Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 13
`
`
` Entered: March 18, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ALEX IS THE BEST, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02058
`Patent 8,581,991 B1
`____________
`
`
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`571-272-7822
`
`
`
` Paper 13
`
`
` Entered: March 18, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ALEX IS THE BEST, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02058
`Patent 8,581,991 B1
`____________
`
`
`
`
`
`Before DANIEL N. FISHMAN, MINN CHUNG, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`
`I. INTRODUCTION
`
`Petitioner, Google LLC (“Petitioner”), filed a Request for Rehearing
`
`(Paper 11, “Request” or “Req. Reh’g”) of the Decision (Paper 10, “Dec.”),
`
`in which, based on the information presented in the Petition (Paper 2,
`
`“Pet.”), we denied institution of an inter partes review of claims 1–3, 10–14,
`
`and 21 (the “challenged claims”) of U.S. Patent No. 8,581,991 B1 (Ex. 1001,
`
`“the ’991 patent”). In its Request, Petitioner contends that our Decision
`
`overlooked or misapprehended certain teachings of Inoue (Ex. 1005) and
`
`Kusaka (Ex. 1009) about a “website archive and review [center] (WSARC)”
`
`or an “account associated with an Internet direct device” recited in
`
`independent claims 1 and 13. See Req. Reh’g 3–4. The Request also asserts
`
`that the Decision overlooked certain “background” discussion by
`
`Petitioner’s declarant, Dr. Madisetti. Id. at 2. For the reasons stated below,
`
`Petitioner’s Request for Rehearing is denied.
`
`
`
`II. STANDARD OF REVIEW
`
`“The burden of showing a decision should be modified lies with the
`
`party challenging the decision,” and the challenging party “must specifically
`
`identify all matters the party believes the Board misapprehended or
`
`overlooked, and the place where each matter was previously addressed” in a
`
`paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing
`
`of our Decision denying institution of trial based on the Petition, it must
`
`show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a
`
`decision on petition, a panel will review the decision for an abuse of
`
`discretion.”). An abuse of discretion occurs when a “decision was based on
`
`an erroneous conclusion of law or clearly erroneous factual findings, or . . . a
`
`2
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`IPR2017-02058
`Patent 8,581,991 B1
`
`clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties
`
`Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).
`
`
`
`III. ANALYSIS
`
`A. Arguments in the Request Regarding Inoue
`
`We first address Petitioner’s contention that our Decision overlooked
`
`certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In
`
`the Decision, we found that, although the Petition appears to map Inoue’s
`
`file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file
`
`server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the
`
`Petition does not discuss the term “WSARC” or “website archive and review
`
`center” in relation to Inoue, and does not explain adequately why Inoue’s
`
`file server teaches or suggests the “WSARC” recited in the claims (id. at 17,
`
`19 (citing Pet. 15–18)). Thus, based on the record presented, we determined
`
`that simply stating “a WSARC (Inoue’s file server)” in the Petition without
`
`any elaboration does not satisfy Petitioner’s burden required for institution
`
`of a review in this case (id. at 19–20 (citations omitted)).
`
`In its Request, Petitioner does not argue that we misapprehended or
`
`overlooked Petitioner’s arguments or explanations presented in the Petition.
`
`Nor does the Request assert that the Decision applied incorrect standards for
`
`Petitioner’s burden required for institution of an inter partes review.
`
`Instead, the Request focuses on additional discussion of Inoue’s disclosures.
`
`In the Request, Petitioner contends that the Decision overlooked “the
`
`broader context of Inoue’s disclosure regarding the file server” (Req. Reh’g
`
`6) and presents a lengthy discussion of Figures 3 and 13 of Inoue and their
`
`3
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`IPR2017-02058
`Patent 8,581,991 B1
`
`associated description, arguing that Inoue’s file server discloses the claimed
`
`“WSARC” (id. at 6–8).
`
`Much of the Request’s discussion of Inoue, however, appears to be
`
`new arguments that were not presented initially in the Petition. Although the
`
`Request cites pages 12–21 of the Petition generally, it does not specifically
`
`identify where the arguments in the Request were presented in the Petition.
`
`See Req. Reh’g 6–8. For example, the Request does not identify, nor do we
`
`discern, where in the Petition the following arguments were made: “Inoue’s
`
`file server 100 performs all the functions of the WSARC recited in the
`
`challenged claims” (id. at 7); Inoue describes the “web-related function”
`
`performed by Inoue’s file server (id. at 7–8); and Inoue teaches “[s]etting up
`
`file server 100’s user interface as a website” because “Figure 13’s user
`
`interface . . . depicts a web page” (id. at 8). Nor does the Request point to
`
`any testimony in the Declaration of Dr. Madisetti (Ex. 1010) on claims 1 and
`
`13 that discusses these arguments. See Ex. 1010 ¶¶ 426–436, 443–446.
`
`The Request also asserts that Figure 13 of Inoue shows a web page
`
`because “as Dr. Madisetti explained in the background for his opinions, a
`
`website is a common means of sharing images among a variety of devices
`
`connected to the Internet.” Req. Reh’g 8 (emphasis added) (citing Ex. 1010
`
`¶¶ 67, 70, 72–73, 82). Again, Petitioner does not identify, nor do we
`
`discern, where in the Petition this argument was presented. Nor does
`
`Petitioner identify where in the Petition paragraphs 67, 70, 72–73, and 82 of
`
`Dr. Madisetti’s Declaration were cited or discussed.
`
`Plainly, we could not have misapprehended or overlooked arguments
`
`or evidence that were not presented or developed in the Petition.
`
`4
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`IPR2017-02058
`Patent 8,581,991 B1
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`
`To the extent Petitioner argues that we nonetheless should have
`
`credited Dr. Madisetti’s testimony in the “background” paragraphs, we are
`
`not persuaded for the reasons explained in what follows. First, we note that
`
`these “background” paragraphs were not cited or discussed in the Petition or
`
`in Dr. Madisetti’s testimony on claims 1 and 13 submitted in support of
`
`Petitioner’s contention that Inoue teaches a “WSARC” recited in the claims.
`
`See Pet. 12–21, 24–26; Ex. 1010 ¶¶ 426–436, 443–446. Second,
`
`Dr. Madisetti’s Declaration spans over 490 pages and includes over 900
`
`paragraphs. The voluminous nature of the Madisetti Declaration appears to
`
`be largely due to Petitioner’s decision to prepare and submit a single
`
`Declaration for all eight petitions Petitioner filed in Cases IPR2017-02052,
`
`IPR2017-02053, IPR2017-02054, IPR2017-02055, IPR2017-02056,
`
`IPR2017-02057, IPR2017-02058, and IPR2017-02059. See Ex. 1010 ¶¶ 2–
`
`11. Further, within the single Madisetti Declaration, there exists only one
`
`“background” section (see id. at 25 n.4), titled “OVERVIEW OF THE
`
`STATE OF THE ART RELEVANT TO THE PATENTS-AT-ISSUE,” that
`
`discusses what was purportedly known to a person of ordinary skill in the art
`
`before the filing date of any of the patents at issue in these eight petitions. In
`
`the “background” paragraphs cited in the Request, Dr. Madisetti does not
`
`discuss any specific challenged claim of any specific patent at issue in these
`
`eight proceedings. See Ex. 1010 ¶¶ 67, 70, 72–73, 82. Dr. Madisetti’s
`
`discussion of claim 1 of the ’991 patent in relation to Inoue appears about
`
`200 pages later, separated by over 300 paragraphs from the “background”
`
`discussion. See Ex. 1010 ¶ 426.
`
`By asserting that our Decision overlooked Dr. Madisetti’s
`
`“background” discussion (see Req. Reh’g 2, 8), Petitioner apparently argues
`
`5
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`IPR2017-02058
`Patent 8,581,991 B1
`
`that we should have credited Dr. Madisetti’s testimony in paragraphs 67, 70,
`
`72–73, and 82 of his Declaration that were not cited in the Petition or
`
`Dr. Madisetti’s discussion of claims 1 and 13 of the ’991 patent. But it is
`
`not reasonable for Petitioner to expect the Board to search through hundreds
`
`of pages of testimony from Dr. Madisetti and somehow match his unspecific
`
`“background” testimony applicable to all eight petitions with a specific
`
`limitation of a specific claim of the particular patent challenged in this case
`
`(among all of the claims of the patents at issue in these eight separate
`
`proceedings), to find support for Petitioner’s contention that Inoue teaches a
`
`“WSARC” recited in claims 1 and 13 of the ’991 patent. If Petitioner
`
`wanted for us to consider the “background” paragraphs in Dr. Madisetti’s
`
`Declaration as supporting arguments presented and developed in the
`
`Petition, it should have provided citations in the Petition to these paragraphs
`
`with particularity, and explained their relevance to the claim limitation at
`
`issue. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A
`
`brief must make all arguments accessible to the judges, rather than ask them
`
`to play archeologist with the record.”).
`
`The Request also cites to paragraph 46 of the Madisetti Declaration as
`
`opining that a person of ordinary skill in the art would have understood that
`
`“[a] WSARC is nothing more than a remote server with databases to store or
`
`manage images that is accessible via the ‘Internet’ or a ‘communication
`
`network’ through well-known wired, wireless, cellular, or other
`
`communication means.” Req. Reh’g 11 (citing Ex. 1010 ¶ 46). Again, the
`
`Request does not identify, nor do we discern, where in the Petition or
`
`Dr. Madisetti’s discussion of claims 1 and 13 of the ’991 patent paragraph
`
`46 of his Declaration was cited or discussed.
`
`6
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`IPR2017-02058
`Patent 8,581,991 B1
`
`
`Paragraph 46 of Dr. Madisetti’s Declaration appears in the section
`
`titled “Similarities And Differences Among The Issued Claims,” in which
`
`Dr. Madisetti discusses some of the similarities and differences among all of
`
`the claims challenged in the eight separate petitions filed by Petitioner. See
`
`Ex. 1010 ¶¶ 41–48. Similar to the “background” paragraphs discussed
`
`above, paragraph 46 is not cited in the Petition or in Dr. Madisetti’s
`
`discussion of claims 1 and 13 of the ’991 patent, which appears about 200
`
`pages later, separated by nearly 400 paragraphs from paragraph 46. See
`
`Pet. 12–21, 24–26; Ex. 1010 ¶¶ 426–436, 443–446. For reasons similar to
`
`those discussed above, if Petitioner desired for us to consider paragraph 46
`
`of Dr. Madisetti’s Declaration as supporting arguments presented and
`
`developed in the Petition, it should have provided citations in the Petition to
`
`the paragraph with particularity, and explained its relevance to the claim
`
`limitation at issue.
`
`At best, Petitioner’s arguments in its Request for Rehearing attempt to
`
`remedy the deficiencies in the Petition our Decision identified, by
`
`supplementing the arguments in the Petition. A request for rehearing is not a
`
`supplemental petition. Nor is it an opportunity to present new arguments or
`
`evidence that could have been presented and developed in the first instance
`
`in the Petition.
`
`As explained in the Decision (Dec. 19–20), it was Petitioner’s burden
`
`“from the onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (emphases added) (citing 35 U.S.C. § 312(a)(3)); see Intelligent
`
`Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`
`2016) (“[T]he expedited nature of IPRs bring with it an obligation for
`
`7
`
`
`
`IPR2017-02058
`Patent 8,581,991 B1
`
`petitioners to make their case in their petition to institute.” (emphases
`
`added)). The record shows that, rather than overlooking any teachings of
`
`Inoue or any “background” discussion by Dr. Madisetti, the Decision simply
`
`considered the arguments and explanations of the evidence Petitioner
`
`presented in the four corners of the Petition, and properly determined that
`
`the Petition did not meet this burden required on Petitioner. Dec. 19–20.
`
`B. Arguments in the Request Regarding Kusaka
`
`We next turn to Petitioner’s assertion that our Decision overlooked
`
`certain teachings in Kusaka about an “account associated with an Internet
`
`direct device on a website archive and review (WSARC)” recited in
`
`independent claims 1 and 13. Req. Reh’g 9. In the Petition, Petitioner
`
`mapped the claimed “Internet direct device” and “WSARC” to the electronic
`
`camera and the image server of Kusaka, respectively (Pet. 56, 58), and
`
`asserted that “Kusaka discloses an account on the WSARC (image server)
`
`that is associated with the IDD [i.e., the electronic camera]” (Pet. 59
`
`(emphasis added) (citing Ex. 1009 ¶¶ 3, 219–221)). In the Decision, we
`
`found that the Petition does not identify in the cited paragraphs of Kusaka
`
`any teaching of an “account” on Kusaka’s image servers that is associated
`
`with the electronic camera. Dec. 29.
`
`In its Request, Petitioner contends that an “album” existing on
`
`Kusaka’s image server is the claimed “account.” Req. Reh’g 12 (“Kusaka
`
`describes storing images in albums (accounts) based upon an identification
`
`of a particular user of Kusaka’s system.” (emphasis added)). Petitioner,
`
`however, does not identify where in the Petition Petitioner mapped Kusaka’s
`
`album to the claimed “account.”
`
`8
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`
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`IPR2017-02058
`Patent 8,581,991 B1
`
`
`In the Decision, we determined that, even if we were to consider
`
`Kusaka’s description of the albums on the image server, the Petition does
`
`not show sufficiently that Kusaka teaches “an account associated with the
`
`Internet direct device” existing on a “WSARC” because Kusaka’s albums
`
`are associated with users, not with Kusaka’s camera (i.e., the claimed
`
`“Internet direct device”) as required by the claims. Dec. 30–31. As
`
`discussed in the Decision, in Kusaka, no camera identification information is
`
`sent to the image server. Id. Instead, only user identification information is
`
`transmitted to Kusaka’s image server. Id. (citing Ex. 1009 ¶¶ 3, 219–221).
`
`In the Request, Petitioner argues that Kusaka’s album is associated
`
`with the camera because Kusaka describes that a camera can “retrieve image
`
`information from an album on the image server—i.e., the camera continues
`
`to be associated with the images contained in the album on the image
`
`server.” Req. Reh’g 13 (emphasis added) (citing Ex. 1009 ¶ 236); see also
`
`Pet. 58 (arguing that “[t]he images on the image server can later be
`
`managed, reviewed, or downloaded via the electronic camera” (citing
`
`Ex. 1009 ¶ 236)).
`
`We are not persuaded by Petitioner’s argument. Paragraph 236 of
`
`Kusaka cited by Petitioner is reproduced below in its entirety.
`
`[0236] In playback mode, the CPU 50 first reads the thumbnail
`image data stored in the memory card 77 and stores it temporarily
`in the frame memory 69, and displays the thumbnail image data
`on the left screen 21 by means of the screen control circuit 92.
`The CPU 50 next transmits the image identification information
`corresponding to the thumbnail image data selected by the user,
`the camera identification information and the user identification
`information by means of the wireless portable telephone circuit
`72 through antenna 76 to the gateway server 160. Subsequently,
`the CPU 50 receives the image file corresponding to the image
`
`9
`
`
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`IPR2017-02058
`Patent 8,581,991 B1
`
`
`identification information transmitted to the gateway server 160
`from the gateway server 160 by means of the wireless portable
`telephone circuit 72, temporarily stores the image data contained
`in the image file in the frame memory 69, and displays the image
`data on the left screen 21 by means of the screen control circuit
`92.
`
`Ex. 1009 ¶ 236 (emphases added). As shown above, paragraph 236 of
`
`Kusaka describes that the camera in a playback mode receives a
`
`user-selected image from the “gateway server,” not from the image server.
`
`Thus, although paragraph 236 of Kusaka may suggest that the gateway
`
`server of Kusaka may associate the camera with the user information and the
`
`image files stored on the image server, there is no teaching or suggestion in
`
`paragraph 236 that the albums on Kusaka’s image server (which Petitioner
`
`maps to the claimed “WSARC”) are associated with Kusaka’s electronic
`
`camera. As discussed in the Decision, there is no disclosure in Kusaka of
`
`anything associated with a camera existing on the image server because no
`
`camera identification information is sent to the image server. Dec. 30–31.
`
`In the Request, Petitioner asserts that the “user identification”
`
`transmitted to the image server of Kusaka is “associated with” the camera
`
`because the “user identification” “originated” from Kusaka’s electronic
`
`camera. Req. Reh’g 13. The Request does not identify, nor do we discern,
`
`where in the Petition this argument was made. Nor does the Request
`
`identify where in the Petition Petitioner proposed or explained its apparent
`
`construction of the term “associated with” underlying Petitioner’s argument.
`
`These arguments appear to be new arguments presented for the first time in
`
`Petitioner’s Request for Rehearing to remedy the deficiencies in the Petition
`
`that were identified in our Decision.
`
`10
`
`
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`IPR2017-02058
`Patent 8,581,991 B1
`
`
`It was Petitioner’s affirmative duty to explain how the challenged
`
`claims should be construed and how, as so construed, they are unpatentable.
`
`See 37 C.F.R. § 42.104(b)(3)–(4). Thus, if Petitioner intended to argue a
`
`claim construction of the term “associated with” such that, under its
`
`construction, information that “originated” from a camera is “associated
`
`with” the camera, such an analysis should have been made explicit in the
`
`Petition. A rehearing request is not a supplemental petition. Nor is it an
`
`opportunity to present new arguments or evidence that could have been
`
`presented and developed in the first instance in the Petition. Simply put, we
`
`could not have misapprehended or overlooked arguments or evidence that
`
`were not presented or developed in the Petition.
`
`In the Request, Petitioner also asserts that Kusaka discloses a
`
`“WSARC” recited in the claims. Req. Reh’g 9–11. We need not address
`
`Petitioner’s contention because, although much of the discussion in the
`
`Request appears to be new arguments presented for the first time in the
`
`Request, they would not have affected the outcome of the Decision denying
`
`institution in this case. As discussed above, the record shows that the
`
`Decision properly determined that the Petition does not demonstrate
`
`sufficiently Kusaka teaches “an account associated with the Internet direct
`
`device” existing on a “WSARC,” as recited in independent claims 1 and 13.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioner has not demonstrated that we
`
`abused our discretion or that we misapprehended or overlooked any matter
`
`in our Decision denying institution of inter partes review of the challenged
`
`claims of the ’991 patent. Petitioner, therefore, has not carried its burden of
`
`11
`
`
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`IPR2017-02058
`Patent 8,581,991 B1
`
`demonstrating that the Decision denying institution should be modified. See
`
`37 C.F.R. § 42.71(d).
`
`
`
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
`
`IV. ORDER
`
`is DENIED.
`
`
`
`
`
`12
`
`
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`IPR2017-02058
`Patent 8,581,991 B1
`
`PETITIONER:
`
`Joshua Larsen
`Joshua.larsen@btlaw.com
`
`Steven Shipe
`Steven.shipe@btlaw.com
`
`Jeffrey C. Morgan
`Jeff.morgan@btlaw.com
`
`PATENT OWNER:
`
`C. Andrew Im
`docket@imiplaw.com
`
`
`
`
`13
`
`
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