MV3 Partners LLC

Patent Trials and Appeals Board

Oct 2, 2020

IPR2019-00474 (P.T.A.B. Oct. 2, 2020)

Trials@uspto.gov Paper 52
571-272-7822 Entered: October 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, INC,
Petitioner,

v.

MV3 PARTNERS LLC,
Patent Owner.
____________

IPR2019-00474
Patent 8,863,223 B2
____________

Before JEAN R. HOMERE, JUSTIN T. ARBES, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing
of Final Written Decision
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Unified Patents, Inc. (“Petitioner”)1 filed a Petition requesting inter
partes review of claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 (“the
challenged claims”) of U.S. Patent No. 8,863,223 B2 (Ex. 1001, “the ’223
patent”). Paper 2 (“Pet.”). We instituted an inter partes review pursuant to
35 U.S.C. § 314, as to the challenged claims of the ’223 patent. Paper 9.
An oral hearing was held on May 26, 2020. A transcript of the
hearing has been entered into the record. Paper 49 (“Tr.”).
We entered a Final Written Decision pursuant to 35 U.S.C. § 318(a).
Paper 50 (“Final Dec.”). Therein, we determined that Petitioner had not
demonstrated by a preponderance of the evidence that challenged claims 1–
6, 8, 10–21, 23–38, 40, 42–53, and 55–61 of the ’223 patent are
unpatentable. Final Dec. 28.
Pursuant to 37 C.F.R. § 42.71(d), Petitioner requests rehearing of our
Final Written Decision. Paper 51 (“Pet. Reh’g Req.”). Petitioner asserts
that the Final Written Decision should be modified and we should determine
that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 of the ’223 patent
have been proven to be unpatentable. Pet. Reh’g Req. 14. We have
considered Petitioner’s Request and, for the reasons that follow, we maintain
our conclusion that Petitioner has not demonstrated by a preponderance of
the evidence that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 of the
’223 patent are unpatentable. Therefore, Petitioner’s Request for Rehearing
is denied.

1 Petitioner has changed its name from Unified Patents Inc. to Unified
Patents, LLC. Paper 31.
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II. STANDARD OF REVIEW
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
specifically all matters we misapprehended or overlooked, and the place
where each matter was addressed previously in a motion, an opposition, or a
reply. Id. With this in mind, we address the arguments presented by
Petitioner.
III. ANALYSIS
Petitioner’s Request for Rehearing contains two principal arguments.
First, Petitioner argues that the Board implicitly construed the “determining”
limitation of the challenged claims and misapprehended that its implicit
claim construction was “undisputed” and supported by the ’223 patent’s
only disclosed embodiment. Pet. Reh’g Req. 1. Further, Petitioner argues
that the Board allegedly relied upon this incorrect premise as the sole basis
to find that Wang does not teach the “determining” limitation, and thereby
erroneously concluded that the challenged claims have not be proven to be
unpatentable. Id. at 1–2. Second, Petitioner argues that the Board
misapprehended the proffered evidence for Petitioner’s alternative argument
regarding parental controls in concluding that the argument was
insufficiently supported by the declaration of Patent Owner’s expert. Id. at
2. We address these arguments in turn.
a. The Board Properly Evaluated the “Determining”
Limitation, and Did not Overlook the Specification of the ’223 Patent

Petitioner argues that the Board misapprehended the “determining”
limitation by rendering an implicit construction requiring that “the [set-top
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box (STB) separately determine whether the user is permitted to provide to
the external display device a specific media content received at the mobile
device.” Pet. Reh’g Req. 3 (emphasis omitted). Further, Petitioner argues
that the Board allegedly mistakenly stated that this implicit construction was
“undisputed.” Id. Additionally, Petitioner argues that the Board overlooked
the Specification’s only embodiment with regard to the “determining”
limitation, id., and that the Board relied upon this mistaken premise as the
sole basis to find that Petitioner had not shown that the proposed
modification of Wang does not teach the claimed “determining” limitation,
despite finding that Wang teaches the “authenticating” limitation.2 Id. at 3–
4.
In particular, Petitioner argues that the Board performed no analysis
of the stated Specification’s single embodiment, which is contrary to its
implicit claim construction. Id. at 5. According to Petitioner, the
Specification provides no written description for a separate determination of
whether a user is permitted to provide content to an external device. Id.
Instead, Petitioner argues, the Specification merely discloses “authenticating
a user so that the user can receive media service,” and “[u]pon receiving
content from the networks, the mobile phone 20 transfers the information to
the docking station 22, which up-scales the content and displays the content

2 Illustrative claim 1 recites a mobile set top box comprising a processor
coupled to electronic storage with instructions that, when executed, cause
the processor to execute an upconversion process comprising “authenticating
the validity of a user associated with the mobile computing device” and
“determining, based on the validity of the user, that the received first media
content is permitted to be provided to the display device.” Ex. 1001, 8:49–
51. We refer to these as the “determining” and “authenticating” limitations.
Claims 30 and 32 include the same limitations. Id. at 11:1–3, 12:1–3.
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on the television 14.” Id. (citing Ex. 1001, 3:11–13, 5:40–43, 6:11–12)
(emphasis omitted).
Further, Petitioner submits that because Patent Owner was unable to
show that the Specification supports the “determining” limitation, Patent
Owner did not have possession of the claimed limitation; therefore, the
claim limitation cannot be properly construed to incorporate such new
matter. Id. at 6–10. Furthermore, Petitioner reiterates that Wang’s
disclosure of determining whether to provide received media content to an
external display, subsequent to the successful authentication of received
media content, satisfies the “determining” limitation, consistent with the
Specification’s single embodiment with regards to the “determining”
limitation. Id. at 8–9.
These arguments are not persuasive because they amount to no more
than Petitioner expressing its disagreement with our Decision rather than
establishing that we overlooked or misapprehended any of the parties’
arguments or evidence. A request for rehearing is not an opportunity to
provide rebuttal arguments. 37 C.F.R. § 42.71(d). Rather, it is a medium to
point out errors arising from the Board misapprehending or overlooking an
issue previously raised in the parties’ papers. Id. First, we do not agree with
Petitioner that our mere recitation of the “determining” claim limitation is
tantamount to an implicit claim construction thereof. As set forth in the
Decision, the claim recites the distinct and separate “determining” limitation
in addition to the “authenticating” limitation. Final Dec. 16–17. Simply put,
the plain claim language recites a STB including a processor performing an
upconversion process comprising:
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authenticating the validity of a user associated with the
mobile computing device, [and]
determining, based on the validity of the user, that the
received first media content is permitted to be provided to the
display device.
Id. at 5–6.
What we found to be undisputed in the Decision is the plain language
of the “determining” limitation, not a construction of the language in that
limitation. As noted in the Decision, the claim language plainly requires that
the STB separately determine whether the user is permitted to provide to the
external display device a specific media content received at the mobile
device. Id. at 16–17. This is consistent with Petitioner’s view expressed at
the hearing. See Tr. 20:6–16 (Petitioner acknowledging that the claim
recites the “authenticating” step and “a separate determining step” where
“the determining step happens after the authenticating step” (emphasis
added)). Although Petitioner disputes that the Specification adequately
supports the “determining” limitation, it is not an issue necessitating review
by our mere recitation of the claim language. Further, we are not at liberty
to ignore the “determining” limitation, despite its alleged lack of written
description, in assessing it during a prior art challenge. As set forth in the
Decision, we fully addressed the language of the claims as challenged in the
Petition. We are not persuaded that in doing so we misapprehended or
overlooked any argument raised by Petitioner. In particular, we noted that
Petitioner provided sufficient evidence to show that Wang teaches
integrating the authentication feature into the STB to authenticate mobile
users to access content. Final Dec. 16–17. However, we found such
teaching to fall short of satisfying the separate and distinct “determining”
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limitation, as required by the claim. Id. at 18. As explained in the Decision,
Petitioner and its expert addressed the “authenticating” and “determining”
limitations together, even though they are separate limitations of the claim.
Id. (citing Pet. 39–41; Ex. 1003 ¶ 73). We were unpersuaded by Petitioner’s
theory that the “determining” limitation “automatically” occurs by virtue of
the authenticating step. Id. Furthermore, we noted the evidence of record
was insufficient to show by a preponderance of the evidence that the
proposed modification of Wang would have taught or suggested “any
additional determination beyond authenticating the user.” Id. at 19.
b. The Board Properly Concluded That Petitioner’s
Parental Controls Contention Was Wholly Unsupported by the Record

Second, Petitioner argues that the Board misapprehended Petitioner’s
proffered evidence for an alternative argument that the “determining”
limitation would have been obvious over Wang in light of the well-known
use in the art of parental controls to separately determine whether received
content is permitted to be displayed on an external device. Pet. Reh’g Req.
10–11. According to Petitioner, although the Board’s Decision cited to the
declaration of Patent Owner’s expert, the Board failed to give sufficient
weight to the testimony regarding how such a well-known implementation
of parental controls would complement Wang’s teachings to satisfy the
“determining” limitation even under the Board’s narrow claim construction.
Id. at 12. In particular, Petitioner argues that the conclusion reached by the
Board improperly imposed a “bodily incorporation” requirement for
including such well-known knowledge into Wang, as opposed to assessing
how the well-known use of parental controls in Wang’s STB would
constitute a teaching of the separate “determination” limitation. Id. at 13.
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These arguments are not persuasive because they amount to no more
than Petitioner expressing its disagreement with our Decision rather than
identifying any arguments or evidence we overlooked or misapprehended.
In the Decision, we noted the following:
With respect to Petitioner’s arguments regarding
modifying the functionality of Wang, Petitioner asserts that
STBs were known to perform authentication prior to allowing
media content to be displayed, as well as to implement parental
controls to restrict access to content or to facilitate
pay-per-view or video-on-demand programming. Pet. 40–41.
However, Petitioner has not sufficiently explained any
particular modification of Wang’s system (based on the
teachings of Wang alone or any of the other cited references,
Romano, Herrington, and Bennett) on the record before us to
sufficiently account for the determining step. That is, the
notion of using parental control to determine whether an
authenticated user is permitted to transmit a particular content
to an external display device is wholly unsupported by the
record before us.

Final Dec. 19–20 (citing Ex. 2013 ¶¶ 16–19).
As explained above, we fully considered the complete record
including expert declarations provided by Petitioner’s expert and Patent
Owner’s expert. We fully addressed the language of the claims as
challenged in the Petition, and addressed the same portions of the prior art
presently being argued in the Request for Rehearing. We simply found,
based upon our review of the complete record before us, that Petitioner’s
alternative argument regarding parental controls was not persuasive by a
preponderance of the evidence to show that the challenged claims are
unpatentable. As a panel of the Board has explained, “[a] request for
rehearing is not an opportunity merely to disagree with the panel’s
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assessment of the arguments or weighing of the evidence, or to present new
arguments or evidence,” and “mere disagreement with the Board’s analysis
or conclusion is not a proper basis for rehearing.” Sophos, Inc. v. Finjan,
Inc., IPR2015-01022, Paper 9 at 3–4 (PTAB Jan. 28, 2016).
For the foregoing reasons, we are not persuaded that our Decision
overlooked or misapprehended the parties’ arguments and evidence as
discussed above.
ORDER
Accordingly, it is it is ORDERED that Petitioner’s Request for
Rehearing is denied.

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For PETITIONER:

Jason Mudd
Eric Buresh
Kelly Hughes
ERISE IP, PA
jason.mudd@eriseip.com
eric.buresh@eriseip.com
kelly.hughes@eriseip.com

Roshan Mansinghani
Jonathan Stroud
Alyssa Holtslander
UNIFIED PATENTS INC.
roshan@unifiedpatents.com
jonathan@unifiedpatents.com
alyssa@unifiedpatents.com

For PATENT OWNER:

Jonathan Waldrop
Rodney Miller
John Downing
KASOWITZ BENSON TORRES LLP
jwaldrop@kasowitz.com
rmiller@kasowitz.com
jdowning@kasowitz.com