Mimzi, LLC

Patent Trials and Appeals Board

May 19, 2020

IPR2019-01287 (P.T.A.B. May. 19, 2020)

Trials@uspto.gov Paper 20
571-272-7822 May 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FOURSQUARE LABS, INC.,
Petitioner,

v.

MIMZI, LLC,
Patent Owner.
____________

IPR2019-01287
Patent 9,128,981 B1
____________

Before STACEY G. WHITE, J. JOHN LEE, and NORMAN H. BEAMER,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request for Rehearing of Decision on Institution
37 CF.R. § 42.71(d)

IPR2019-01287
Patent 9,128,981 B1

2
INTRODUCTION
Foursquare Labs, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1–19 (“the challenged claims”)
of U.S. Patent No. 9,128,981 B1 (Ex. 1001, “the ’981 Patent”). Mimzi, LLC
(“Patent Owner”) timely filed a Preliminary Response (Paper 7, “Prelim.
Resp.”). Petitioner filed an authorized Reply to the Preliminary Response
(Paper 9, “Reply”), and Patent Owner filed an authorized Sur-reply
(Paper 10, “Sur-reply”). On January 14, 2020, we issued a decision
instituting an inter partes review (Paper 11, “Institution Decision” or “Inst.
Dec.”), concluding that Petitioner demonstrated a reasonable likelihood of
prevailing on its asserted unpatentability grounds against the challenged
claims (id. at 37).
Patent Owner timely filed a Request for Rehearing of the Institution
Decision. Paper 14 (“Req. Reh’g”). For the reasons explained below,
Patent Owner’s Request is denied.
DISCUSSION
A party requesting rehearing bears the burden of showing that the
decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
all matters it contends were misapprehended or overlooked by the Board.
Id. The Board applies an abuse of discretion standard when reviewing a
decision on a petition for rehearing. 37 C.F.R. § 42.71(c).
Patent Owner’s Request addresses our preliminary determination that
the Yoo reference1 asserted by Petitioner qualifies as prior art. See Req.

1 Yoo, US 2009/0281988 A1, filed May 6, 2008, published Nov. 12, 2009
(Ex. 1003, “Yoo”).
IPR2019-01287
Patent 9,128,981 B1

3
Reh’g 2–10; Inst. Dec. 13–20. As explained below, Patent Owner has not
shown any abuse of discretion in that determination, or otherwise identified
an error requiring modification of the Institution Decision.
In the Institution Decision, we first determined preliminarily that the
governing statute was 35 U.S.C. § 102(a)(2) (2013), as amended by the
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
(“AIA”). Inst. Dec. 13–19. On the record available at the time, we agreed
with Petitioner that the ’981 Patent included claims with an effective filing
date on or after March 16, 2013, the effective date of the AIA amendment to
§ 102. See id.; Reply 1–2; AIA § 3(n)(1). Specifically, we determined
(preliminarily) that the challenged claims are not adequately supported by
the written description of U.S. Patent Application No. 12/181,956 (“the
’956 Application”), and, thus, could not claim priority to the ’956
Application, the only application in the priority chain that was filed before
the AIA’s relevant effective date. Inst. Dec. 17–19.
Under post-AIA § 102(a)(2), a published patent application of another
inventor (like Yoo) is prior art if it “was effectively filed before the effective
filing date of the claimed invention.” Yoo was filed on May 6, 2008.
Ex. 1003, code (22). Consequently, under post-AIA § 102(a)(2), Yoo would
qualify as prior art because its filing date is before the effective filing date of
the claimed invention.2 Ex. 1001, code (60).

2 We note that Yoo’s effective filing date precedes all of the possible
effective filing dates listed on the face of the ’981 Patent, including the
July 29, 2008 filing date of the ’956 Application. See Ex. 1001, code (60).
As noted above and discussed further below, however, whether the claims are
supported by the ’956 Application relates to the threshold issue of whether
post-AIA § 102(a)(2) applies to Yoo.
IPR2019-01287
Patent 9,128,981 B1

4
Patent Owner argues that we misapprehended the available evidence
and, thus, erroneously determined that the ’956 Application does not provide
sufficient written description support for the challenged claims. See Req.
Reh’g 2–6. According to Patent Owner, Yoo does not qualify as prior art as
a result, and the Petition, thus, should have been denied. See id. at 9. We
disagree for the following reasons.
As an initial matter, we first note that we determined in the Institution
Decision that Petitioner had shown a reasonable likelihood of prevailing on
its contention that all of the challenged claims are unpatentable as obvious
over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek
rehearing of that determination. Thus, even were we to agree with Patent
Owner that Yoo is not prior art, we conclude that Patent Owner has not
shown that the Institution Decision should be modified because we still
would have instituted an inter partes review based on the Ramer/Hayashi
ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director
determines that . . . there is a reasonable likelihood that the petitioner would
prevail with respect to at least 1 of the claims challenged in the petition”
(emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018-
00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising
discretion to deny institution because a reasonable likelihood of prevailing
was shown for only two dependent claims out of twenty challenged claims);
Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan.

3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004,
“Ramer”).
4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007
(Ex. 1005, “Hayashi”).
IPR2019-01287
Patent 9,128,981 B1

5
24, 2019) (informative) (exercising discretion to deny institution because a
reasonable likelihood of prevailing was shown for only two claims out of
twenty-three challenged claims).
According to Patent Owner, however, the Supreme Court’s decision
in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), indicates that “trial
must be terminated as to all grounds” because the asserted ground of
unpatentability based (in part) on Yoo is defective.5 Req. Reh’g 9. Even
assuming arguendo that Patent Owner is correct about the purported defect
in the Yoo-based ground, we disagree. In SAS, the Board had instituted an
inter partes review on nine out of sixteen claims challenged in the petition,
concluding that the petitioner had shown a reasonable likelihood of
prevailing as to those nine but not as to the remaining seven claims. SAS,
138 S. Ct. at 1354. The Court, however, did not hold that the Board was
required to have terminated the trial due to a partially “defective” petition.
To the contrary, the Court held that the petitioner was entitled to a final
written decision on all claims challenged in the petition. Id. at 1359–60. In
other words, the Court held that all challenged claims should have been
included in the inter partes review and had their patentability decided in the
final written decision. See id. Here, we instituted trial on all claims,
including on the Raymer/Hayashi ground; thus, our Institution Decision is
consistent with SAS.

5 We need not address Patent Owner’s argument (Req. Reh’g 9–10) that
holding otherwise could lead to the Board instituting grounds of
unpatentability that fall outside the scope of 35 U.S.C. § 311(b), because all
of the grounds asserted in the Petition are § 103 grounds based on prior art
patents or printed publications, including Yoo (as discussed herein and in the
Institution Decision). See Pet. 7; Inst. Dec. 13–20.
IPR2019-01287
Patent 9,128,981 B1

6
In addition, we further conclude Patent Owner’s Request for
Rehearing should be denied because Patent Owner does not demonstrate that
we abused our discretion or otherwise erred in determining, based on the
available evidence, that Yoo qualifies as prior art under post-AIA
§ 102(a)(2). Patent Owner asserts that we misapprehended evidence
establishing that the challenged claims of the ’981 Patent are supported by
the ’956 Application and, thus, are entitled to its pre-AIA filing date. See
Req. Reh’g 3–6. We disagree.
In the Institution Decision, we determined preliminarily that the
’956 Application did not provide adequate written description support for
the limitations in each challenged claim requiring searching a social network
or social network database “based on” or “using” a transcript of a user’s
spoken request and metadata (e.g., location) associated with the spoken
request. Inst. Dec. 17–19. In reaching that conclusion, we addressed
paragraph 1976 and Figure 6 of the ’956 Application (id. at 17–18), but
Patent Owner now asserts that we misapprehended that evidence (Req.
Reh’g 3–6).
Paragraph 197 of the ’956 Application (Ex. 3001) is reproduced in its
entirety below.

6 In Patent Owner’s briefing before institution, paragraph 197 was
misidentified as paragraph 198. See Sur-reply 2 (citing “[p]aragraph 198”
but quoting paragraph 197); Ex. 3001 ¶ 197. We inadvertently repeated this
typographical error in the Institution Decision. See Inst. Dec. 17–18. In the
Request for Rehearing, Patent Owner again erroneously cites paragraph 198
instead of paragraph 197. See, e.g., Req. Reh’g 3, 6. We understand Patent
Owner’s arguments to relate to paragraph 197, and we refer to paragraph 197
herein to avoid further confusion.
IPR2019-01287
Patent 9,128,981 B1

7
Referencing FIG. 2, for calls and dictation, the appended time-
location transcript 253, along with attached call audio 121,
attached synopsis audio 122, attached video 124, attached photos
125, and metadata 127 which may be recorded on or streamed
live from Mobile Handset Phone 110 a, Voice Over IP (VOIP)
Phone 110 b or land line phone 110C may be transmitted via the
Internet or intranet, e.g., using TCP/IP for nearly lossless or at
least high-quality data transmission, to the Centralized
Community Search database, FIG. 6, 170 c.
Ex. 3001 ¶ 197. We explained in the Institution Decision that this disclosure
“does not describe any searching or requesting information from the
‘Centralized Community Search database,’ much less searching or
requesting such information based on, or using, a transcript of a spoken
request and associated metadata such as location,” and that “[r]ather, this
disclosure describes information . . . that is submitted to become part of the
database.” Inst. Dec. 18 (citing Ex. 3001 ¶ 1977) (emphases in original).
According to Patent Owner, however, “[b]ecause the ’956 Application
discloses that the Centralized Community Search database is used for search
. . . the transmitted transcript and metadata are clearly used and disclosed to
search a social network database.” Req. Reh’g 3. We disagree. Although
the “Centralized Community Search database” is described elsewhere in the
’956 Application as being searched (see Ex. 3001 ¶ 192), the above
disclosure in paragraph 197 does not describe any search of the database,
instead merely disclosing that certain information (including transcript 253
and metadata 127) is transmitted to the database. See id. ¶ 197; Inst.

7 As noted above, the Institution Decision inadvertently cited paragraph 198,
but clearly intended to cite paragraph 197, which is quoted in the Decision.
See Inst. Dec. 17–18.
IPR2019-01287
Patent 9,128,981 B1

8
Dec. 18. Nor is there any mention in that paragraph of how that information
is used. Thus, we discern no basis in paragraph 197 for Patent Owner’s
assertion that the transcript and metadata are “clearly used and disclosed to
search a social network database.” Req. Reh’g 3. Moreover, simply
because the database generally is intended to be searched does not indicate
that it is searched based on, or using, any particular information. See id.
In the Institution Decision, we also noted that other related disclosures
of the ’956 Application describe “the submission of ‘speech-recognized text
and location data’ to a ‘Centralized Community Search database,’ e.g., a
message about a traffic jam or road hazard, or a review of a restaurant or
business” that becomes part of the database. Inst. Dec. 18 (quoting Ex. 3001
¶¶ 186–192).8 According to Patent Owner, however, we misapprehended
these disclosures as well. Req. Reh’g 5–6. Specifically, Patent Owner
argues that paragraph 192 “unambiguously states that the Centralized
Community Search database ‘may be searched or mined’ ‘with speech-
recognized text and location data.’” Id. at 6.
Patent Owner’s argument, however, does not match the actual
language of paragraph 192, which states: “The Centralized Community
Search database of Location Blogs (with speech-recognized text and location
data) may be searched or mined based on social network or type of

8 Patent Owner asserts that we erred by considering these disclosures of the
’956 Application because they were not cited by Petitioner. Req. Reh’g 7.
These disclosures, however, relate to Figure 6 of the ’956 Application (as
does paragraph 197), which Patent Owner raised as evidence of written
description support. See Sur-reply 2. Further, Petitioner did not have an
opportunity to address Patent Owner’s reliance on Figure 6 because Patent
Owner raised it for the first time in its Sur-reply. Id.
IPR2019-01287
Patent 9,128,981 B1

9
information . . . .” Ex. 3001 ¶ 192. By switching the order of two quotes
from paragraph 192, Patent Owner changes the meaning of the disclosure.
Instead of stating that the database is searched with speech-recognized text
and location data, as Patent Owner asserts (Req. Reh’g 6), paragraph 192
actually states that the database includes speech-recognized text and location
data, which is searched “based on social network or type of information”
(Ex. 3001 ¶ 192). Thus, paragraph 192 is consistent with the discussion in
the Institution Decision.
Patent Owner also argues we misapprehended Figure 6 of the ’956
Application, which is reproduced below.

IPR2019-01287
Patent 9,128,981 B1

10
Ex. 3001, Fig. 6. Figure 6 depicts an embodiment of the invention described
in the ’956 Application in which “multiple mobile Phones [are used] for
rolling surveillance by detecting tire pressure monitoring signals of adjacent
vehicles.” Id. ¶ 27. As shown, the data sent to Search Database 170b or
Centralized Community Search database 170c may include “data picked up
by using the Phone as a sensor, e.g., to record and transmit wireless data
from another Phone or an adjacent automobile.” Id. ¶ 179. “[T]ire pressure
monitoring system (TPMS)” signals 920a-d from passing vehicles 920a-d
are recorded by sensor 915 along with metadata and sent to Search Database
170b or Centralized Community Search database 170c. Id. ¶¶ 180–182.
In the Institution Decision, we noted that Figure 6 is the only figure in
the ’956 Application to depict a “Centralized Community Search database.”
Inst. Dec. 18. We also determined preliminarily that Figure 6 “depicts an
embodiment without any spoken request or transcript thereof, instead
drawing input from sensor signals monitoring a car or truck.” Id. According
to Patent Owner, however, we overlooked “Mobile Handset 110a,” “VOIP
Phone 110b,” and “Land Line Phone 110c” in Figure 6, which Patent Owner
contends represent “voice inputs for spoken requests.” Req. Reh’g 4.
As an initial matter, we cannot overlook an argument that was not
made. In its pre-institution briefing, Patent Owner did not identify any of
“Mobile Handset 110a,” “VOIP Phone 110b,” or “Land Line Phone 110c” as
disclosing voice inputs for spoken requests. In the Request for Rehearing
(Req. Reh’g 5), Patent Owner cites pages 1–3 of its Sur-reply as purportedly
setting forth this argument, but those pages make no mention of any feature
of Figure 6 except Centralized Community Search database 170c. See Sur-
reply 1–3. A rehearing request may not be used to advance arguments not
IPR2019-01287
Patent 9,128,981 B1

11
previously made. See Huawei Device Co. v. Optis Cellular Tech., LLC,
IPR2018-00816, Paper 19, 8–9 (PTAB Jan. 8, 2019) (precedential).
Even were we to consider this argument, however, we are not
persuaded that we overlooked any feature of Figure 6 that would compel a
conclusion that Figure 6 provides written description support for the
limitations in the challenged claims requiring searching a social network or
social network database “based on” or “using” a transcript of a user’s spoken
request and associated metadata. According to Patent Owner, “Mobile
Handset 110a,” “VOIP Phone 110b,” and “Land Line Phone 110c” depicted
in Figure 6 correspond to disclosures throughout the ’956 Application of
such structures generating transcripts. Req. Reh’g 5.9 Assuming arguendo
that Patent Owner is correct, Figure 6 still falls short of disclosing that a
social network or social network database is searched based on, or using,
such transcripts.
Figure 6 depicts information that is provided to Centralized
Community Search database 170c, for example, but Patent Owner does not
identify any evidence or persuasive reasoning indicating that such
information includes spoken requests for information or that the Centralized

9 In addition to Figure 2, Patent Owner summarily cites over 120 paragraphs
of the ’956 Application as purportedly supporting this contention. See Req.
Reh’g 5. As it was Patent Owner’s burden to “specifically identify all
matters” it believes we misapprehended or overlooked, we decline to search
through all of the cited material to attempt to locate the pertinent evidence,
particularly given that none of it was cited previously. See 37 C.F.R.
§ 42.71(d); Huawei, IPR2018-00816, Paper 19, 8–9. Patent Owner did
provide a quotation from one paragraph of the ’956 Application, which
appears to be from paragraph 98. See Req. Reh’g 5; Ex. 3001 ¶ 98. Thus, we
consider only that paragraph and Figure 2.
IPR2019-01287
Patent 9,128,981 B1

12
Community Search database is searched based on, or using, such
information. See Ex. 3001, Fig. 6. Similar to our discussion regarding
paragraph 197 above, the ’956 Application instead indicates that the
information shown in Figure 6 as being provided to the Centralized
Community Search database is to become part of the database. See id.
¶¶ 179–192, 197. Indeed, even Figure 2 and paragraph 98—which Patent
Owner relies on (see Req. Reh’g 5)—refers only to “text transcript 250 of
the call or dictation audio and text transcript 260 of the synopsis radio”
(Ex. 3001 ¶ 98, Fig. 2), which corresponds to the disclosure that “call and
voice annotations or synopsis (with speech-recognized text and location
data)” can be shared with the public in a “Location Blog” (i.e., “a
community or collective photographic memory”) stored on the “Centralized
Community Search database” (id. ¶¶ 186–189). Thus, we are not persuaded
of error in our analysis of Figure 6.
Patent Owner also contends that we erred by determining
(preliminarily) that Mr. Geer failed to conceive the limitations related to
“using transcripts of a spoken request and associated metadata to search a
social network database.” Req. Reh’g 7–8. We disagree.
In the Institution Decision, we determined that the evidence then
available did not establish that Mr. Geer had conceived of every feature of
the invention of the challenged claims. Inst. Dec. 19–20. We first note that
this determination is only relevant “if pre-AIA § 102(e) applied” instead of
post-AIA § 102(a)(2). See id. at 19. Because Patent Owner does not
demonstrate any relevant error in our determination (for purposes of
assessing whether to institute trial) that post-AIA § 102(a)(2) applies, any
IPR2019-01287
Patent 9,128,981 B1

13
alleged error in our determinations regarding pre-AIA § 102(e) would be
insufficient to warrant modification of the Institution Decision.
Further, the principal error that Patent Owner identifies with respect to
Mr. Geer’s alleged conception is the same as the purported error in our
analysis of Figure 6 of the ’956 Application. See Req. Reh’g 7–8.10 Thus,
for the same reasons discussed above regarding Figure 6, we also are
unpersuaded that we erred in our analysis of Mr. Geer’s alleged conception.
Patent Owner also argues that we erred by considering Mr. Geer’s
conception at all because “Petitioner never argued that Mr. Geer failed to
conceive” of the relevant limitations of the challenged claims. Id. at 8. This
is plainly incorrect, however, because Petitioner argued that Patent Owner’s
evidence did not establish conception of the entire invention of the
challenged claims, including the social network database limitations. See
Reply 3–5.
Finally, Patent Owner asserts that we erred by even considering the
’956 Application because it was not submitted by Petitioner as an exhibit.
Req. Reh’g 7. Notably, Patent Owner did not argue prior to the Request for
Rehearing that the ’956 Application should not be considered because it was
not submitted by Petitioner. As discussed above, arguments may not be
raised for the first time in a rehearing request. See Huawei, IPR2018-00816,
Paper 19, 8–9. Moreover, as we noted in the Institution Decision, the ’956

10 Patent Owner refers to Exhibit 2007 as a drawing “identical to Figure 6 of
the ’956 Application.” Req. Reh’g 8. In fact, Exhibit 2007 is Mr. Geer’s
Declaration. Ex. 2007. We understand Patent Owner to have intended
instead to refer to Exhibit 2012. See Ex. 2012, Fig. 6. We addressed Exhibit
2012 in the Institution Decision. Inst. Dec. 20.
IPR2019-01287
Patent 9,128,981 B1

14
Application is “a document publicly available from the Office and it is
apparent that both parties had access to it for their briefs.” Inst Dec. 17 n.8.
Thus, we do not discern any failure of appropriate notice to Patent Owner,
nor are we convinced that Patent Owner did not have an adequate
opportunity to be heard regarding the ’956 Application. See Req. Reh’g 7.
Indeed, Patent Owner itself relied on the ’956 Application in its Sur-reply as
evidence of written description support for the challenged claims. See Sur-
reply 2. Thus, we are not persuaded of error.
CONCLUSION
For the foregoing reasons, Patent Owner has not carried its burden of
showing that we misapprehended or overlooked any matter, or abused our
discretion, in a manner such that the Institution Decision should be modified.
We note that many of Patent Owner’s arguments concern preliminary
determinations made in the Institution Decision, based only on the evidence
available at that time, and only for purposes of determining whether to
institute an inter partes review. Such issues are resolved finally only after
the trial is completed and the record is complete, which includes ample
opportunities for both parties to present arguments and further evidence on
these issues.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s Request for Rehearing is denied.

IPR2019-01287
Patent 9,128,981 B1

15
PETITIONER:

Michael Carrillo
Steven Shipe
Joseph Paquin
BARNES & THORNBURG, LLP
michael.carrillo@btlaw.com
steven.shipe@btlaw.com
jpaquin@btlaw.com

PATENT OWNER:

Minghui Yang F.
Brad Liddle
CARTER ARNETT PLLC
myang@carterarnett.com
bliddle@carterarnett.com

Eric Evain
GRANT & EISENHOFER P.A.
eevain@gelaw.com