Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Entered: February 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOE ANDREW SALAZAR,
`Patent Owner.
`____________
`
`Case IPR2018-00273
`Patent 5,802,467
`____________
`
`Before JAMESON LEE, KEVIN W. CHERRY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Entered: February 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`JOE ANDREW SALAZAR,
`Patent Owner.
`____________
`
`Case IPR2018-00273
`Patent 5,802,467
`____________
`
`Before JAMESON LEE, KEVIN W. CHERRY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`
`
`I.
`BACKGROUND
`In a Decision rendered on July 9, 2018, we denied institution of trial
`with respect to claims 1‒7, 10, 14, 17, 23, 26‒32, and 34 of U.S. Patent No.
`5,802,467 (“the ’467 patent”) on any alleged ground of unpatentability
`asserted in the Petition. Paper 11 (“Dec.”). The Decision stated that the
`Petition alleged the following grounds of unpatentability:
`Claim(s) Challenged
`Basis
`References
`1‒7, 10, 17, 23, 26‒32,
`§ 103(a) Goldstein and Keenan
`and 34
`14
`
`§ 103(a) Goldstein, Keenan, and Thompson
`
`Id. at 7.
`On August 8, 2018, Petitioner filed a Request for Rehearing
`(“Request” or “Req. Reh’g”) (Paper 12). Petitioner requests that we
`reconsider the denial of ground one with respect to claims 1‒7, 27‒30, and
`34. Id. at 1.
`On request for rehearing, the burden of showing a decision on whether
`to institute trial should be modified lies with the party challenging the
`decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a
`panel will review the decision for an abuse of discretion.” 37 C.F.R.
`§ 42.71(c). “The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.”
`37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify
`the Decision. Thus, Petitioner’s Request is denied.
`
`
`2
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`
`II. DISCUSSION
`Petitioner argues in the Request that the Board applied an incorrect
`construction of the plain and ordinary meaning of the term
`“reprogrammable” as it applies to claim 1. Req. Reh’g 6‒12. Petitioner
`argues that under Petitioner’s proposed construction, Goldstein and Keenan
`teach each and every element of claims 1‒7, 27‒30, and 34. Id. at 12‒14.
`Claim 1 recites, in relevant part, “said microprocessor creating a
`plurality of reprogrammable communication protocols for transmission to
`said external devices” (emphasis added). In our Decision, we noted
`Petitioner had not proposed an explicit definition of the term
`“reprogrammable,” but had maintained the term within a proposed
`construction for a larger claim phrase, which is consistent with construing
`the term according to its plain and ordinary meaning. Dec. 9. We adopted
`Patent Owner’s proposed construction, “a program that can be replaced by
`another” as the plain and ordinary meaning of “reprogrammable.” Id. at 9‒
`10.
`
`Petitioner contends the Board’s interpretation of the plain and
`ordinary meaning of the term “reprogrammable” is incomplete and should
`include “to program anew or differently.” Req. for Reh’g 6. Petitioner
`argues this additional language is required for the construction to be
`consistent with Patent Owner’s Infringement Contentions in related
`litigation (id. at 6‒9), the ordinary meaning of the term (id. at 9‒11), and the
`teachings of the ’467 patent (id. at 11‒12).
`We did not misapprehend or overlook any evidence or argument
`presented by Petitioner in the Petition. It is Petitioner’s burden to explain
`how challenged claims are to be construed and how the claims read on the
`
`3
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`
`prior art. 37 C.F.R. § 42.104(b)(3)‒(5). Petitioner did not propose
`construing the term “reprogrammable” to include “that which can be
`programmed anew or differently” in the Petition. See Paper 1. Nor did
`Petitioner seek leave to file a reply to the construction for “reprogrammable”
`proposed by Patent Owner in its Preliminary Response. Instead, these
`arguments have been raised in the Request for Rehearing for the first time.
`We could not have misapprehended or overlooked evidence that was not
`presented by Petitioner in the context of the limitation at issue.
`Moreover, as explained in the Decision, Petitioner failed to present
`any analysis or testimony in the Petition that Goldstein and Keenan teach
`“reprogrammable” IR codes under Patent Owner’s proposed construction,
`Petitioner’s newly-proposed construction, or any other interpretation of the
`term “reprogrammable.” Dec. 12‒16. Indeed, Petitioner failed to provide
`any explicit analysis for the “reprogrammable” limitation in the Petition.
`See id. As explained in the Decision, Petitioner’s mere citation to
`Goldstein’s teaching that its universal remote control device is bidirectional
`and can receive data for programming the device without any explanation as
`to how this teaching satisfies the “reprogrammable communication
`protocols” limitation is not sufficient to render obvious claim 1. Id. The
`Petition is deficient in this manner regardless of the construction of the
`“reprogrammable” limitation. Accordingly, we are not persuaded that we
`misapprehended or overlooked any evidence or argument presented by
`Petitioner in the Petition.
`
`
`
`
`
`4
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner has not met its burden of
`demonstrating that the Decision denying instituting trial (Paper 11) should
`be modified.
`
`IV.
` ORDER
`For the reasons given, it is ORDERED that Petitioner’s Request is
`denied.
`
`5
`
`
`
`IPR2018-00273
`Patent 5,802,467
`
`PETITIONER
`B. Todd Patterson
`Jerry R. Selinger
`PATTERSON & SHERIDAN, LLP
`tpatterson@pattersonsheridan.com
`jselinger@pattersonsheridan.com
`
`PATENT OWNER
`Jennifer Meredith
`MEREDITH & KEYHANI, PLLC
`jmeredith@meredithkeyhani.com
`
`
`
`
`
`
`
`6
`
`
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