Apple Inc.v.Contentguard Holdings, Inc.

Patent Trial and Appeal Board

Oct 14, 2015

13585408 (P.T.A.B. Oct. 14, 2015)

Trials@uspto.gov Paper No. 11
571.272.7822 Filed: October 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.
____________

Case IPR2015-00451
Patent 8,393,007 B2
____________

Before BARBARA A. PARVIS, KERRY BEGLEY, and
KEVIN W. CHERRY, Administrative Patent Judges.

BEGLEY, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)

Apple Inc. (“Petitioner”) timely filed a request for rehearing
(“Rehearing Request” or “Request”) of our decision on institution of inter
partes review. Paper 10 (“Req. Reh’g”). The Request seeks rehearing of
our determination to deny institution of inter partes review of claims 1 and 6
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of U.S. Patent No. 8,393,007 B2 (Ex. 1001, “the ’007 patent”) on the
asserted ground of obviousness over U.S. Patent No. 5,557,518 (Ex. 1020,
“Rosen”) and European Patent Application Publication No. EP 0 567 800
A1 (Ex. 1021, “Hartrick”). Id. at 2–3. For the reasons given below, we
deny the Rehearing Request.
LEGAL STANDARDS
When rehearing a decision whether to institute inter partes review, we
review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
burden of showing [the] decision should be modified lies with the party
challenging the decision.” 37 C.F.R. § 42.71(d). The request for rehearing
“must specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed in” the petition. Id.
ANALYSIS
In our Decision, we denied institution of inter partes review of the
challenged claims of the ’007 patent, including claims 1 and 6, for three
independent reasons: (1) failure to comply with 35 U.S.C. § 312(a)(3),
37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5); (2) failure to
perform the obviousness analysis required under Graham v. John Deere Co.,
383 U.S. 1 (1966); and (3) lack of sufficiently articulated reasoning, with
rational underpinning and without improper hindsight, to combine Rosen
and Hartrick to reach the recited invention. Paper 9 (“Dec.”), 11–12; see
generally id. Therefore, to succeed on its Rehearing Request, Petitioner
must show that we abused our discretion in reaching each of these
determinations. As we explain below, Petitioner has not done so. We
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address below Petitioner’s arguments regarding the first and third reasons
noted above.
A. NON-COMPLIANCE WITH 35 U.S.C. § 312(A)(3) AND 37 C.F.R.
§§ 42.22(A)(2), 42.104(B)(4)–(5)
In its Rehearing Request, Petitioner disputes our determination that
the Petition does not comply with 35 U.S.C. § 312(a)(3), 37 C.F.R.
§ 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5), arguing that the Petition
“clearly identifie[s]” the supporting evidence and that the Decision “unfairly
criticized the form of the Petition and supporting evidence.” Req.
Reh’g 2, 13. Petitioner asserts that “[n]o rule requires a petition to present
an analysis in a certain order or prohibits use of internal citations,” id., and
that the Board has elsewhere accepted the manner in which the Petition
presents the asserted grounds, id. at 12. According to Petitioner, “the
descriptions in the Petition . . . [a]re clear, well-organized, understandable
and supported by direct citations to Rosen and/or Hartrick, and to evidence
showing how a person of ordinary skill would have understood their
interrelated teachings.” Id. at 2. Petitioner also contends that “[t]he cites to
the Sherman Declaration support the analysis but are not required to
understand it.” Id. at 11.
In the Decision, our determination that that the Petition fails to
comply with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R.
§ 42.104(b)(4)–(5) rested on our analysis of numerous deficiencies—
including lengthy, “vague, nested citations to broad sections” of the record,
improper incorporation by reference from the Declaration of Alan Sherman
(Ex. 1013, “Sherman Declaration”), and pervasive use of unclear internal
cross references. Dec. 4–11. Together, these deficiencies cause the Petition
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to fall below the standards of particularity and specificity required of
supporting evidence. Id.
Petitioner’s Rehearing Request fails to convince us that the Petition’s
lengthy, nested string citations to vast sections of the record are
comprehensible. Id. at 6–8. A sampling of the exemplary citations from the
Petition quoted in our Decision include: “Ex. 1013 at ¶ E115-16; see
§ IV.A.5; Ex. 1020 at 17:41-24:63” (Pet. 41); “‘See §§ IV.A.3, IV.B.3, IV.C;
Ex. 1020 at 8:22-34; Ex. 1021 at 6:9-22; Ex. 1013 at ¶ E104-05, E117-18,
E194’ (Pet. 51), ‘See §§ IV.B.3, C; Ex. 1013 at ¶ E99-100, E117-21;
Ex. 1020 at 6:12-13, 6:3-4; Ex. 1021 at 6:9-22, 10:1-14’ (Pet. 53), and ‘See
§§ IV.A.5, IV.E.4; Ex. 1020 at 37:29-49, 15:49-51; see id. at 15:49-51;
Ex. 1013 at ¶¶ E226-E228, E41-E52’ (Pet. 59–60).” Dec. 6. That these and
other citations in the Petition sometimes include citations to Rosen and
Hartrick, as Petitioner argues, is insufficient to bring them in conformance
with our governing statute and rules.
Similarly, Petitioner’s conclusory and unsupported assertion that the
citations to the Sherman Declaration “are not required to understand” the
Petition’s analysis, Req. Reh’g 11, does not persuade us that we erred in
concluding that the Petition’s “arguments often are incomprehensible
without reviewing broad portions of the . . . Declaration,” Dec. 10; see id. at
8–11. Our conclusion is based on a thorough review of both the Petition and
the Sherman Declaration, which is cited extensively throughout the Petition.
Moreover, regarding Petitioner’s contention that our rules do not
prohibit internal cross references, Req. Reh’g 2; see id. at 12, our
determination in the Decision that the Petition does not comply with
35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R.
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§ 42.104(b)(4)–(5) did not rest merely on the use of internal cross
references. Rather, the Decision discussed the consistent use of internal
cross references throughout both the Petition and the supporting Sherman
Declaration, to such an extent that it obfuscates the evidentiary support for
the Petition’s assertions. See Dec. 5–11. Moreover, the Decision made clear
that the Petition lacks otherwise adequate supporting evidence for its
assertions. See id.
In sum, having considered Petitioner’s arguments on rehearing, we
remain unpersuaded that the Petition sufficiently specifies where the
limitations of claims 1 and 6 of the ’007 patent are taught or suggested by
Rosen or Hartrick, and adequately explains the significance of supporting
evidence. The combination of the numerous evidentiary deficiencies in the
Petition—vague, nested string citations; pervasive internal cross references;
and improper incorporation by reference from the Sherman Declaration—
leaves the Petition’s supporting evidence far afield from the particularity and
specificity required by 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and
37 C.F.R. § 42.104(b)(4)–(5). See id.
B. LACK OF RATIONALE TO COMBINE AND IMPROPER HINDSIGHT
We turn to the Decision’s determination that “the Petition lacks
adequate reasoning, with rational underpinning” and without improper
hindsight, “to show sufficiently that a person of ordinary skill would have
combined the teachings of Rosen and Hartrick and the knowledge in the art
to reach” the claimed invention in the manner the Petition proposes. Id. at
17; see id. at 14–18.
On rehearing, Petitioner argues that the Petition explains which claim
elements are missing from Rosen by stating that Rosen “does not elaborate
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how [its] restrictions [on usage] are specified or explicitly describe enforcing
them.” Pet. 22–23; Req. Reh’g 3 (quoting Pet. 22–23); see Req. Reh’g 9.
According to Petitioner, we “failed to appreciate that the Petition actually
describe[s] a single change to Rosen: integrating Hartrick’s usage rights
specification and enforcement features to support Rosen’s ‘Usage’ field” and
that “doing this would cause the skilled person to make four modifications to
Rosen.” Req. Reh’g 3–4; see id. at 2. Petitioner asserts that “[i]nstead of
viewing the[] changes for what they [a]re stated to be in the Petition – a
description of how the skilled person would have implemented Rosen’s
‘Usage’ field using elements from Hartrick – [we] considered the
modifications to be ‘several distinct changes’ unsupported by sufficient
reasoning.” Id. at 4–5. Petitioner concludes that our determination that the
proposed modifications rely on impermissible hindsight was based on a
“misunderstanding of the changes being proposed.” Id. at 5; see id. at 2.
We disagree. First, the statement in the Petition to which Petitioner
directs our attention in its Rehearing Request does not identify sufficiently
or with any particularity the limitations of claims 1 and 6 of the ’007 patent
that allegedly are absent from Rosen. See id. at 3 (quoting Pet. 22–23). In
particular, the Petition’s statement that Rosen “does not elaborate how the[]
restrictions [on usage] are specified or enforced” lacks any direct reference
to the claim language. Pet. 22–23.
Second, the Rehearing Request, like the Petition, improperly blurs the
proposed modifications required to create the system combining Rosen and
Hartrick proposed in § IV.C of the Petition (“Hypothetical Rosen-Hartrick
System”), which the Petition argues satisfies the claim limitations. See
Dec. 14 & n.1. On rehearing, Petitioner attempts to classify these
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modifications as a “single change.” Req. Reh’g 3 (emphasis added); see id.
at 2. Yet, in the next sentence, Petitioner asserts that this single change
involves “four modifications to Rosen.” Id. at 4 (emphasis added). We are
not persuaded by Petitioner’s attempt on rehearing to classify the
modifications necessary to reach the Hypothetical Rosen-Hartrick System as
a single change. Petitioner’s arguments on rehearing further exemplify the
lack of clarity in the changes proposed in the Petition, rather than bringing
any clarity to the changes.
As we explained in our Decision, even Petitioner’s attempt to classify
the changes as limited to four modifications is unconvincing. Dec. 14–17.
Having considered Petitioner’s arguments on rehearing, we reaffirm our
conclusion in the Decision that “[b]ased on our review of the Petition as well
as Rosen and Hartrick,” “what the Petition appears to classify as a single
modification often includes several distinct changes,” for the reasons
explained in the Decision. Id. at 14; see id. at 15–18.
Third, Petitioner has not shown any error in our conclusion that the
Petition lacks adequate reasoning to support a legal conclusion of
obviousness based on these proposed changes. Despite Petitioner’s
characterization of the reasons given in the Petition as “detailed,” Req.
Reh’g 4, we remain persuaded that the Petition “lacks adequate reasoning,
with rational underpinning, to show sufficiently” that a person of ordinary
skill “would simultaneously make all of the many particular proposed
changes and implementation choices to combine Rosen, Hartrick, and
allegedly known techniques” to reach the claimed invention, Dec. 17.
Finally, we note that Petitioner’s assertions that we misapprehended
the analysis in § IV.D of the Petition, “believing it to propose additional
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modifications when it simply maps portions of Rosen, Hartrick, and their
combined teachings to two key claim terms” is an incorrect characterization
of our Decision. Req. Reh’g 13; Dec. 14 n.1. The Decision addressed and
analyzed the proposed changes in § IV.C of the Petition to reach the
Hypothetical Rosen-Hartrick System and found that these proposed changes
lack adequately supported reasoning. Dec. 14–18. In a footnote, we noted
that § “IV.D of the Petition, which follows the section that proposes the
Hypothetical Rosen-Hartrick System (§ IV.C), refers to modifications of
Rosen and Hartrick” and the “Petition does not explain whether the[]
changes” referenced in the section “are the same as those discussed
previously” in § IV.C. Id. at 14 n.1. We, therefore, concluded that it is
“unclear whether the [changes] are distinct from, and in addition to, the
previously proposed changes.” Id. Where we could ascertain that the
changes discussed in § IV.D overlap with those outlined in § IV.C, however,
we treated them together in our analysis in the Decision. See, e.g., id. at 15.
Accordingly, Petitioner has not shown any abuse of discretion in our
determination that the Petition “fails to show sufficiently that a person of
ordinary skill in the art—without improper hindsight—would have
combined Rosen and Hartrick to reach the invention recited in claims 1 [and
6] of the ’007 patent. Id. at 18; see id. at 14–18.
C. CONCLUSION
We have reviewed Petitioner’s other arguments and find them to be
without merit. For the reasons given, Petitioner has not shown that our
Decision denying institution of inter partes review of claims 1 and 6 of the
’007 patent constituted an abuse of discretion.
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ORDER
Accordingly, it is:
ORDERED that Petitioner’s Motion for Rehearing (Paper 10) is
denied.
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PETITIONER:
Jeffrey P. Kushan
Michael R. Franzinger
SIDLEY AUSTIN LLP
jkushan@sidley.com
mfranzinger@sidley.com iprnotices@sidley.com

PATENT OWNER:

Nicholas T. Peters
Timothy P. Maloney
FITCH, EVEN, TABIN & FLANNERY LLP
ntpete@fitcheven.com
tpmalo@fitcheven.com

Robert A. Cote
MCKOOL SMITH, P.C.
rcote@mckoolsmith.com