KANNUU PTY LTD.

Patent Trials and Appeals Board

Dec 17, 2020

IPR2020-00739 (P.T.A.B. Dec. 17, 2020)

Trials@uspto.gov Paper 24
571-272-7822 Date: December 17, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioner,

v.

KANNUU PTY LTD,
Patent Owner.

IPR2020-00739
Patent 8,996,579 B2

Before KRISTEN L. DROESCH, MINN CHUNG, and
JESSICA C. KAISER, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)

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INTRODUCTION
Petitioner requests rehearing of the Decision Denying Institution of
Inter Partes Review of claims 1–22 of U.S. Patent No. 8,996,579 B2
(Paper 22, “Decision” or “Dec.”). Paper 23 (“Request for Rehearing” or
“Req. Reh’g”). Specifically, Petitioner requests rehearing because,
according to Petitioner, the Board: (1) misapprehended the claims to import
a non-existent requirement; (2) misapprehended the primary mapping of
each of Perlman and Pu; (3) overlooked the alternative mapping of Perlman;
(4) misapprehended the alternative mapping of Pu; and (5) misapprehended
the mapping of Krohn. See Req. Reh’g 1–15. For the reasons explained
below, the Request for Rehearing is denied.
STANDARD OF REVIEW
The applicable standard for a request for rehearing is set forth in
37 C.F.R. § 42.71(d), which provides that 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 in
a motion, an opposition, or a reply.” The party challenging a decision bears
the burden of showing the decision should be modified. See id. “When
rehearing a decision on petition, a panel will review the decision for an
abuse of discretion.” 37 C.F.R. § 42.71(c).
ANALYSIS
Misapprehension of Claim 1
Petitioner asserts that the Decision misapprehends “generating, by at
least one computer processor, a first display, the first display comprising: a
part of an item identifier corresponding to a first set of items and a part of an
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item identifier corresponding to a second set of items in a database,” recited
in claim 1 and referred to by Petitioner as limitation [1A]. See Req. Reh’g 3.
According to Petitioner, claim 1 “merely require[s] that the ‘first display’
have two components: (1) ‘a part of an item identifier corresponding to a
first set of items;” and (2) ‘a part of an item identifier corresponding to a
second set of items in a database.’” Id. Petitioner asserts that the Decision
misapprehended this limitation to require that the first and second sets of
items must be stored in different databases. See id. at 3–4 (quoting
Dec. 15–16). According to Petitioner, “[b]ecause the Decision
misapprehended the claim language as requiring the two sets of items stored
in different databases, the Board misapprehended the proper scope of the
claims, constituting an abuse of discretion warranting rehearing.” Id. at 4
(citing 37 C.F.R. § 42.71(d); Intelligent Bio-Sys, Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016).
We are not persuaded that we misapprehended the aforementioned
limitation of claim 1. The Decision relied on Petitioner’s position that
Perlman discloses different types of content databases, and that each of the
different types of content databases includes a different set of items
comprising the entries in that particular database. See Dec. 15; Pet. 26
(citing Ex. 1005 ¶¶ 4, 17, Figs. 7–8; Ex. 1003 ¶ 421). Immediately after
pointing out Petitioner’s position, the Decision explained:
Based on Petitioner’s arguments and cited supporting evidence,
we understand Petitioner’s position to be that Perlman discloses
a first set of items and a second set of items based on Perlman’s
disclosure of different types of content data databases that
include different set of items comprising the entries in that
particular database. See Pet. 26. Consistent with the
aforementioned position, Petitioner, however, does not explain
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sufficiently how Perlman’s display comprises a part of an item
identifier (i.e., a letter or letters displayed in the star
configuration) corresponding to a first set of items or entries in
a first database and a part of an item identifier (i.e., a letter or
letters displayed in the star configuration) corresponding to a
second set of items or entries in a different database.
Dec. 15–16. Stated in other terms, the Decision explained why Petitioner’s
position regarding the application of Perlman’s disclosures to the disputed
claim limitation did not teach or suggest a display of a part of a first item
identifier corresponding to a first set of items and a part of an item identifier
corresponding to a second set of items in a database.
Primary Mapping of Perlman
Related to the same limitation of claim 1, Petitioner reproduces the
following portion of the Petition:
Although the embodiment shown in Figure 2 shows multimedia
content, Perlman notes that the invention is “not limited to any
particular type of database” and in fact describes multiple
different types of content databases, such as those for television
“program content” (id., ¶[0004]), “multimedia programs/files”
(id., ¶[0017]), and “MP3 music” titles (id., Figs. 7-8). Each of
these different types of content databases includes a different
set of items comprising the entries in that particular database.
Req. Reh’g 4–5 (quoting Pet. 25–26). According to Petitioner, “[a]s shown
above, Petitioner’s primary mapping of Perlman to limitation [1A] was that
different types of content (e.g., television programs, multimedia files, and
MP3 songs) each constitute a different set of items in the content database.”
Id. at 5; see also id. at 6 (“the various types of different content (i.e.,
television, multimedia files, and MP3 songs) each constituted different set
of items in the database.”). Petitioner further asserts, “[t]his mapping
plainly discloses limitation [1A], as properly interpreted, which broadly
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recites the display of item identifiers[] corresponding to a first and second set
of items, and not necessarily two sets of items stored in two different
databases.” Id. at 5 (citing Ex. 1001, 7:42–47). Petitioner asserts that
Perlman discloses the disputed limitation of claim 1 because Perlman
displays the most common first letters of words in the database list and the
database list includes multiple types of content. See id. at 6–7 (citing Pet.
25–26).
We are not persuaded by Petitioner’s arguments. Despite assertions in
the Petition that Perlman discloses multiple different types of content
databases each including a different set of items comprising the particular
database entries (see Pet. 26), Petitioner in the Request for Rehearing now
argues that Perlman discloses different types of content in the content
database (see Req. Reh’g 5). Petitioner does not direct us to arguments in
the Petition that Perlman discloses different types of content (e.g., television
programs, multimedia files, and MP3 songs) constituting different sets of
items in the content database. See Req. Reh’g 4–7; Pet. 25–26.
Moreover, even if this argument was presented in the Petition,
Petitioner does not direct us to where Perlman discloses generating a display
that comprises a part of an item identifier (i.e., character-mapped buttons in
a star configuration) corresponding to a first set of items (e.g., television
programs) and a part of an item identifier corresponding to a second set of
items (e.g., multimedia files or MP3 songs). See Req. Reh’g 4–7;
Pet. 25–26. Figure 2 of Perlman, reproduced in the Petition, discloses
generating a display of character-mapped buttons in a star configuration
corresponding to the most common first letters of words in the database list,
and further shows the database list is artists for multimedia programs/files.
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See Pet. 25–26; Ex. 1005 ¶ 17, Fig. 2; see also Ex. 1005 ¶¶ 24–26, Figs. 3–6
(disclosing a display of character-mapped buttons in a star configuration
corresponding to subsequent letters of the words in the list of artists for
multimedia programs/files).
Alternative Mapping of Perlman
Petitioner asserts that the Decision overlooked Petitioner’s alternative
mapping of Perlman to limitation [1A]. See Req. Reh’g 7–9. According to
Petitioner, the Petition included “an alternative, backup mapping of Perlman
to limitation [1A], that ‘each part of an item identifier (i.e., letter) would
correspond to the set of content/titles having that item identifier as a first
letter…. In this way, each displayed part of an item [identifier] is for a
different set of items in the database.’” Id. at 7 (quoting Pet. 26 n.6).
Petitioner argues that “the Petition explained that all content/titles having the
same first letter can be considered a separate ‘set of items’ in the database.”
Id.
We are not persuaded that we overlooked an alternative mapping of
Perlman to claim 1. The full text of the footnote is reproduced below:
Moreover, each part of an item identifier (i.e., letter) would
correspond to the set of content/titles having that item identifier
as a first letter. Forlines Decl. ¶421 & n.12. In this way, each
displayed part of an item indenter is for a different set of items
in the database.
Pet. 26 n.6. Petitioner does not direct us to where the Petition explained that
the footnote provided an alternative and distinct mapping of Perlman’s
disclosures to the limitations of claim 1. See Req. Reh’g 7–9; Pet. 25–26.
As explained in the Decision,
We understand Petitioner’s footnote, in the context of
Petitioner’s arguments that Perlman discloses different sets of
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items in different databases and Petitioner’s use of the term
“moreover,” to explain that each set of items in each database
(e.g., the database comprising a set of content/titles) further
includes sets (i.e., subsets) of items based on the items having
different first letters.
Dec. 16.
Primary Mapping of Pu
Petitioner argues the Decision misapprehended Petitioner’s primary
mapping of Pu to limitation [1A]. Req. Reh’g 9. Petitioner reproduces the
following portion of the Petition:
The valid choices presented in the selection list are parts of item
identifiers for sets of items in a database. For example, the
expected textual input could be a particular city within the
states of California or Nevada. Id., 5:11-17. The item
identifiers (i.e., names of the cities) correspond to entries in a
“database comprising a predefined list of all cities within those
two states.” Id.… The parts of item identifiers are for at least a
first and second set of items in a database. For example, part
‘S’ is for all the cities in the database starting with the letter
‘S,’ while part ‘C’ is for all the cities in the database starting
with the letter ‘C’.
Req. Reh’g 9 (quoting Pet. 49). According to Petitioner, “the two ‘sets of
items’ in the database are (1) the set of cities starting with a particular first
letter (e.g.¸‘S’); and (2) the set of cities starting with a particular different
first letter (e.g.¸‘C’).” Id. at 9–10. Petitioner reproduces Figure 3A of Pu,
and argues that since Petitioner explained that selection list includes parts
corresponding to all valid first letters of the cities in the database, cities
starting with the letter “S” and cities starting with the letter “C” must exist in
the database, and, therefore, the display shown in Figure 3A meets
limitation [1A], as properly construed. See id. at 10 (reproducing Ex. 1006;
Fig. 3A; quoting Pet. 48–49).
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We are not persuaded that we misapprehended arguments in the
Petition. Petitioner does not direct us to an explicit argument in the Petition
that the first set of items and the second set of items are taught by Pu’s
disclosure of a set of cities starting with a particular first letter (e.g., “S”) and
a set of cities starting with a particular different first letter (e.g. “C”). See
Req. Reh’g 9–10; Pet. 49. Instead, immediately following the above-
reproduced Petition arguments, the Petition includes the following explicit
argument regarding the first set of items and second set of items:
In addition to supporting a database storing city names, “all
words defined for any particular language” may be included in
another database. Ex. 1006, 5:47-50. The city names would
therefore constitute a first set of items and the words in the
French language would constitute the second set of items.
Pet. 49 (citing Ex. 1003 ¶ 468) (emphasis added). This portion of the
Petition explicitly identifies the city names as a first set of items and French
language words as the second set of items. See id.
Alternative Mapping of Pu
Petitioner asserts that the Decision misapprehended Petitioner’s
alternative mapping of Pu to limitation [1A] and conflates it with the
primary mapping. See Req. Reh’g 10–11 (quoting Dec. 22). Petitioner
reproduces a portion of the Petition at page 49 and argues that the use of “in
addition to” language signified another potential mapping of Pu to limitation
[1A], not the same mapping presented earlier in the Petition relating to city
names. See id. at 11 (quoting Pet. 49).
We are not persuaded that we misapprehended arguments in the
Petition. Petitioner does not direct us to an explicit statement in the Petition
that the Petition provides two alternative and distinct positions regarding the
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application of Pu’s disclosure to the disputed limitation of claim 1. See Req.
Reh’g 10–11; Pet. 48–49. In light of Petitioner’s new argument presented in
the Request for Rehearing, we decline to interpret “in addition to” in the
Petition as introducing an alternative and distinct position for applying Pu’s
disclosure to the disputed claim limitation.
Mapping of Krohn
Petitioner argues that the Decision misapprehended Petitioner’s
mapping of Krohn’s disclosure to the first and second set of items recited in
limitation [1A]. See Req. Reh’g 11–12. Petitioner reproduces the following
portion of the Petition:
As shown in Figures 3A and 3B, the item identifiers can
correspond to characters from correct answers or incorrect
answers. Id., 5:3-39. The characters of correct answers would
be for a first set of items, while the characters for incorrect
answers would be for a second set of items. In addition, each
displayed character (‘J’, ‘P’, ‘G’, and ‘R’) in the example of
Figure 1 would be for the set of all items starting with that
character. As such, each displayed character would be a part
of an item identifier for a different set of items.
Req. Reh’g 12 (quoting Pet. 65–66). Petitioner argues the Petition set forth
two alternative mappings of Krohn’s disclosures to the claimed first set of
items and second set of items. See id. According to Petitioner:
In the first mapping, the correct answers would constitute one
set of items, while the incorrect answers would constitute
another set of items. In the alternative mapping, each of the
four displayed characters would correspond to a different set of
items starting with that character (hence, there would be four
sets of items). In other words, all answers starting with “J”
would constitute one set of items, all answers starting with “P”
would constitute a second set of items, all answers starting with
“G” would constitute a third set of items, and all answers
starting with “R” would constitute a fourth set of items.
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Req. Reh’g 12–13.
We are not persuaded that we misapprehended arguments in the
Petition. Petitioner does not direct us to an explicit statement in the Petition
that the Petition provides two alternative and distinct positions regarding the
application of Krohn’s disclosure to the disputed limitation of claim 1. See
Req. Reh’g 11–13; Pet. 48–49. In view of Petitioner’s new arguments in the
Request for Rehearing, we decline to interpret “in addition” in the Petition as
introducing an alternative distinct position for applying Krohn’s disclosure
to the disputed limitation of claim 1. As we explained in the Decision,
Based on Petitioner’s arguments and cited supporting evidence,
we understand Petitioner’s position to be that Krohn teaches a
first set of items and a second set of items based on Krohn’s
disclosure of predetermined correct answers and predetermined
incorrect answers (see Pet. 64–66), and that Krohn further
discloses different sets (i.e., subsets) of the predetermined
incorrect answers and predetermined correct answers based on
sets of items starting with the same first character (see id.
at 66).
Dec. 27.
Conclusion
For all of the forgoing reasons, we are not persuaded that, in rendering
the Decision, we misapprehended or overlooked arguments presented in the
Petition.
DECISION ON REHEARING
Petitioner’s Request for Rehearing is denied.

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For PETITIONER:
Kevin Johnson
Brian Mack
Marissa Ducca
John McKee
James Glass
QUINN EMANUEL URQUHART & SULLIVAN
kevinjohnson@quinnemanuel.com
brianmack@quinnemanuel.com
marissaducca@quinnemanuel.com
johnmckee@quinnemanuel.com
jimglass@quinnemanuel.com

For PATENT OWNER:
Lewis Hudnell
HUDNELL LAW GROUP P.C.
lewis@hudnelllaw.com