Ex Parte 8,116,741 B2 et al

Patent Trial and Appeal Board

Sep 28, 2016

95001983 (P.T.A.B. Sep. 28, 2016)

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.
95/001,983 05/04/2012 8,116,741 B2 Rex3-8116741 1866
107554 7590 09/29/2016
JUSTIN LESKO
LAW OFFICES OF STEVEN G. LISA, LTD.
C/O INTELLEVATE, LLC.
P.O. BOX 52050
MINNEAPOLIS, MN 55402
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/29/2016 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
________________

CBS INTERACTIVE INC., THE NEW YORK TIMES COMPANY,
G4 MEDIA, LLC, and BRAVO MEDIA LLC,
Third Party Requesters,

v.

HELFERICH PATENT LICENSING, LLC,
Patent Owner.
____________

Appeal 2015-004984
Inter Partes Reexamination Control No. 95/001,983
Patent US 8,116,741 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JONI Y. CHANG, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON REQEUST FOR REHEARING

Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

2
SUMMARY
Pursuant to 37 C.F.R. § 41.79, Patent Owner submitted a timely
Request for Rehearing filed June 24, 2016 (“Request”), requesting
reconsideration of the Board’s May 24, 2016 Decision affirming various
ones of the Examiner’s rejections of claims 1–9, 11–18, 20, 21, 23, 24, and
26–39 under 35 U.S.C. §103 (a), as well as the Examiner’s rejections of
claims 28, 32, 34, and 38 under §112, ¶ 1, for lack of written description.
Request 1.
For the reasons discussed below, we DENY Owner’s request to
modify the Decision.

ANALYSIS
I.
Owner first challenges the Board’s decision not to address all of the
appealed rejections. Request 1–2. As a matter of background, the Examiner
rejected the appealed claims on duplicative grounds, including multiple
grounds of obviousness under 35 U.S.C. § 103. One group of obviousness
rejections was based, in part, upon Smith (US 6,333,973 B1; issued Dec. 25,
2001) (“the Smith rejections”), while another group of obviousness
rejections of the same claims was based upon, in part, Reilly et al., Enabling
Mobile Network Managers, Computer Networks and ISDN Systems, 29 (1997)
1417–28 (“the Reilly rejections”). Decision 5–7. The Board affirmed the
Smith rejections (Decision 29–37) and therefore declined to address the
duplicative, Reilly rejections (Decision 13–14). One of the disputes on
Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

3
appeal pertaining to the Reilly rejections was whether Reilly constitutes
prior art. See, e.g., Appeal Brief by Patent Owner Appellant (37 C.F.R.
§§ 41.37 and 41.67), filed Oct. 9, 2014 (“PO App. Br.”) 13.
Owner argues on Rehearing that the Board’s declination to decide
whether Reilly constitutes prior art is prejudicial to Owner and complicates
the appeal process. Request 1–2. More specifically, Owner argues that if
the Board’s affirmance of the Smith rejections is not affirmed upon appeal to
the Federal Circuit, Owner and the USPTO will be forced to revisit Reilly on
remand. Id. 2. Owner maintains that such a scenario would cause undue
delay in resolving the present dispute and, therefore, cause Owner financial
loss. Id. Owner further argues that such delay would be contrary to public
policy, which strongly favors the judicial efficiency of raising all claims of
error in a single appeal. Id. (citations omitted). Finally, Owner argues that
the Board must decide whether Reilly constitutes prior art in at least one
other related case currently on appeal. Id. (citing Reexamination Control
No. 95/002,016 of related US 8,134,450 B2; Appeal 2016-004880).
Owner’s arguments are unpersuasive. Rule 41.79 makes clear that a
rehearing is limited to “points believed to have been misapprehended or
overlooked in rendering the Board’s opinion reflecting its decision.”
37 C.F.R. § 41.79(b)(1). The Board’s decision to not address a redundant
rejection, though, is not a misapprehended or overlooked point within the
meaning of the rule. That is, a conscious decision not to consider a rejection
is quite different than failing to understand an argument or overlooking an
argument.
Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

4
Furthermore, our decision not to address a redundant rejection does
not misapprehend the law. Precedent makes clear that an administrative
tribunal such as the Board “is at perfect liberty to reach a . . . determination
on a single dispositive issue” without reaching determinations on duplicative
grounds. Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984).
In Beloit, our reviewing court reasoned that
That approach may often save the Commission, the
parties, and this court substantial unnecessary
effort. Like many good things, that approach carries
with it a risk—here the risk of a reversal, and a
consequent need for the Commission to revisit one
or more portions of the initial determination on
which it had taken no position.
The Commission should not be precluded
from taking that risk, however, and, where the
conclusion reached on one dispositive issue appears
to it inevitable and unassailable, the risk would
appear reduced to an acceptable level.
Id.
The Beloit court further explained that
The Commission’s judicious use of a single
dispositive issue approach in issuing final . . .
determinations can . . . save the parties, the
Commission, and this court unnecessary cost and
effort, [and] it can greatly ease the burden on a
Commission commonly faced with a . . . proceeding
involving numerous complex issues.
Id.

Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

5
II.
Owner asserts that “The PTAB Decision at 45–52 concerning
‘industry respect’ is a new ground for rejection under 37 C.F.R. § 41.77(b),
and therefore, [Owner] should have the opportunity for rehearing under
§ 41.77(b)(2) to present argument in response to this rejection.” Request 3.
In support of this assertion, Owner cites to a passage of the Decision where
the Panel explains that some jurists interpret evidence of commercial success
as an inquiry that is separate from an inquiry into evidence of licenses
showing industry respect. Id. (citing Decision 47–48). Owner additionally
asserts that “the Board does not actually adopt the Examiner’s findings on
commercial success, but instead sets forth a new ground for maintaining the
rejection based on lack of ‘industry respect,’” and that “[Owner] has never
had the opportunity to present argument in response to this new ground for
rejection presented for the first time in the PTAB Decision.” Id.
This argument is unpersuasive. The Board did not set forth any new
ground for maintaining the Examiner’s rejection. The Board, instead,
merely clarified the record by noting how some jurists differently label, or
differently characterize, those arguments raised and addressed by Owner,
Requester, and the Examiner. Decision 47–48. Owner points to no
reasoning in the Decision that constitutes a substantive change to the
Examiner’s rationales or legal theories. See Request 3–4. In short,
regardless of the label applied to the Examiner’s rejection, the Board relied
upon the same thrust of the rejection as did the Examiner.

Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

6
III.
On appeal, Owner argued that the obviousness rejections based upon
Smith should be reversed because the evidence submitted by Owner under
37 C.F.R. § 1.131 shows, inter alia, that the inventor, Mr. Helferich,
conceived of the invention prior to Smith’s relevant date and Inventor
continuously exercised reasonable diligence in reducing the invention to
practice until the patent application was filed. PO App. Br. 16–24. In the
Decision, the Board rejected this argument and instead agreed with the
Examiner’s conclusion that Owner had not provided sufficient corroborating
evidence of continuous exercise of reasonable diligence for the entire period
during which Inventor declares he was drafting the related patent
applications. Decision 18–19, 29; see generally id. 14–29 (for the Board’s
analysis of the question of diligence).
On Rehearing, Owner argues that “[t]he Board misapprehends the
standard of review for the diligence issue by improperly shifting the burden”
of rebuttal on Owner, and that “[t]here is no burden upon PO to rebut any
findings of the Examiner.” Request 4. Owner contends that “[a]ll issues
presented by an appellant, including diligence, must be reviewed de novo, in
light of the arguments and evidence produced thereon.” Id. (citing Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)). Owner urges
that, instead, “[t]he issue for the Board to decide is whether [Inventor’s]
unrebutted testimony is believable.” Id.
These arguments are unpersuasive. Owner is correct (id.) that the
Board’s precedential decision in Frye requires that all issues on appeal must
be reviewed anew in light of the arguments and evidence produced thereon.
Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

7
But this legal principle does not identify the specific issue that must be
reviewed anew. Nor does Frye—an ex parte proceeding—address which
party bears the burden of production for any given issue. Our reviewing
court instructively addressed the burden-of-proof issue, however, earlier this
year in Acco Brands v. Fellowes, Inc., 813 F.3d 1361, 1365–66 (Fed. Cir.
2016):

During patent examination and reexamination, the concept of
prima facie obviousness establishes the framework for the
obviousness determination and the burdens the parties face. . . .
Under this framework, the patent examiner must first set forth a
prima facie case, supported by evidence, showing why the claims
at issue would have been obvious in light of the prior art . . . .
Once the examiner sets out this prima facie case, the burden
shifts to the patentee to provide evidence, in the prior art or
beyond it, or argument sufficient to rebut the examiner’s
evidence. . . . The examiner then reaches the final determination
on obviousness by weighing the evidence establishing the prima
facie case with the rebuttal evidence.
Acco Brands, 813 F.3d at 1365–66 (citations omitted) (emphasis added).
In the present appeal, the question is whether Owner has rebutted the
Examiner’s prima facie case of obviousness by providing sufficient evidence
of continuous diligence in reducing the invention to practice prior to the
relevant date of Smith. It is well settled that the party attempting to swear
behind the relevant date of a patent bears the burden of showing conception
and diligence. See, e.g., Gould v. Schawlow, 363 F.2d 908, 911 (CCPA
1966) (explaining that when two parties rely on their respective filing dates
as their dates of constructive reduction to practice, “the junior party . . . must
prove by a preponderance of the evidence (1) [prior] conception of the
Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

8
invention . . . and (2) reasonable diligence in reducing it to practice
commencing from a time just prior to [the relevant date]”); see also In re
Borkowski, 505 F.2d 713, 718–19 (CCPA 1974) (noting that the appellants
did not met their burden of showing prior invention under 37 C.F.R. § 1.131
to disqualify a reference as prior art).
The Examiner, having weighed all of the evidence, concluded that
Owner has not provided sufficient evidence of reasonable diligence, and as
such, Owner has failed to meet its burden of rebuttal. It is these conclusions,
based upon the arguments and evidence presented on appeal, that we review
de novo. However, that we review the Examiner’s findings de novo does not
change the fact that the burden of rebuttal, or showing prior invention to
disqualify a reference as prior art, lies with Owner.
Furthermore, we disagree with Owner that the relevant issue “for the
Board to decide is [merely] whether [Inventor’s] unrebutted testimony is
believable.” See Request 4. Such an inquiry would ignore the well-
established additional requirement that evidence of diligence must be
corroborated with evidence specific as to dates and facts. See, e.g., Gould,
363 F.2d at 919 (explaining that Owner must account for the entire period
during which diligence is required) and id. at 920 (explaining that
corroboration of continuous diligence has to be “specific as to dates and
facts”—not merely corroboration of “a general nature to the effect that the
[inventor] from the time of his conception worked continuously on the
development of his idea.”).

Appeal 2015-004984
Reexamination Control 95/001,983
Patent 8,116,741 B2

9
CONCLUSION
Owner has not established that the Board misapprehended or
overlooked any points. Accordingly, we decline to modify our Decision.
In the event this decision becomes final and appealable under
37 C.F.R. § 41.81, 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

Patent Owner:

JUSTIN LESKO
LAW OFFICES OF STEVEN G. LISA, LTD.
C/O INTELLEVATE, LLC.
P.O. BOX 52050
MINNEAPOLIS MN 55402

Third Party Requester:

COVINGTON & BURLING, LLP
ATTN: PATENT DOCKETING
1201 PENNSYLVANIA AVENUE, NW
WASHIGTON, DC 20004-2401

kis