Ex Parte 6519629 et al

Patent Trials and Appeals Board

Jun 13, 2013

95001070 - (R) (P.T.A.B. Jun. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

FACEBOOK, INC.
Appellant, Requester

v.

CROSS ATLANTIC CAPITAL PARTNERS, INC.
Patent Owner, Cross-Appellant

____________________

Appeal 2013-001716
Inter partes Reexamination Control No. 95/001,070
Patent 6,519,629 B2
Technology Center 3900
____________________

Before ALLEN R. MACDONALD, KARL D. EASTHOM, and STEPHEN
C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
In papers filed March 5, 2013, Patent Owner requests a rehearing
under 37 C.F.R. § 41.79 from the Decision on Appeal of the Patent Trial and
Appeal Board, dated February 5, 2013. In the Decision, we affirmed the
Appeal 2013-001716
Inter partes Reexamination Control No. 95/001,070
US Patent 6,519,629 B2

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Examiner’s rejection of claims 1-32 as anticipated by Roseman; claims 1, 2,
4-7, 9, 10, 12-15, 17, 18, 20-23, 25, 26, and 28-31 as anticipated by Sarin;
claims 3, 11, 19, and 27 as unpatentable over Sarin and Yahoo; claims 1-32
and 76-146 as unpatentable over Miller and Liu; and claims 1-32 and 76-146
as unpatentable over Tatham, Liu, and either one of Yahoo or Herz
(Decision 14).
A “request for rehearing must state with particularity the points
believed to have been misapprehend or overlooked in rendering the Board’s
opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Patent Owner
argues that “the Board overlooked or misapprehended . . . Patent Owner’s
arguments for patentability” (Req. Reh’g 2).
In particular, Patent Owner argues “[t]he Board appears to have
overlooked the arguments made by the Patent Owner in the Petition and
accepted by the Director of the Central Reexamination Unit in granting the
Patent Owner’s Petition” with respect to new claims 76-146 (Req. Reh’g 3).
In the Decision, Patent Owner’s arguments pertaining to new claims 76-146
were fully addressed (Decision 10-14). Because Patent Owner’s arguments
were fully addressed, we disagree with Patent Owner’ contention that Patent
Owner’s arguments were overlooked or misapprehended.
Patent Owner also argues that “[t]he Decision To Enter The
Amendment With Amended Claims 1-32 And New Claims 76-146 Was
Proper And Should Be Upheld” (Req. Reh’g 5). In the Decision, the
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Inter partes Reexamination Control No. 95/001,070
US Patent 6,519,629 B2

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decision to enter Patent Owner’s amendment was not disturbed. Therefore,
Patent Owner’s argument is moot.
Patent Owner argues that “[t]he Board Improperly Refused to
Consider Patent Owner’s Arguments Regarding The Filing Date Of The
‘629 Patent As Untimely” (Req. Reh’g 10). The Decision fully addressed
Patent Owner’s arguments with respect to the filing date of the ’629 patent
(see e.g., Decision 11). Patent Owner does not indicate specifically how the
Decision overlooks or misapprehends Patent Owner’s arguments.
Patent Owner argues that the Decision “has provided no basis not to
consider Patent Owner’s arguments with respect to Miller and Liu” (Req.
Reh’g 11). The Decision fully addressed Patent Owner’s arguments with
respect to the Miller and Liu references (see e.g., Decision 12). Patent
Owner does not indicate specifically how the Decision overlooks or
misapprehends Patent Owner’s arguments.
Patent Owner argues that “[t]he Board Improperly Refused To
Consider Patent Owner’s Separate Arguments With Respect To Claims 8,
16, 24 and 32 As Untimely” (Req. Reh’g 12). In particular, Patent Owner
argues that “claims 8, 16, 24 and 32 is directed to the same subject matter as
the claims subject to six new grounds of rejection” and that “the new
grounds of rejection were applied to entire claims, not particular limitations
of those claims” (Req. Reh’g 13). However, as explained in the Decision,
claims 8, 16, 24, and 32 are unamended and the new ground of rejection was
not applied to the unamended features of claims 8, 16, 24, and 32.
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Patent Owner “requests that the Board consider the arguments
submitted . . . [with respect to] claims 1-32 and 76-146 as unpatentable over
Yahoo in view of Tatham and Liu” (Req. Reh’g 15). The Decision fully
addressed these issues (see e.g., Decision 9-13). Patent Owner does not
indicate specifically how the Decision overlooks or misapprehends Patent
Owner’s arguments.
Patent Owner re-iterates arguments previously presented and
previously addressed in the Decision (Req. Reh’g 15-32) but does not
demonstrate that the Decision overlooks or misapprehends Patent Owner’s
arguments.
We have considered Appellant’s arguments but find no points that we
have misapprehended or overlooked. Therefore, the Request for Rehearing
is DENIED.

DENIED

FOR PATENT OWNER:

COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW, Suite 700
Washington, DC 20004

Appeal 2013-001716
Inter partes Reexamination Control No. 95/001,070
US Patent 6,519,629 B2

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Barcelo, Harrison & Walker, LLP
2901 W. Coast Hwy, Suite 200
Newport Beach, CA 92663

FOR THIRD PARTY REQUESTOR:

Daniel M. De Vos
Blakely Sokoloff Taylor & Zafinan LLP
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040