Facebook, Inc.v.TLI Communications LLC

Patent Trial and Appeal Board

Oct 14, 2014

08877488 (P.T.A.B. Oct. 14, 2014)

Trials@uspto.gov Paper No. 16
571.272.7822 Entered: October 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC.,
Petitioner,

v.

TLI COMMUNICATIONS LLC,
Patent Owner.
____________

Case IPR2014-00566
Patent 6,038,295
____________

Before JAMESON LEE, BART A. GERSTENBLITH, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71

IPR2014-00566
Patent 6,038,295

2

On September 29, 2014, Facebook, Inc. (“Petitioner”) filed a Request for
Rehearing (Paper 15, “Req. Reh’g”) of our Decision Denying Institution of Inter
Partes Review (Paper 14, “Decision”). According to Petitioner, the Decision
misapprehended arguments and evidence demonstrating that claims 17 and 21-24
of U.S. Patent No. 6,038,295 (“the ’295 patent,” Ex. 1001) are unpatentable over
the cited prior art. Req. Reh’g 1-2.
Petitioner’s basis for requesting rehearing is its contention that we
misapprehended Petitioner’s argument with respect to the prior art’s disclosure of
the claimed “server.” Req. Reh’g 1-2. Specifically, Petitioner alleges that the
Petition establishes that the claimed “server” is found in Witek’s disclosure of
computer 12 and other destination storage devices. Id. at 3-7. However, we
considered the evidence and arguments presented in the Petition and deemed them
insufficient to establish a reasonable likelihood that at least one of the challenged
claims of the ’295 patent is unpatentable. Dec. 15-18. Disagreement with the
Board’s analysis and conclusions is not a sufficient basis on which to request
rehearing. It is not an abuse of discretion to have made an analysis or conclusion
with which a party disagrees.
Petitioner further asserts that including remote destination storage devices,
in addition to storage within computer 12, as part of the “server” is consistent with
accepted principles of claim construction. Req. Reh’g 8-10. Petitioner points to
no evidence relied on in its Petition in that regard, and also does not indicate where
in its Petition it initially made this claim construction argument. Per 37 C.F.R.
§ 42.71(d), Petitioner must point out where the matter previously was addressed in
its Petition. We could not have misapprehended argument or evidence that was not
presented. A request for rehearing is not an opportunity to supplement a petition.
Petitioner’s Request for Rehearing is denied.
IPR2014-00566
Patent 6,038,295

3

PETITIONER:
Heidi Keefe
Mark R. Weinstein
Andrew Mace
COOLEY LLP
hkeefe@cooley.com
mweinstein@cooley.com
amace@cooley.com
zpatdcdocketing@cooley.com

PATENT OWNER:

Tarek N. Fahmi
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalawla.com

Robert A. Whitman
MISHCON DE REYA NEW YORK LLP
robert.whitman@mishcon.com