Ex Parte 6757682 et alDownload PDFPatent Trial and Appeal BoardMay 24, 201895001576 (P.T.A.B. May. 24, 2018) Copy Citation 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 4 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 Copy with citationCopy as parenthetical citation