Electronic Frontier Foundationv.Personal Audio, LLC

Patent Trial and Appeal Board

Jul 17, 2015

12380955 (P.T.A.B. Jul. 17, 2015)

Trials@uspto.gov Paper 45
571-272-7822 Entered: July 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ELECTRONIC FRONTIER FOUNDATION
Petitioner,

v.

PERSONAL AUDIO, LLC
Patent Owner.
____________

Case IPR2014-00070
Patent 8,112,504 B2

____________

Before SHERIDAN K. SNEDDEN, TRENTON A. WARD, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION
Request for Rehearing
37 CFR § 42.71(d)

Case IPR2014-00070
Patent 8,112,504 B2

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INTRODUCTION
On October 30, 2013, Electronic Frontier Foundation (“Petitioner”)
filed a revised Petition requesting an inter partes review of claims 31–35 of
U.S. Patent No. 8,112,504 B2 (Ex. 1001, “the ’504 patent”). Paper 6
(“Pet.”). On April 18, 2014, we granted the Petition and instituted trial for
claims 31–35 of the ’504 patent on less than all of the grounds of
unpatentability alleged in the Petition. Paper 21 (“Decision on Institution”
or “Dec.”). After institution of trial, Personal Audio, LLC (“Patent Owner”)
filed a Patent Owner Response. Paper 30 (“PO Resp.”). Petitioner filed a
Reply. Paper 34 (“Pet. Reply”).
An oral hearing was held on December 17, 2014. The transcript of
the hearing has been entered into the record. Paper 40 (“Tr.”). In our Final
Written Decision entered April 10, 2015 (Paper 41, “Final Decision” or
“Final Dec.”), we determined that Petitioner had shown by a preponderance
of the evidence that claims 31–35 of the ʼ504 patent are unpatentable
because: (1) they would have been obvious under 35 U.S.C. § 103 over
Compton/CNN (Ex. 1022); and (2) they are anticipated under 35 U.S.C. §
102(a) by Patrick/CBC (Ex. 1012). Final Dec. 28.
Patent Owner requests rehearing of our Final Decision (Paper 43,
“Request” or “Req. Reh’g”). Patent Owner’s grounds for rehearing are that
the Final Decision: (1) violates its Seventh Amendment right to trial by jury
(Req. Reh’g. 2–8); (2) violates the Due Process Clause (Req. Reh’g. 8–9);
and (3) permitted impermissibly an argument allegedly first made by
Petitioner at the oral hearing relating to an “updated version” of
“compilation file” (Req. Reh’g. 10–12).
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For at least the reasons that follow, Patent Owner’s Request for
Rehearing is denied.
ANALYSIS
A. Standard Applied
The applicable standard for a request for rehearing is set forth in
37 C.F.R. § 42.71(d), which provides in relevant part:
A party dissatisfied with a decision may file a request for
rehearing, without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. 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, opposition, or a
reply.

B. Patent Owner’s Arguments
1. Right to Trial by Jury
Patent Owner contends our Final Decision violated its right to trial by
jury as protected by the Seventh Amendment. Req. Reh’g. 2–8. This
contention is based on a verdict by a jury in the Eastern District of Texas
(“District Court”) which found that Compton/CNN did not render obvious or
anticipate any of claims 31–35 of the ’504 patent. Id. at 4. Patent Owner
alleges it “submitted the jury’s factual findings to the PTAB” and our Final
Decision overturned those factual findings. Id. In addition, Patent Owner
argues our record “lacked substantial evidence that it would have been
obvious to modify the prior art, such as Compton.” Id. at 6. Arguing the
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facts from the District Court, Patent Owner cites to a transcript of the
testimony from the trial. Id. at 6–7 (citing Ex. 20051).
Patent Owner did not argue in its Response or at oral hearing that we
were constrained to follow the jury verdict. Neither did Patent Owner argue
that our inter partes review of the ’504 patent violated Patent Owner’s right
to trial by jury.
In sum, the right to trial by jury argument was not made during the
trial. Patent Owner’s cited evidence in support of the Request was never
made of record. A request for rehearing is not an opportunity to present new
arguments or evidence that could have been presented in the Response. 37
C.F.R. § 42.71(d). For at least these reasons, Patent Owner has failed to
show we misapprehended or overlooked any evidence or argument of record
relating to its Seventh Amendment argument.
2. Due Process
Patent Owner next argues its rights under the Due Process Clause are
violated by the inter partes review process. Req. Reh’g. 8–9. Patent Owner
contends due process is not afforded it because, among other things, the IPR
process generally lacks “procedural safeguards,” like those provided by the
Federal Rules of Civil Procedure. Id. at 4.
Regardless, Patent Owner makes no argument specific to the current
case. Rather, its argument is directed generally to the inter partes review
process. Again, this argument was not presented during the trial of this case.
The Request is devoid of any allegation that we misapprehended or
overlooked any argument or evidence relating to the due process argument.

1 District Court transcript, Case 2:13-cv-270, Rodney Gilstrap, United States
District Judge.
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3. Construction of “updated version of a compilation file”
Patent Owner argues that our construction of “updated version” of a
“compilation file” was wrong. Req. Reh’g. 10. First, it disputes our
adoption in the Final Decision of our preliminary construction of
“compilation file” from the Institution Decision (“Inst. Dec.,” Paper 21, 8).
Id. Second, it argues we adopted an argument in the Final Decision
presented by Petitioner that was asserted for the first time at the oral hearing.
Id. (citing Tr., 7–9).
The Final Decision construed “compilation file” as “a file that
contains episode information.” Final Dec. 10. The construction was the
same as was determined in the Institution Decision. Inst. Dec. 8. At the oral
hearing, Patent Owner did not propose a definition for “compilation file”
objecting only to inclusion of the word “episode” in the construction. Final
Dec. 9 (citing Tr., 32:10–14). The phrase in claim 1 “updated version of a
compilation file” was also analyzed in the Final Decision. Final Dec. 25–27.
Patent Owner’s argues generally that our construction contradicts the
ordinary meaning and “violates the procedural safeguards” set forth in the
rules relating to inter partes review. Req. Reh’g. 10. That Patent Owner
disagrees with our analysis is not a basis for a request for rehearing.
Patent Owner cites to the oral hearing transcript where an argument
was made by Petitioner that the contents.html file of Compton/CNN is the
claim limitation for “updated version of a compilation file.” Req. Reh’g. 11
(citing Tr., 7–9). However, Petitioner made the same argument in its
Petitioner’s Reply, responding to Patent Owner’s Response at page 39. See
Pet. Reply 3–5. The argument made was proper rebuttal and Patent Owner’s
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contention that the argument was not presented previously is incorrect and
does not establish a basis for rehearing.
CONCLUSION
Patent Owner has not carried its burden of demonstrating that our
Final Decision determining that claims 31–35 of the ʼ504 patent are
unpatentable under 35 U.S.C. §§ 102 or 103 misapprehended or overlooked
any matters or that the Board abused its discretion. 37 C.F.R. § 42.71(d).
For the foregoing reasons, it is
ORDERED that Patent Owner’s Request for Rehearing is denied.

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For PETITIONER:

Richard C. Pettus
Nicholas A. Brown
Heath J. Briggs
GREENBERG TRAURIG LLP
pettusr@gtlaw.com
brownn@gtlaw.com
briggsh@gtlaw.com

For PATENT OWNER:

Michael Femal
James Hanrath
MUCH SHELIST, P.C.
mfemal@muchshelist.com
jhanrath@muchshelist.com