International Business Machines Corporationv.Intellectual Ventures II LLC

Patent Trials and Appeals Board

Dec 23, 2014

09178606 - (D) (P.T.A.B. Dec. 23, 2014)

Trials@uspto.gov Paper 18
571-272-7822 Entered: December 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTERNATIONAL BUSINESS MACHINES CORPORATION,
Petitioner,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

Case IPR2014-00673
Patent 6,314,409 B2

Before KRISTEN L. DROESCH, JENNIFER S. BISK, and
JUSTIN BUSCH, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

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

IPR2014-00673
Patent 6,314,409

2
I. INTRODUCTION
International Business Machines Corporation (“Petitioner”) filed a
Request for Rehearing of our Decision of September 22, 2014 (Paper 16,
“Decision” or “Dec.”). Paper 17 (“Req. Reh’g”). Our Decision denied
institution of inter partes review of claims 23–27, 29, 30, 32, 33, and 36–40
of U.S. Patent No. 6,314,409 B2. Dec. 18–19. Petitioner requests rehearing
of our Decision not to review claims 24, 25, 30, 32, 33, 36, 38, and 40 as
anticipated by Digibox, and claims 23, 26, 27, 29, 37, and 39 as unpatentable
over Digibox in view of Stefik
1
. Req. Reh’g 1; see Pet. 5. For the reasons
that follow, Petitioner’s Request for Rehearing is denied.
II. STANDARD OF REVIEW
In its request for rehearing, the dissatisfied party must identify,
specifically, all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was addressed previously.
37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a
petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
III. DISCUSSION
Petitioner contends that we misapprehended evidence in the Petition
(Req. Reh’g 3–4) and overlooked Mr. Rosenblatt’s expert declaration (id. at
4–6) in finding that the Petition does not explain how Digibox discloses
limiting access to an unprotected form of the protected data as enforced by

1
Petitioner requests rehearing of our Decision denying institution of Ground
1 set forth in the Petition. The Petition identifies Ground 1 as the
unpatentability of claims 24, 25, 30, 32, 33, 36, 38, and 40 as anticipated by
Digibox and claims 23, 26, 27, 29, 37, and 39 as obvious over Digibox in
view of Stefik.
IPR2014-00673
Patent 6,314,409

3
an access mechanism (“the limiting access to unprotected data limitation”),
as required by claims 24, 25, 30, 32, 33, 36, and 38. Petitioner also contends
that we overlooked and misapprehended evidence demonstrating
unpatentability of claims 23, 26, 27, 29, 37, and 39. Id. at 6–9.
Petitioner asserts that the Petition shows clearly that Digibox teaches
the limiting access to unprotected data limitation, recited in claims 24, 25,
30, 32, 33, 36, and 38. Req. Reh’g 3. Petitioner directs our attention to
several similar quotations from the Digibox reference disclosing encrypted
digital information contained in a Digibox, which were relied upon in the
Petition to address independent claim 23 (not independent claims 24, 25, 30,
32, 33, 36 and 38). Id. at 3–4 (citing Pet. 14 (citing Ex 1008, 9), Pet. 10
(citing Ex. 1008, 7–8)). Petitioner also asserts “[a]ccess is to the unprotected
form of the protected data because ‘the user’s computer along with the
browser will display images represented by the data accessed in the
Digibox.’” Id. at 4 (citing Pet. 11).
We are not persuaded by Petitioner’s arguments because Petitioner
does not identify where this specific argument was presented in the Petition.
Instead, the Petition asserts merely “the user’s computer along with the
browser will display images represented by the data accessed in the
Digibox” to address the limitations recited in independent claim 25. Pet. 11.
Accordingly, because Petitioner does not identify where the argument now
relied upon was addressed previously in the Petition, we did not abuse our
discretion in denying institution of inter partes review of claims 24, 25, 30,
32, 33, 36, and 38 as anticipated by Digibox.
Petitioner also argues that we overlooked the evidence in Mr.
Rosenblatt’s declaration. Req. Reh’g 4–6. Petitioner presents the following
IPR2014-00673
Patent 6,314,409

4
arguments: (1) the Petition is supported by Mr. Rosenblatt’s declaration
(citing Pet. 8–9, 12–13, 18–21, 25, 27–31); the panel noted that the Petition
cites Mr. Rosenblatt’s declaration, but failed to refer to it in its analysis
when making its findings (citing Dec. at 14–15); and (3) Mr. Rosenblatt’s
declaration provides even more explanation of how Digibox teaches the
limiting access to unprotected data limitation required by claims 24, 25, 30,
32, 33, 36 and 38 (citing Ex. 1001 ¶¶ 105–107, 114–117, 143–146, 154–157,
165–169, 178–180, 196–199; Pet. 18–21, 25, 27–31). Id. at 4–5.
The Petition cites to numerous paragraphs of Mr. Rosenblatt’s
declaration in the claim charts at pages 19, 21, 25, 27, 28, and 30 of the
Petition. Pet. 19, 21, 25, 27, 28, and 30. The citations to the specific
paragraphs of the Declaration appear in the claim chart, and take the form of
“(See Ex. 1001, ¶¶ 105-107),” “(See Ex. 1001, ¶¶ 114–117),” “(See Ex.
1001, ¶¶ 143–146),” “(See . . . Ex. 1001, ¶¶ 154–157),” “(See Ex. 1001,
¶¶ 165–169),” “(See Ex. 1001, ¶¶ 178–180),” and “(See . . . Ex. 1001,
¶¶ 196–199).” Id. The Petition does not include a detailed explanation of
the significance of Mr. Rosenblatt’s Declaration, as required by 37 C.F.R.
§ 42.22(a)(2). See id. Nor does Mr. Rosenblatt’s testimony explain how the
relied upon language in Digibox discloses the limiting access to unprotected
data limitation.
Based on Petitioner’s arguments in its Request for Rehearing,
Petitioner alleges that we overlooked the evidence in Mr. Rosenblatt’s
declaration because we did not incorporate the arguments and explanations
from the cited paragraphs of Mr. Rosenblatt’s declaration into the Petition.
Contrary to Petitioner’s arguments, however, our rules state that arguments
must not be incorporated by reference from one document into another
IPR2014-00673
Patent 6,314,409

5
document. 37 C.F.R. § 42.6(a)(3). Because the Petition did not include a
detailed explanation of the significance of paragraphs 105–107, 114–117,
143–146, 154–157, 165–169, 178–180, and 196–199 of Mr. Rosenblatt’s
declaration, and because arguments must not be incorporated by reference
from Mr. Rosenblatt’s declaration into the Petition, we did not abuse our
discretion in denying institution of inter partes review of claims 24, 25, 30,
32, 33, 36, and 38 as anticipated by Digibox.
In addressing our denial of institution of inter partes review of claims
23, 26, 27, 29, 37, and 39 as unpatentable over Digibox and Stefik,
Petitioner argues that, contrary to our findings, the evidence addresses
properly the differences between the claims and the prior art. Req. Reh’g 8
(citing Pet. 16–17; Ex. 1001 ¶¶ 92–99). Petitioner now argues that Digibox
discloses the majority of element [e] of claim 23. Id. Petitioner further
argues that Digibox “does not disclose ‘transmission of the protected
portions of the data from the device’ in accordance with the rules, which is
disclosed by Stefik.” Id. (citing Pet. 16).
We are not persuaded by Petitioner’s argument because Petitioner
does not identify where this specific argument was presented in the Petition.
To the contrary, Petitioner presents the following assertion in the claim
chart: “Digibox discloses limiting transmission of the protected (e.g.,
encrypted) portions of the data from the device (a) only as protected data or
(b) in accordance with rules as enforced by the access mechanism (e.g.
storage manager enforcing the rules).” Pet. 16. Therefore, because
Petitioner does not identify where the argument now relied upon was
addressed previously in the Petition, we did not abuse our discretion in
IPR2014-00673
Patent 6,314,409

6
denying institution of inter partes review of claims 23, 26, 27, 29, 37, and
39 as unpatentable over Digibox and Stefik.
Request for an Expanded Panel
Petitioner requests rehearing by an expanded panel to address the
proper scope of review and the weight given to supporting evidence. Req.
Reh’g 1–2, 11–15. Petitioner contends that there are conflicting decisions
by different panels regarding this issue. Id. at 12–13. Petitioner asserts that
the rehearing by an expanded panel is dictated by the Board’s Standard
Operating Procedure (SOP) that contemplates the use of expanded panels to
address conflicting decisions by different merits panels. Id. at 1 (citing
BPAI SOP 1 (Rev. 13) 2009, § III(A)(2)).
Contrary to Petitioner’s apparent invitation, the members of the Board
deciding an institution matter do not, under 35 U.S.C. § 6(c), select
themselves, and, similarly are not granted authority to select other Board
members to decide the matter, upon request of a party or otherwise. See
Apple Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2
n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). As
indicated in the Standard Operating Procedure, the Chief Judge, on behalf of
the Director, may act to expand a panel on a “suggestion” from a judge or
panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates
“internal norms for the administration of the Board” but “does not create any
legally enforceable rights.” Id. Accordingly, we cannot grant Petitioner’s
request for rehearing by an expanded panel. We further note that our
application of 37 C.F.R. §§ 42.6(a)(3) and 42.22(a) in the case before us is
bound to the specific facts of this case, and is consistent with the application
of these rules in the expanded panel decision in Cisco Systems, Inc. v.
IPR2014-00673
Patent 6,314,409

7
C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014)
(Paper 12).
II. DECISION ON REHEARING
Petitioner’s request for rehearing is denied and request for panel
expansion is dismissed.

IPR2014-00673
Patent 6,314,409

8
PETITIONER:
Kenneth R. Adamo
Brent Ray
Joel Merkin
Eugene Goryunov
KIRKLAND & ELLIS LLP
kenneth.adamo@kirkland.com
brent.ray@kirkland.com
jmerkin@kirkland.com
eugene.goryunov@kirkland.com

PATENT OWNER:
Lori Gordon
Omar Amin
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
lgordon-PTAB@skgf.com
oamin-PTAB@skgf.com