Foursquare Labs, Inc.v.Silver State Intellectual Technologies, Inc.

Patent Trial and Appeal Board

Aug 1, 2014

09833969 (P.T.A.B. Aug. 1, 2014)

Trials@uspto.gov Paper 13
571-272-7822 Entered: August 1, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FOURSQUARE LABS, INC.,
Petitioner,

v.

SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2014-00159
Patent 7,343,165 B2
____________

Before GLENN J. PERRY, LYNNE E. PETTIGREW, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71

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Patent 7,343,165 B2

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I. INTRODUCTION
Petitioner, Foursquare Labs, Inc., requests reconsideration of our
decision (Paper 6, “Dec.”) instituting inter partes review of claim 1 of U.S.
Patent No. 7,343,165 B2 (Ex. 1001, “the ’165 patent”). Paper 8 (“Req.
Reh’g”). In its request, Petitioner seeks reconsideration of the decision with
respect to claims 2-5 and 7-9, for which inter partes review was denied.
Req. Reh’g 1. For the reasons discussed below, we grant the request for
rehearing for the limited purpose of modifying our construction of the claim
term “access list of possible requesters.” The request for rehearing is denied
in all other respects.
II. DISCUSSION
When rehearing a decision on petition, a panel of the Board reviews
the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
discretion occurs when a “decision was based on an erroneous conclusion of
law or clearly erroneous factual findings, or . . . a clear error of judgment.”
PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
(Fed. Cir. 1988). A request for rehearing “must specifically identify all
matters the party believes the Board misapprehended or overlooked, and the
place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).
In its request, Petitioner contends that we erred in our construction of
the claim term “access list.” Req. Reh’g 4-6. Petitioner further argues that
we erred in determining that Granstam
1
does not disclose an “access list of
possible requesters” as recited in the challenged claims. Id. at 7-12. Finally,

1
U.S. Patent No. 6,587,691, issued July 1, 2003 (Ex. 1002, “Granstam”).
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Petitioner contends that we should have instituted inter partes review for all
challenged claims because the Board lacks statutory authority to institute a
“partial” inter partes review. Id. at 12-15. We address these arguments in
turn.
A. Claim Construction
In our decision, we construed “access list of possible requesters” of
data (claim 1) or information (claim 2) as “a series of names of possible
requesters who have the right to access, or make use of,” the data or
information. Dec. 9. This construction was based on the ordinary and
customary meaning of the claim term in the context of the ’165 patent. Id.
In its request for rehearing, Petitioner argues that this construction is
“too narrow because it limits a list to a ‘series of names.’” Req. Reh’g 4.
Relying on the statement in the ’165 patent that “[t]he user may . . . provide
varying levels of access to data in the user-specific space . . . to both persons
known and unknown to the user” (Ex. 1001, 4:52-54), Petitioner contends
that the claimed “list” may be “a list of defined, acceptable requestor
characteristics and not just a series of names.” Req. Reh’g 4-5. Petitioner
further points out that in a related proceeding involving the ’165 patent and
the same parties, the district court construed “access list of possible
requesters” as “a list of possible requesters authorized to receive the
information.” Id. at 5 (citing Ex. 1022, 18).
We agree with Petitioner that our earlier construction of “access list of
possible requesters” is not the broadest reasonable construction consistent
with the use of the term in the ’165 patent. Specifically, we are persuaded
that the claimed “list of possible requesters” need not be limited to a “series
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of names of possible requesters.” In view of the ordinary meaning of “list”
as a “series of names, words, or other items written, printed, or imagined one
after the other,”
2
we remove the phrase “of names” from the construction of
“access list” for purposes of reconsidering our decision on institution.
Nevertheless, we do not agree with Petitioner that the term “access list
of possible requesters” should be construed to encompass a list of requester
characteristics. The cited statement from the ’165 patent regarding levels of
access does not purport to describe an “access list.” Thus, as indicated in
our earlier decision, nothing in the ’165 patent, including the passage relied
on by Petitioner, provides a clear definition of “access list” sufficient to
overcome the presumption that the ordinary meaning of the term applies.
Dec. 9; see In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
For these reasons, we modify our claim construction of “access list of
possible requesters” of data (claim 1) or information (claim 2) to be “a series
of possible requesters who have the right to access, or make use of,” the data
or information. Based on the record, this is the broadest reasonable
construction consistent with the written description of the ’165 patent. We
further note that this construction is consistent with the district court’s
construction of the term.
B. Asserted Grounds of Unpatentability
As an initial matter, our modified claim construction does not affect
our earlier institution of an inter partes review of claim 1 of the ’165 patent

2
See The American Heritage Dictionary of the English Language 1020 (4th
ed. 2006) (defining “list” as “[a] series of names, words, or other items
written, printed, or imagined one after the other”).
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on the ground of anticipation by Fraccaroli.
3
See Dec. 9-14. On the record
before us, Petitioner has shown sufficiently that Fraccaroli’s matching
profile includes an “access list,” as presently construed, in the form of
identity information of other users with whom the user wants to share profile
information. See Dec. 12.
In its request for rehearing, Petitioner contends that our earlier
decision with respect to Granstam applied an incorrect claim construction
and, as a result, “did not recognize that Granstam discloses a list of possible
requesters.” Req. Reh’g 7. According to Petitioner, we misinterpreted its
argument regarding the recited “access list” as referring only to the on-
screen buddy list shown in Figure 5 of Granstam and did not consider
“structured lists” stored in database 16 as corresponding to the recited
“access list of possible requesters.” Id.
Petitioner has not persuaded us that we erred in our analysis of the
asserted grounds based on Granstam. In identifying where the “access list”
limitation was addressed in the Petition, as required by 37 C.F.R. § 42.71(d),
Petitioner refers only to the citation of the following passage from Granstam
describing an Information Database (“IDB”): “IDB 16 contains a list for
each subscriber (prepared, e.g., by CA 27), a so-called ‘Buddy-List.’ Each
Buddy-list contains selected information on the subscribers being selected as
members of a particular subscriber’s (client’s) buddy-list . . . .” Pet. 19
(quoting Ex. 1002, 8:32-36); see Req. Reh’g 7. Petitioner now contends that
“structured lists about [a] second mobile station” provide access to user

3
U.S. Patent No. 6,549,768, issued Apr. 15, 2003 (Ex. 1003, “Fraccaroli”).
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information in Granstam and “define two-way access to user-defined
information.” Req. Reh’g 8-9. The Petition, however, contained no such
arguments, nor did it make any reference to structured lists. See Pet. 18-19,
21-22 (addressing “access list” limitations in claims 1 and 2).
Petitioner also argues in its request for rehearing that Granstam’s
system allows users to predefine lists of other users whose potential buddy
requests will be accepted or denied and that such lists are another form of
“access list of potential requesters.” Req. Reh’g 9-10. Petitioner further
argues that Granstam’s buddy list inherently discloses a two-way access list.
Req. Reh’g 10-12. These new arguments were not raised in the Petition and
rely on intrinsic and extrinsic evidence not cited in the Petition. Id. at 9-10
(citing Ex. 1002, 9:65-67); id. at 10 (citing dictionary definition of “buddy
list”); id. at 11-12 (citing evidence regarding a commercially available
product allegedly related to Granstam). A request for rehearing is not an
opportunity to present new arguments or evidence that could have been
presented in the petition. See 37 C.F.R. § 42.71(d).
For these reasons, Petitioner has not identified any matters or
arguments regarding Granstam in the Petition that we misapprehended or
overlooked, or demonstrated that our decision was based on an erroneous
conclusion of law or a clearly erroneous fact finding or judgment. See id.
Accordingly, we deny Petitioner’s request for rehearing with respect to the
asserted grounds of unpatentability based on Granstam.
C. Partial Inter Partes Review
Petitioner argues that because we determined in our decision on
institution that Petitioner had demonstrated a reasonable likelihood of
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prevailing with respect to claim 1, we should have initiated an inter partes
review with respect to all of the challenged claims of the ’165 patent. Req.
Reh’g 12-15. According to Petitioner, the statutory scheme provides a
“binary choice”: to institute or not institute a review of all the challenged
claims identified by a petition. Id. at 13. In Petitioner’s view, our decision
to institute a “partial” inter partes review was in excess of the statutory
authority granted under the Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284 (2011) (“AIA”). Req. Reh’g 12-13. Specifically,
Petitioner asserts that “[t]he Board’s practice of granting partial inter partes
reviews has led to unjust consequences for petitioners that are inconsistent
with the statutory regime for inter partes review. . . . The Board’s
practice . . . also frustrates the intent of the statute.” Id. at 13-14. Further,
Petitioner contends that “the legislative history suggests that Congress
intended for the initiation of inter partes review to be an ‘all or nothing’
proposition.” Id. at 15.
Our decision to institute inter partes review in this case comports with
37 C.F.R. § 42.108(a), a Board rule not cited by Petitioner. The rule
provides: “When instituting inter partes review, the Board may authorize
the review to proceed on all or some of the challenged claims and on all or
some of the grounds of unpatentability asserted for each claim.” 37 C.F.R.
§ 42.108(a). In issuing this final rule, the Office responded to comments
received during the rulemaking process, including comments similar to
Petitioner’s argument that all challenged claims should be included in an
inter partes review when there is a reasonable likelihood of prevailing with
respect to one challenged claim. See Changes to Implement Inter Partes
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Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents, 77 Fed. Reg. 48,680,
48,702-03 (Aug. 14, 2012) (comment 60). The response explained that
37 C.F.R. § 42.108 is consistent with the AIA statutory provisions. 77 Fed.
Reg. at 48,703. Among other statutes, the response cited 35 U.S.C.
§ 312(a)(3), which provides that a petition to institute an inter partes review
must identify each claim challenged, and 35 U.S.C. § 314, under which the
Director may not institute a review unless certain thresholds are met.
77 Fed. Reg. at 48,703. The response also noted that 35 U.S.C. § 315(e)
provides for estoppel on a claim-by-claim basis. 77 Fed. Reg. at 48,703. In
addition, the response cited the statutory provisions requiring the Director to
prescribe of rules setting forth standards for showing sufficient grounds to
institute a review, and considerations to be taken into account in
promulgating rules, including the efficient administration of the Office and
the ability to complete proceedings in a timely manner. Id. (citing 35 U.S.C.
§ 316(a)(2), (a)(4), (b)).
In view of these various statutory provisions, the response concluded:
In order to streamline and converge the issues for consideration,
the decision to institute should limit the claims in the review to
only those claims that meet the threshold. By limiting the
review in such a manner, the patent owner is provided with a
defined set of potentially meritorious challenges and will not be
burdened with responding to non-meritorious grounds that fail
to meet the initial thresholds. This convergence of issues for
review streamlines the proceeding and aids in the efficient
operation of the Office and the ability of the Office to complete
the proceeding within the one-year timeframe. It is inefficient
and unfair to patent owner to require a full response to
challenges on claims that do not meet the initial threshold.
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Id.
In accordance with 37 C.F.R. § 42.108(a), and consistent with the
AIA statutory provisions, our decision on institution in this case authorized
an inter partes review only on the challenged claim and asserted ground that
met the statutory threshold—a reasonable likelihood that Petitioner would
prevail. Petitioner has not shown that our decision was based upon an error
of law, and we deny Petitioner’s request for rehearing on the ground that our
decision was in excess of statutory authority.
III. ORDER
Accordingly, it is:
ORDERED that Petitioner’s request for rehearing is granted for the
limited purpose of modifying our claim construction of “access list of
possible requesters”; and
FURTHER ORDERED that the request for rehearing is denied in all
other respects.
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FOR PETITIONER:
Craig R. Smith
William J. Seymour
Lando & Anastasi, LLP
csmith@lalaw.com
wseymour@lalaw.com

FOR PATENT OWNER:

Daniel M. Cavanagh
Glen L. Nuttall
Klein, O’Neill & Singh, LLP
dcavanagh@koslaw.com
gnuttall@koslaw.com