Ex Parte 6757682 et al

Patent Trial and Appeal Board

May 24, 2018

95001576 (P.T.A.B. May. 24, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,576 03/16/2011 6757682 2230.0002L 1495
27896 7590 05/25/2018
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/25/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC., EBAY, INC., FACEBOOK, INC., NETFLIX, INC.,
OFFICE DEPOT, INC., STAPLES, INC., and YAHOO!, INC.
Requesters, Appellants, and Cross-Respondents
v.

INTERVAL LICENSING LLC
Patent Owner, Respondent, and Cross-Appellant

____________

Appeal 2017-005436
Inter partes Reexamination Control 95/001,576
United States Patent 6,757,682 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, KEVIN F. TURNER, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2017-005436
Reexamination Control No. 95/001,576
Patent US 6,757,682 B1

2

Patent Owner requests rehearing of our decision dated May 19, 2017
(“Dec.”), where we affirmed the Examiner’s decision to reject claims 1–13,
16, 17, and 20–44 in the above-identified inter partes reexamination.1
Request for Rehearing filed June 19, 2017 (“Req. Reh’g”). Requester
challenges the asserted basis for this request in comments filed July 19, 2017
(“Comments”). For the reasons noted in Requester’s comments as well as
those below, we deny the request to modify our decision.
In the request, Patent Owner contends that we incorrectly construed
the claims of the ’682 patent resulting from overlooking or misapprehending
Patent Owner’s full amendments to the claims. Req. Reh’g 5–14. Patent
Owner further contends that we presented a new ground of rejection
resulting from overlooking or misapprehending the effect of our rationale for
rejecting the newly added claim language on the rationale used to reject the
pre-existing claim language. Req. Reh’g 5, 14–17. Lastly, Patent Owner
argues that we inappropriately issued a decision purporting to revoke Patent
Owner’s private property right in the ’682 patent resulting from overlooking
or misapprehending the effect of the Seventh Amendment of the U.S.
Constitution on the validity of inter partes reexamination. Req. Reh’g 6,
17–18.
After reviewing the supporting arguments and evidence regarding
these contentions in light of our decision and the record as a whole, we are

1 As noted on pages 9 and 10 of our earlier decision, the anticipation
rejection over Bezos formed the sole basis for our affirming the Examiner’s
decision to reject claims 1–13, 16, 17, and 20–44, and we declined to reach
the merits of the Examiner’s decision declining to reject those claims on
other grounds.
Appeal 2017-005436
Reexamination Control No. 95/001,576
Patent US 6,757,682 B1

3

unpersuaded that we misapprehended or overlooked these points in
rendering our decision for the reasons indicated by Requester on pages 2 to 8
of the Comments, which we adopt as our own. Moreover, Patent Owner’s
constitutionality arguments (Req. Reh’g 17–18) are further undermined by
the U.S. Supreme Court’s decision in Oil States Energy Services, LLC v.
Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018) (holding that inter
partes review, which replaced inter partes reexamination, does not violate
Article III or the Seventh Amendment of the Constitution).

CONCLUSION
For the foregoing reasons, we have granted Patent Owner’s request to
the extent that we have reconsidered our decision, but we deny the request
with respect to making any changes therein.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

Appeal 2017-005436
Reexamination Control No. 95/001,576
Patent US 6,757,682 B1

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Patent Owner:

EDELL, SHAPIRO & FINNAN, LLC
9801 WASHINGTONIAN BLVD.
SUITE 750
GAITHERSBURG, MD 20878

Third Party Requester:

SCHWEGMAN, LUNDBERG & WOESSNER/DEFENSE GROUP
PO BOX 2938
MINNEAPOLIS, MN 55402