International Business Machines Corporationv.Intellectual Ventures II LLCDownload PDFPatent Trial and Appeal BoardOct 30, 201410108078 (P.T.A.B. Oct. 30, 2014) Copy Citation Trials@uspto.gov Paper 14 Tel: 571-272-7822 Entered: December 11, 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 IPR2014-00681 Case IPR2014-00682 Patent 6,715,084 B2 _______________ Before KRISTEN L. DROESCH, JENNIFER S. BISK, and JUSTIN BUSCH, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION Request for Rehearing 37 C.F.R. § 42.71(d) IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 2 SUMMARY Petitioner, International Business Machines Corporation, requests rehearing—by an expanded panel—of the Board’s Decision Denying Institution in IPR2014-00681 (Paper 11) and the Board’s Decision on Institution in IPR2014- 00682 (Paper 11, “Dec.”). IPR2014-00681, Paper 12; IPR2014-00682, Paper 14 (“Req. Reh’g”). Specifically, Petitioner seeks rehearing of our decision declining to institute an inter partes review of claims 1–9, 12–20, 22–25, 27, and 29 of U.S. Patent No. 6,715,084 B2 (Ex. 1004) 1 (“the ’084 patent”) based on our interpretation of a claim term. 2 We grant Petitioner’s requests insofar as we have reconsidered our interpretation of the challenged claim term, but we decline to modify our previous decision. DISCUSSION The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are 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 1 Unless otherwise specified, for purposes of this decision all citations to exhibits and papers will be to those filed in IPR2014-00682. 2 Although Petitioner never explicitly articulates this request, we presume this is the relief Petitioner ultimately seeks given the request for a different claim construction of a claim term recited in each of these claims. See Req. Reh’g 10– 11. IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 3 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, an opposition, or a reply. Petitioner contends that the Board: (1) should provide all petitioners with an opportunity to respond to claim construction arguments raised for the first time in a patent owner preliminary response, and (2) misapprehended the evidence supporting the broadest reasonable construction of a limitation recited by all of the claims at issue here. Petitioner’s Request for an Expanded Panel Petitioner requests rehearing by an expanded panel to “set a standard that Petitioners such as IBM have the right to reply to claim construction disputes raised for the first time by a Patent Owner in its preliminary response without requesting authorization from the Board and before a Decision on institution is rendered construing the disputed term.” Req. Reh’g, 1–2. In requesting an expanded panel, Petitioner cites to a Standard Operating Procedure (“SOP”) that contemplates expanded panels in cases of ex parte appeals and interferences. Id. at 5–6 (citing BPAI SOP 1 (Rev. 13) 2009, § III(a)(1)). Petitioner also refers to an SOP that describes procedures for issuing a precedential opinion. Id. at 7 (citing PTAB SOP 2 (Rev. 9) 2014, § III). Petitioner directs us to no persuasive authority that a panel of the Board is empowered to grant or deny a request for panel expansion. The members of the Board deciding an institution matter are not authorized to select themselves or, of their own accord, select other Board members to decide the matter, upon request of a party or otherwise. As indicated in the Standard Operating Procedure, the Chief IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 4 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 do not grant Petitioner’s request for rehearing by an expanded panel. Petitioner’s Opportunity to Respond to Patent Owner’s Preliminary Response Petitioner argues that it “was fundamentally unfair to IBM” for the Board to construe a term in the institution decisions that Petitioner had not addressed in its Petition because Petitioner did not have an opportunity to file a reply brief. Req. Reh’g 4. However, Petitioner concedes that it did not request authorization to file such a brief. Instead, Petitioner refers to the denial of a similar request in an entirely unrelated proceeding. Id. (citing IvenSense, Inc. v. STMicroelectronics, Inc., Case IPR2013-00241 (PTAB Sep. 5, 2013) (Paper 10)). We could not have misapprehended or overlooked a request that was not made. Accordingly, we are not persuaded that this argument presents a proper ground for granting a request for rehearing. Claim Construction Each of the challenged claims recites “determining which of the plurality of devices are anticipated to be affected by the anomaly” (“the determining limitation”). Petitioner does not address the proper interpretation of this limitation in its Petitions (Paper 4). In its Preliminary Responses, Patent Owner asserts that the determining limitation should be interpreted using the plain and ordinary meaning of the component words—“deciding or ascertaining which devices are IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 5 expected or foreseen to be affected by the detected anomaly.” IPR2014-00681, Paper 10, 15–18; IPR2014-00682, Paper 10, 12–14. In our institution decisions, we agree with Patent Owner’s proposed interpretation. Dec. 7–8. Specifically, we note that Patent Owner’s proposed construction is consistent with both the dictionary definitions of the determining limitation’s component words and the specification. Dec. 7–8. We addressed the specification’s statement that “the devices are polled in a predetermined sequential order, and a device anticipated to be affected by the anomaly is a device that has not been polled.” Dec. 7–8 (quoting Ex. 1004, 5:66–6:2). We explained that “the ’084 patent does not limit anticipated devices solely to devices that have not been polled.” Dec. 7–8. In its rehearing requests, Petitioner argues that our interpretation of the determining limitation is improperly narrow in that it excludes devices that have been identified for notification merely because they have not been polled. Req. Reh’g 7–10. Instead, Petitioner asserts that the proper interpretation of the determining limitation is broader—“identifying at least those devices that have not been polled.” Req. Reh’g 10 n.2. Petitioner bases this assertion on the same language we discussed in our decisions—“the devices are polled in a predetermined sequential order, and a device anticipated to be affected by the anomaly is a device that has not been polled.” Req. Reh’g 8 (quoting Ex. 1004, 5:66–6:2). According to Petitioner, this language “delineates between devices that are polled (i.e., queried to see if an attack is taking place) and those that are not polled.” Req. Reh’g 8 (emphasis in original). Petitioner also points to the following language in the ’084 patent as supporting its proposed interpretation: IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 6 Because the data is determined in a predetermined order from the sensors, an intrusion attempt that is detected at an earlier, already polled sensor, can be determined and administrators of other hosts, that have not yet been hit by the intrusion attempt, can be alerted about the possibility of such an intrusion attempt. Ex. 1004, 11:3–8. We agree with Petitioner that the interpretation we adopted for the determining limitation does not include devices that are identified solely because they have not been polled. Req. Reh’g 9. We do not agree, however, that our interpretation was improperly narrow. As a preliminary matter, we do not agree that Petitioner’s proposed interpretation is broader than our adopted interpretation—it is just different. According to Petitioner, any non-polled device is always within the set of devices that are anticipated to be affected. See Req. Reh’g 9 (“at a minimum, the step of ‘determining’ would involve the non-polled devices”). The plain meaning of “device anticipated to be affected by an anomaly,” however, includes various sets of devices depending on the algorithm used to make such a determination. In a simple case, this may be all devices that have not been polled. In other cases, it may include only some of the devices that have not been polled—for example, devices in a particular domain that have not been polled. This set of devices anticipated to be affected may also include devices that have already been polled, if a polled device possesses a particular characteristic making it likely to be affected in the future. Thus, Petitioner’s proposed interpretation does not produce a subset of the devices produced by our adopted interpretation—it produces an entirely different set. In other words, a IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 7 Venn diagram of the two sets would have an overlapping area not coextensive with the entirety of either set. The relationship between the sets of devices created by the two interpretations is illustrated below. The diagram above is a Venn Diagram illustrating that A (the set of devices anticipated to be affected by an anomaly) overlaps with, but is not a subset of U (the set of devices that have not been polled). More fundamental to the outcome of this decision, we do not agree that Petitioner’s proposed construction, departing from the plain meaning of the component words in the limitation, is supported by the specification. Petitioner does not disagree that the plain meaning of “anticipate” is “expect” or “foresee.” Req. Reh’g 9. Nor does Petitioner disagree that the plain meaning of “anticipated to be affected by the anomaly” is “expected or foreseen to be affected by the anomaly.” Id. Instead, Petitioner’s proposed construction requires us to equate “anticipate” with “has not been polled.” Id. According to Petitioner, the specification makes clear that the determination of the set of devices anticipated to be affected does not include any “sort of analysis as to the likelihood that the device will be affected by the anomaly,” and instead makes clear that the only way to determine the devices that are anticipated to be affected is to poll a subset of the devices and presume that those devices not polled may be affected. Req. Reh’g 9. IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 8 We are not persuaded that the specification clearly redefines the term “anticipate” in such a way. The language Petitioner relies on as defining the determining limitation is: “[a]ccording to aspects of the invention, the devices are polled in a predetermined sequential order, and a device anticipated to be affected by the anomaly is a device that has not been polled.” Ex. 1004, 5:66–6:2. This language does not clearly define devices that are anticipated to be affected as those that have not been polled. Instead, we read this sentence to be exemplary, and not definitional, in nature. In other words, the specification supports a reading that in certain embodiments, the devices that have not been polled may be the same as those devices that are anticipated to be affected by a particular anomaly—the overlapping area of our Venn Diagram pictured above—“A + U.” For example, Figure 5, reproduced below, and the corresponding description in the ’084 patent, are consistent with this reading. IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 9 Figure 5 “shows a flow chart of an exemplary intrusion detection method in accordance with the present invention.” Ex. 1004, 6:38–39. Step 420 is described as transmitting appropriate alerts for notifications “to the pertinent administrators of the hosts on the network” if step 410 detects any anomalies. Id. at 10:54–65. Further, the specification explains that “an intrusion attempt that is detected at an earlier, already polled sensor, can be determined and administrators of other hosts, that have not yet been hit by the intrusion attempt, can be alerted about the possibility of such an intrusion attempt.” Id. at 10:65–11:9. This description does not describe alerting administrators of hosts that have not yet been polled—it describes alerting those that “have not yet been hit by the intrusion attempt.” This language supports a conclusion that alerted hosts could include devices that have already been polled. Moreover, it also supports a conclusion that alerted hosts may not necessarily include all devices that have not been polled. Instead, this language is consistent with the plain and ordinary meaning of “anticipated to be affected by an anomaly”—those devices that are expected or foreseen to be affected by the anomaly. In summary, Petitioner has not pointed to persuasive evidence that the patentee, in this case, acted as his own lexicographer defining “anticipated to be affected” contrary to its plain and ordinary meaning. To be his own lexicographer, a patentee must use a “special definition of the term [that] is clearly stated in the patent specification or file history.” Vitronics Corp. v Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996). The one sentence of the ’084 patent specification that Petitioner relies on, describing an example in which non-polled devices coincides IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 10 with the set of devices that are anticipated to be affected, does not justify departing from the plain and ordinary meaning of the determining limitation. CONCLUSION Petitioner’s Requests for Rehearing are granted to the extent that we reconsider our claim construction of the determining limitation, but denied in all other respects. IPR2014-00681 and IPR2014-00682 Patent 6,715,084 B2 11 PETITIONER: Kenneth Adamo Kenneth.adamo@kirkland.com Eugene Goryunov Eugene.goryunov@kirkland.com PATENT OWNER: Jonathan Strang Jstrang-PTAB@skgf.com Lori Gordon Lgordon-PTAB@skgf.com Donald Coulman dcoulman@intven.com Copy with citationCopy as parenthetical citation