Apple Inc.v.PersonalWeb Technologies, LLC and Level 3 Communications LLC

Patent Trial and Appeal Board

Aug 3, 2015

11980687 (P.T.A.B. Aug. 3, 2015)

Trial@uspto.gov Paper 35
571-272-7822 Entered: August 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC.,
Petitioner

v.

PERSONALWEB TECHNOLOGIES, LLC, and
LEVEL 3 COMMUNICATIONS, LLC,
Patent Owners.
____________

Case IPR2013-00596
Patent 7,802,310 B2
____________

Before KEVIN F. TURNER, JONI Y. CHANG, and
MICHAEL R. ZECHER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. §§ 42.71(c) and (d)

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INTRODUCTION
PersonalWeb Technologies, LLC and Level 3 Communications, LLC
(collectively “PersonalWeb”) filed a Request for Rehearing (Paper 34, “Req.”) of
the Final Written Decision (Paper 33, “Dec.”), which found that Apple, Inc.
(“Apple”) had shown by a preponderance of the evidence that all challenged
claims in the instituted proceeding, claims 24, 32, 70, 81, 82, and 86 of U.S. Patent
No. 7,802,310 B2 (“the ’310 Patent,” Ex. 1001), are unpatentable. In its request,
PersonalWeb contends that we applied the wrong claim construction standard to
the challenged claims, that we overlooked and misapprehended the legal
significance of PersonalWeb’s nonobviousness arguments, and that we failed to
address all of the factors considered in Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17–18 (1966) (“Graham”). Req. 1–9.
The Request for Rehearing is denied.
ANALYSIS
A request for rehearing must identify specifically all matters the party
believes we misapprehended or overlooked, and the place where each matter was
addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d);
see also 37 C.F.R. § 42.120(a) (stating that a patent owner response is filed as an
opposition). An abuse of discretion may be determined if a decision is based on an
erroneous interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005);
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Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and In re Gartside,
203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
PersonalWeb alleges that we applied the wrong claim construction standard to
the challenged claims, arguing that we misapprehended the issue in our Final
Written Decision. Req. 1, citing Dec. 5–6. We disagree.
A Request for Rehearing naturally must evaluate the priority of a decision at
the time it was issued. We concluded that we “construe the challenged claims
according to the broadest reasonable claim construction standard.” Dec. 6. The
fact that the ’310 Patent expired on April 11, 2015, does not alter whether the
correct standard was applied at the time that Final Written Decision was issued, on
March 25, 2015. We agree with PersonalWeb that any document “authored or
generated by the USPTO after the ’310 Patent has expired cannot use the [Broadest
Reasonable Construction] standard,” Req. 2, but the Final Written Decision in this
proceeding was not such a document.
PersonalWeb also argues that we should have used the Phillips (Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)) standard because
“there was no opportunity for patent owner to amend claims in this proceeding.”
Req. 2. However, it is uncontroverted that PersonalWeb had the opportunity to
amend the claims, although PersonalWeb has claimed and continues to claim that it
“would have been futile.” Id. We are not persuaded that a patent owner’s
expectations of the likelihood that a motion to amend will be successful should be
the proper metric to determine which claim construction standard should be
applied. See also In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL
4097949, *7-8 (Fed. Cir. July 8, 2015) (“Congress implicitly approved the broadest
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reasonable interpretation standard in enacting the AIA,” and “the standard was
properly adopted by PTO regulation.”).
Additionally, we take no position on whether the application of the differing
claim construction standards would provide “a meaningful distinction,” Req. 3, as
any position we take would be merely dicta in view of the Final Written Decision.
To the extent that PersonalWeb is inviting us to reevaluate our adopted claim
construction under another standard, we respectfully decline, and we are persuaded
that this Decision on Request for Rehearing is not the proper vehicle to perform
such a reevaluation.
PersonalWeb also alleges that KSR (KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 406 (2007)) asserts that “it is the combination of old elements for their
intended purpose, with each element performing the same function it had been
known to perform, that may be obvious.” Req. 6. PersonalWeb continues that the
alleged combination of Woodhill does not use Woodhill’s or Stefik’s identifiers for
their intended purposes, or to perform the same function they were known to
perform. Id. PersonalWeb alleges that “[a]s a matter of law, it would not have
been obvious to have used binary object identifiers 74 in an access control system
to determine whether access is authorized or unauthorized in view of Woodhill and
Stefik.” Id. at 6–7. We do not agree.
We addressed this argument in the Final Written Decision (Dec. 20), finding
that the claims do not require that claimed identifiers be used only to determine
access authorization. Certainly, as PersonalWeb argues (Req. 7–8), claim 24
determines access based on the content-dependent name, but the claims do not
limit its use to access authorization only. The Specification of the ’310 Patent
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provides for the use of identifiers to determine presence of a data item, to allow for
redundancy, to provide version control, to verify retrieved data, and to provide
tracking. Ex. 1001, 3:52–4:59. As such, PersonalWeb’s arguments take too
limited of a view of the functions performed by the identifiers in Woodhill and
Stefik, and we continue to be persuaded that the identifiers in Woodhill and Stefik
are not being used contrary to their intended purposes in the proffered
combination. Dec. 20. Similarly, we also previously considered PersonalWeb’s
argument that Woodhill already has an authorization system and there would have
been no logical reason to have modified Woodhill (Req. 7; Dec. 17-18), and we are
not persuaded that we overlooked or misapprehended that prior argument.
Finally, PersonalWeb also alleges that the Final Written Decision failed to
address all of the factors provided in Graham. Req. 8–9. More specifically,
PersonalWeb argues that we overlooked factors (2) and (3), namely: (2)
differences between the claimed subject matter and the prior art and (3) the level of
skill in the art. PersonalWeb is mistaken, however, in that a final written decision
is not an office action containing a rejection that must provide a complete
evaluation of the Graham factors to conclude obviousness. A final written
decision determines if a petitioner has shown by a preponderance of the evidence
that subject claims are unpatentable. Thus, the Final Written Decision need not
make findings as to all of the Graham factors, as long as Petitioner has provided
such consideration in the Petition.
In any event, the Final Written Decision provided such considerations (Dec.
15, citing Pet. 42), stating that “a person of ordinary skill in the art reading
Woodhill and Stefik would have understood that the combination of Woodhill and
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Stefik would have allowed for the selective access features of Stefik to be used
with Woodhill’s content-dependent identifiers feature.” Id. The differences
between the claims and the prior art, as well as the level of skill in the art, are
implicitly provided in Apple’s analysis asserted in the Petition. Additionally,
although PersonalWeb noted the Graham factors in its Patent Owner’s Response
(PO Resp. 11–12), it did not allege that Apple’s ground was deficient for failing to
consider all of the Graham factors. Thus, we could not have overlooked or
misapprehended arguments not made until the request for rehearing.
For the forgoing reasons, PersonalWeb has not shown that we
misapprehended or overlooked any of the matters identified above in concluding
this inter partes review in its Final Written Decision.
CONCLUSION
PersonalWeb’s request for rehearing is denied.

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For PETITIONER:
David K.S. Cornwell
Mark W. Rygiel
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
davidc-PTAB@skgf.com
mrygiel-PTAB@skgf.com

For PATENT OWNERS:
Joseph A. Rhoa
Updeep S. Gill
NIXON & VANDERHYE P.C.
jar@nixonvan.com
usg@nixonvan.com