAB May 29,
`
`2015) (explaining “we do not consider information presented in the Declaration but
`
`not discussed sufficiently in the Petition”). This case goes one step further,
`
`because the analysis of Milinusic by the Board was not presented in the Petition or
`
`the accompanying declaration.
`
`The Board’s prior decisions to disregard arguments and information outside
`
`the Petition is consistent with statute, rules, due process and “secur[ing] the just,
`
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). If
`
`the Board were to institute review based on information or argument that is not in
`
`the petition, a patent owner is deprived of the right to provide its preliminary
`
`response and, if instituted, fairly respond to the petition. Under 35 U.S.C. § 313,
`
`“the patent owner shall have the right to file a preliminary response . . . that sets
`
`forth reasons why no inter partes review should be instituted based upon the failure
`
`of the petition to meet any requirement of this chapter.” (emphasis added). In its
`
`preliminary response to the petition, a patent owner can only respond to the
`
`arguments set forth in the petition. Here, there was no possible way for Patent
`
`-9-
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`
`
`
`
`Owner to know that the Board might rely on a portion of Milinusic that was neither
`
`cited nor discussed in the Petition or by Petitioner’s declarant. As such, it was not
`
`addressed in Patent Owner’s Preliminary Response.
`
`Similarly, 35 U.S.C. § 316(a)(8) “provid[es] for the filing by the patent
`
`owner of a response to the petition under section 313 after an inter partes review
`
`has been instituted.” (emphasis added). Here, other than again pointing out the
`
`failure of the Petition to cite any evidence that Milinusic meets the “processor”
`
`limitation of Claims 1 and 11, Patent Owner’s response cannot include any cross
`
`examination of Petitioner’s declarant regarding his understanding and analysis of
`
`Col. 4, lines 30-32, because he did not cite, mention or even discuss this portion of
`
`Milinusic.
`
`Accordingly, the Board should limit its institution decision to information in
`
`the Petition. Because Col. 4, lines 30-32 of Milinusic were not discussed or even
`
`cited in the Petition with regard to the “processor” limitations of Claims 1 and 11,
`
`Patent Owner respectfully requests that the Board grant this rehearing request and
`
`deny the Petition.
`
`IV. CONCLUSION
`
`The Board’s institution decision was an abuse of discretion because it (1)
`
`relied on an erroneous factual finding regarding Milinusic, and (2) relied on
`
`information not discussed in any manner in the Petition or by Petitioner’s
`
`-10-
`
`
`
`
`
`declarant. Accordingly, Patent Owner respectfully requests that the Board grant
`
`this rehearing request and deny the Petition.
`
`Dated: June 20, 2016
`
`
`
`
`
`By:/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
`
`-11-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of the foregoing has been served on Petitioner via
`
`electronic mail transmission addressed to the person(s) at the address below:
`
`Richard F. Giunta
`Daniel T. Wehner
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`DWehner-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`Date: June 20, 2016
`
`
`
`
`
`/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
`
`
`-12-
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