Ex Parte 7016481 et al

Patent Trial and Appeal Board

Feb 10, 2015

95001165 (P.T.A.B. Feb. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/000,503 08/31/2009 7016481 007458.0001 6222
7590 02/11/2015
NIRO, SCAVONE, HALLER & NIRO
181 W. MADISON
SUITE 4600
CHICAGO, IL 60602
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/11/2015 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
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.
95/001,165 04/01/2009 7016481 29776.178 5241
7590 02/11/2015
NIRO, SCAVONE, HALLER & NIRO
181 W. Madison
Suite 4600
Chicago, IL 60602
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/11/2015 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
________________

CISCO SYSTEMS, INC., SKYPE TECHNOLOGIES SA
and RTX TELECOM A/S
Requesters, Respondents and Cross-Appellants

v.

RIPARIUS VENTURES, LLC
Patent Owner, Appellant and Cross-Respondent
________________

Appeal 2013-006969
Reexamination Control 95/000,503 and 95/001,165 (merged)
Patent 7,016,481 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, KEVIN F. TURNER, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Patent Owner Riparius Ventures, LLC (“Riparius”) requests rehearing (Req.
Reh’g) under 37 C.F.R. § 41.79 in the above-entitled inter partes reexamination of
US 7,016,481 B2 (“the ‘481 Patent) with respect to the conclusion of the Patent
Trial and Appeal Board (“Board”) that the Examiner did not err in rejecting claims
1-28. Decision on Appeal mailed on March 3, 2014. (“Dec.”). Requester Cisco
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Patent 7,016,481 B2

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Systems, Inc. (“Cisco”) opposes the Request for Rehearing in Comments filed on
May 2, 2014 (“Cisco Comments”). Requesters Skype Technologies SA and RTX
Telecom A/S (“Skype”) also oppose the Request for Rehearing in Comments filed
on May 5, 2014 (“Skype Comments”).
37 C.F.R. § 41.79(b) states in part that “[t]he request for rehearing must state
with particularity the points believed to have been misapprehended or overlooked
in rendering the Board’s opinion reflecting the decision. Arguments not raised in
the briefs before the Board and evidence not previously relied upon in the briefs
are not permitted in the request for rehearing” with certain exceptions not
applicable here.
We deny rehearing.
CLAIM 7

Riparius contends that our Decision overlooked “the point that, even if claim
1 was properly rejected because it did not exclude standard telephones,
[dependent] claim 7 does exclude standard telephones.” Req. Reh’g 1-2.
Claim 7 recites: “A device as in claim 1 wherein said remote cordless base
unit comprises circuits separated into isolated millivolt level audio transmit and
receive.”
Riparius’s contention that its Specification disavows a standard telephone
Our Decision recognized Riparius’s contention, relying upon In re Abbott
Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012) (“Abbott Diabetes”), that the
‘481 Patent’s creation of a unique device constitutes a disavowal of the use of a
standard telephone. Dec. 29. We concluded, nevertheless, that “the ‘481 Patent’s
Specification does not disavow a standard telephone.” Dec. 30. We based our
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conclusion in part upon the following statements in the ‘481 Patent: “In one
embodiment the Base 105 and Handset 107 communicate using standard 900 mhz
radios.” Col. 3, ll. 4-6 (emphasis added). “In other embodiments of the invention.
. a standard Cordless Telephone Circuit 720 was modified only to the extent of
adding a balanced Hybrid Circuit 710 to separate transmit and receive audio from
the POTS Tip and Ring 715.” Col. 6, ll. 16-21 (emphasis added). At the Oral
Hearing, Riparius acknowledged that this discussion described an embodiment of
the invention: “Would I go back and maybe ask the patent prosecutor why he put
in other embodiments of the invention at column 6 beginning at line 20?1 Sure, I
would say that shouldn’t be in there and that’s a good point that the requesters
made.” Oral Hearing Transcript (“Tr.”) 49:8-11. Riparius now asks us to
reconsider our conclusion that the ‘481 Patent does not disavow a standard
telephone: “Respectfully, the specification does disavow a standard telephone.
The specification could not be more clearer that standard telephones, and standard
telephone adapters, are verboten.” Req. Reh’g 4.
Riparius bases its rehearing request on parts of its Specification that refer to
a specialized device, a unique device, circuitry that differs significantly from a
standard telephone, and how its device overcomes prior art deficiencies. Req.
Reh’g 2-4. More specifically, Riparius refers to statements in columns 1, 2, 6, and
7 of the Specification. Even more specifically, Riparius’s citations to column 6
refer to lines 48-58 and 66-67. Req. Reh’g 3-4. Riparius does not refer either to
the column 3 or column 6 citations we identified in the Decision and does not

1 Actually, Riparius’s citation to column 6, line 20 was a citation to the identical
text in its US Patent No. 7,139,371 which our Decision identified as a related
patent argued at the same time as the ‘481 Patent.
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Patent 7,016,481 B2

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explain why our reliance upon those citations was erroneous. Riparius also does
not contend that our interpretation of Abbott Diabetes was incorrect or that our
application of Abbott Diabetes to the facts of this case was incorrect.
Accordingly, Riparius has not persuaded us that we misapprehended or
overlooked parts of its Specification in our discussion of whether its Specification
disavows a standard telephone.
Riparius also contends that “Claim 7 adds the limitation the Decision found
lacking in claim 1 (Req. Reh’g 1), that “claim 7 does exclude standard telephones”
(Req. Reh’g 2) and that
Claim 7 adds exactly what the specification describes at column 6,
lines 48-58, that is, isolated transmit and receive circuits that make the
invention different from a standard telephone. Even if the rejection of
claim 1 is correct -- which Riparius does not concede -- the rejection
of claim 7 is an error.

Req.Reh’g 5.
Our Decision concluded that, for the rejection of claim 7 as obvious over
Peterson, Foo, and Papadopoulos, the Examiner relied upon the reasons set forth in
Skype’s Request 41-43, thereby finding that Papadopoulos, not Peterson, teaches
millivolt transmit and receive. Dec. 33. We were not persuaded that the Examiner
erred because Riparius contended that Peterson does not disclose a specialized
circuit having the isolated circuits. Id., citing App. Br. 21. We are further not
persuaded of Examiner error because the Examiner also found that Papadopoulos
teaches using millivolts on the isolated receive circuitry. See Skype Request 43.
The Examiner rejected claim 7 on multiple bases, which Riparius
individually and specifically addressed: obvious over Erekson in view of
Papadopoulos (App. Br. 4, rejection 1; App. Br. 12-13); Prentice in view of
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McKinnon and Papadopoulos (App. Br. 4, rejection 6; App. Br. 17-18); Jones in
view of Norstar (App. Br. 4, rejection 7; App. Br. 18); Peterson in view of Foo and
Papadopoulos (App. Br. 5, rejection 10; App. Br. 21); and Peterson in view of
Frantz and Papadopoulos (App. Br. 5, rejection 15; App. Br. 24).
In its Request for Rehearing, instead of contending that we misapprehended
or overlooked its arguments regarding Papadopoulos for the
Peterson/Foo/Papadopoulos (Rejection 10) combination which our Decision relied
upon, Riparius reproduces arguments it made regarding Papadopoulos in
opposition to a different combination - the Erekson/Papadopoulos (Rejection 1)
combination. See Req. Reh’g 5-6, citing App. Br. 12-13. Riparius’s Request for
Rehearing does not contend that its Appeal Brief regarding the Rejection 10
combination incorporated by reference its arguments regarding the Rejection 1
combination. But, we will assume that its Appeal Brief did intend to indicate an
incorporation by reference by stating, “Papadopoulos uses a standard handset.
(VII.D.1)2.” App. Br. 21.
For Rejection 1, Riparius contended that “Papadopoulos does not have
isolated, separate, send and receive circuits in the base, as required by claim 7.”
Req. Reh’g 5, quoting Appeal Br. 13. This argument is not persuasive because it
argues limitations that are not recited in claim 7. Compare claim 7: “said remote
cordless base unit comprises circuits separated into isolated millivolt level audio
transmit and receive” with Riparius’s restatement of claim 7: “isolated, separate,
send and receive circuits in the base.” See also Req. Reh’g 9 (“the circuitry in the
base unit, which is the subject of claim 7”).

2 We will further assume Riparius meant to cite VIII.D.1.
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The Request for Rehearing refers to, and quotes with partial emphasis,
paragraph 39 of the First McElvaney Rule 132 Declaration, which was referenced,
but not reproduced, on page 12 of its Appeal Brief regarding Rejection 1. See Req.
Reh’g 6-7. Riparius’s emphasized portions of paragraph 39 are not persuasive
because they rely upon versions of claim 7 that are not actually recited in the
claim. See paragraph 39’s restatement of claim 7: “the patent claims at issue cover
a 4 wire base operating at millivolt levels;” the Papadopoulos reference does not
refer to “the circuitry in a cordless phone base;” Papadopoulos “cannot ‘isolate
send and receive from each other” as claimed.” Req. Reh’g 7.
We also do not consider Riparius’s reliance upon column 2, lines 47-51 of
Papadopoulos (Req. Reh’g 6) because not even its argument regarding the
Rejection 1 combination relied upon this column 2 citation. We therefore could
not have misapprehended or overlooked it.
For the above reasons, we deny rehearing regarding claim 7.
Alternatively, Riparius asks us to return the case to the Examiner “so that
amendments to the claims may be proposed.” Req. Reh’g 10. Because Riparius
does not explain why it did not avail itself of the opportunity to amend claim 7
during reexamination, we decline to order a remand.
CLAIM 1
Our Decision affirmed the rejection of claim 1 based upon the Peterson/Foo
(Rejection 9) combination. See Dec. 7, 25-31.
Riparius contends that our Decision incorrectly concluded that “Riparius did
not identify elements in claim 1 that would cause claim 1 to exclude a standard
telephone” and that “[t]he Decision [did] not consider Riparius’s response to this
question. Req. Reh’g 7-8, citing Decision 31. Specifically, page 31 of our
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Decision concluded that “Riparius has not identified elements that are recited in
the claim to make it unique and which cannot be imported into the claim from the
Specification.” Regardless, we did consider Riparius’s argument at the hearing
that “when the claim is read ‘as a whole,’ it ‘cannot be construed to read upon a
standard two wire telephone.’” Dec. 29, citing Tr. 14:1-3.
Riparius also contends we did not consider its counsel’s argument
reproduced at pages 48-49 of the transcript, referring to a base having two kinds of
circuitry recited in claim 1: circuitry for translating communications and circuitry
for receiving digital data and translating the digital data. See Req. Reh’g 8-9.
Relying upon the cited transcript, Riparius contends that “[t]here are limitations in
the preamble and in the body of claim 1 that show the use of a specialized device
with two circuits, one for transmission and one for reception.” Req. Reh’g 9.
Also according to Riparius, the cited transcript shows it “argued that the
‘device’ in the preamble excluded a standard phone.” Req. Reh’g 8. We do not
see, however, where the cited transcript refers to the preamble.
37 C.F.R. § 41.73(e)(1) states: “At the oral hearing, each appellant . . . may
only . . . present argument that has been relied upon in the briefs” with an
exception that does not apply here.
Neither Riparius’s oral argument nor its Request for Rehearing informs us
where its briefs contended that the base having the two identified circuitry
limitations showed the use of a specialized device with two circuits and/or
excluded a standard phone. We have not found any such arguments in Riparius’s
briefs.
Even if we were to consider this argument now, we conclude that Riparius’s
briefs did not contest the Examiner’s finding (RAN 28), adopted from Skype’s
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proposed rejection over Peterson and Foo, that the combined two references teach
both base unit “circuitry” limitations. See Skype Request 30-31. Riparius has not
pointed us to anything in their briefs showing that it did contest these Examiner
findings.
Furthermore, as noted in the transcript reproduced on page 8 of the Request
for Rehearing, Riparius’s counsel effectively acknowledged that Riparius had not
presented an argument with particularity regarding the “circuitry” limitations: “The
third reason I think it’s in the claim and this is something we should have flagged
for you better than we did . . . I don’t even think this was gone into any real detail
on the reexaminations.”
Accordingly, we conclude that we did not misapprehend or overlook
arguments regarding the base unit “circuitry” limitations in the base unit and we
deny rehearing on that basis.
Discussing our reference to standard telephones in columns 3 and 6 of the
‘481 Patent, Riparius contends that our Decision “[did] not consider column 6 as a
whole.” Req. Reh’g 9. Although at the hearing, Riparius asked us to consider
claim 1 as a whole (Tr. 14:1-3), we have not found where Riparius asked us to
consider column 6 as a whole. More specifically, Riparius contends we focused on
column 6, lines 16-21 of the ‘481 Patent to the exclusion of other parts of column 6
which identify various problems with the embodiment described in lines 16-21.
Riparius does not dispute, however, that the ‘481 Patent does, in fact,
describe an embodiment of its invention using standard equipment. Rather, at the
hearing, Riparius acknowledged that the discussion beginning at column 6, line 163

3 See footnote 1.
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of the ‘481 Patent described an embodiment of the invention: “Would I go back
and maybe ask the patent prosecutor why he put in other embodiments of the
invention at column 6 beginning at line 20? Sure, I would say that shouldn’t be in
there and that’s a good point that the requesters made.” Tr. 49:8-11.
Finally, Riparius asks us to return this case to the Examiner so that Riparius
can amend the claims. Req. Reh’g 10. Because Riparius does not explain why it
did not avail itself of the opportunity to amend the claims during reexamination,
we decline to order a remand.
DECISION
We have granted Riparius’s request for rehearing to the extent that we have
reconsidered our Decision affirming the Examiner’s decision unfavorable to the
claims; but we decline to modify our Decision in any way.
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.

REHEARING DENIED

Appeal 2013-006969
Reexamination Control 95/000,503 and 95/001,165 (merged)
Patent 7,016,481 B2

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PATENT OWNER:

NIRO, HALLER & NIRO
181 WEST MADISON STREET, SUITE 4600
CHICAGO, IL 60602

THIRD PARTY REQUESTERS:

HAYNES AND BOONE, LLP
IP SECTION
2323 VICTORY AVENUE, SUITE 700
DALLAS, TX 75219

BANNER & WITCOFF, LTD.
10 SOUTH WACKER DRIVE, SUITE 3000
CHICAGO, IL 60606

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