Fidelity National Information Services, Incv.DataTreasury Corporation

Patent Trial and Appeal Board

Oct 9, 2014

08917761 (P.T.A.B. Oct. 9, 2014)

Trials@uspto.gov Paper 12
571-272-782 Entered: October 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FIDELITY NATIONAL INFORMATION SERVICES, INC.,
Petitioner,

v.

DATATREASURY CORP.,
Patent Owner.

IPR2014-00489 (Patent 5,910,988)
IPR2014-00490 (Patent 6,032,137)
IPR2014-00491 (Patent 5,910,988)1

Before MICHAEL P. TIERNEY, WILLIAM V. SAINDON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION
Denying Request for Rehearing
37 C.F.R. § 42.71(d)

1 This decision addresses an issue that is identical in each case. We,
therefore, exercise our discretion to issue one Order to be filed in each case.
Unless otherwise authorized, the parties, however, are not authorized to use
this style heading for any subsequent papers.
IPR2014-00489 & IPR2014-00491 (Patent 5,910,988)
IPR2014-00490 (Patent 6,032,137)

2
I. SUMMARY
Fidelity National Information Services, Inc. (“Petitioner”) requests
rehearing of the Board’s decisions denying institution of an inter partes
review of U.S. Patent No. 5,910,988 (IPR2014-00489, Ex. 1001, “the ’988
patent”) (IPR2014-00489, Paper 9 (“Decision”); IPR2014-00491, Paper 9)
and of U.S. Patent No. 6,032,137 (IPR2014-00490, Ex. 1001, “the ’137
patent”) (IPR2014-00490, Paper 9), entered August 13, 2014. Paper 10
(“Req. Reh’g.”).2 For the reasons that follow, Petitioner’s request is denied.
II. DISCUSSION
The applicable standard for a request for rehearing is set forth in 37
C.F.R. § 42.71(d), which provides in relevant part:
A party dissatisfied with a decision may file a request for
rehearing, without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically
identify all matters the party believes the Board
misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, opposition, or a
reply.
Petitioner argues that the Decision misapprehends that the Petition’s
reliance on citations to the Gray Declaration is proper under both the
governing statute and regulations. Req. Reh’g. 6–8 (citing Apple Inc. v.
Virnetx Inc., IPR2014-00237, Papers 15, 24; Apple Inc. v. Virnetx Inc.,
IPR2014-00238, Paper 15, 24; SAP Am., Inc. v. Versata Dev. Group, Inc.,

2 Citations provided are to IPR2014-00489. Although the challenged claims
and particular citations to prior art in the Requests for Rehearing in
IPR2014-00490 and IPR2014-00491 differ, those Requests present the same
substantive issues.
IPR2014-00489 & IPR2014-00491 (Patent 5,910,988)
IPR2014-00490 (Patent 6,032,137)

3
CBM2012-00001, Paper 36–37, n.12). The decisions relied upon by
Petitioner, however, do not purport to establish a blanket rule that prior art
citations found only in an expert declaration will always satisfy 37 C.F.R.
§ 42.104(b). In the Apple Inc. v. Virnetx Inc. cases, the panel held only that
“on the specific facts of this case . . . Apple’s Petition meets the
requirements of § 42.104(b)(4), albeit minimally.” IPR2014-00237, Paper
24, 2-3 (emphasis added). In SAP Am., Inc. v. Versata Dev. Group, Inc., the
panel relied upon a claim chart attached to a declaration, but did not
determine that it was required to do so by 37 C.F.R. § 42.104(b) under all
circumstances. Moreover, Petitioner does not establish that the instant
Petition is similar factually to the petitions at issue Apple and SAP. Even if
it did, we would not be compelled to reach the same result because those
cases are not precedential.
Petitioner also argues that the Petition provides sufficient direct
citations to the references to support institution. Req. Reh’g. 8–9. We
disagree. With respect to claim 42, for example, the only direct citation to
prior art in the claim-by-claim analysis is for “at least one second local area
network for transmitting data within a corresponding one of said at least one
intermediate subsystem.” Pet. 23 (citing Ex. 1012, 3:49–51, 7:19–21), id. at
n.6 (citing Ex. 1012, 6:4–9, 8:29–35). In the claim-by-claim analysis of
claim 42 found at paragraphs 715–734 of Mr. Gray’s Declaration, only
paragraph 732 includes citations directly to prior art. Ex. 1004 ¶ 732 (citing
Ex. 1012, 3:49–51, 6:4–9, 8:29–35). In the Rehearing Request, Petitioner
argues that claim 42 includes four elements—T3E1, T3E2, T3E3, and T3E4—
and that these elements are also discussed in Section VII of the Petition.
Req. Reh’g. 8. Although Section VII of the Petition includes three figures
IPR2014-00489 & IPR2014-00491 (Patent 5,910,988)
IPR2014-00490 (Patent 6,032,137)

4
from the prior art, the citations in that section are solely to Exhibits 1004
(Gray Decl.) and 1005 (Muller Decl.); there are no direct citations to prior
art. Thus, we are not persuaded that the few direct citations to prior art
found in the Petition and in the Gray Declaration establish a reasonable
likelihood that claim 42, and the other challenged claims, are unpatentable.
Petitioner also argues that the Gray Declaration is statutorily-allowed
evidence in support of a petition, which simplifies and explains the prior art
relied upon by the Petition. Req. Reh’g. 10–12. Specifically, Petitioner
alleges that our Decision “does not identify any argument in the Gray
Declaration that is necessary for institution, but is not found in the Petition.”
Id. at 10. As discussed above, however, the Petition and the Gray
Declaration do not include direct citations to the prior art for every limitation
of each challenged claim. Without citations to the prior art, the Petition is
merely attorney argument, which is insufficient on this record to establish a
reasonable likelihood that Petitioner would prevail in establishing
unpatentability.
Finally, Petitioner argues that we should allow it to submit a Revised
Petition (Ex. 1051) that includes citations to the references from the Gray
Declaration. Req. Reh’g. 13–14. Petitioner argues that the Revised Petition
“makes explicit what the Board appears to have found lacking in the original
Petition.” Id. at 13-14. Petitioner does not identify specific authority to
correct a Petition at this stage, nor does Petitioner persuade us that such a
correction is appropriate under these facts. Accordingly, Petitioner’s request
is denied.
IPR2014-00489 & IPR2014-00491 (Patent 5,910,988)
IPR2014-00490 (Patent 6,032,137)

5
III. CONCLUSION
For the foregoing reasons, the Board did not abuse its discretion when
it determined that the Petition did not establish a reasonable likelihood that
claims 22–25, 36–50, and 66–123 of the ’988 patent are unpatentable.
IV. ORDER
It is hereby
ORDERED that Petitioner’s request for rehearing is denied; and
FURTHER ORDERED that Exhibit 1051 is expunged.
IPR2014-00489 & IPR2014-00491 (Patent 5,910,988)
IPR2014-00490 (Patent 6,032,137)

6
For PETITIONER:

Erika H. Arner
Darren M. Jiron
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
Erika.arner@finnegan.com
Darren.jiron@finnegan.com

For PATENT OWNER:

Abraham Hershkovitz
Eugene C. Rzucidlo
HERSHKOVITZ & ASSOCIATES, PLLC
AHershkovitz@Hershkovitz.net
GRzucidlo@Hershkovitz.net