IPR2019-01413 (P.T.A.B. May. 29, 2020)

Rovi Guides, Inc.

Patent Trials and Appeals BoardMay 29, 2020

IPR2019-01413 (P.T.A.B. May. 29, 2020)

Trials@uspto.gov Paper 26 571-272-7822 Entered: May 29, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ COMCAST CABLE COMMUNICATIONS, LLC, Petitioner, v. ROVI GUIDES, INC., Patent Owner. ____________ IPR2019-01413 Patent 9,232,254 B2 _______________ Before KARL D. EASTHOM, ROBERT J. WEINSCHENK, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION Denying Patent Owner’s Request on Rehearing of Decision Granting Institution of Inter Partes Review 35 C.F.R. § 42.71(d) IPR2019-01413 Patent 9,232,254 B2 2 I. INTRODUCTION Rovi Guides, Inc. (“Patent Owner”) filed a Request for Rehearing (Paper 16, “Req. Reh’g”) of the Decision Granting Institution of Inter Partes Review (Paper 13, “Decision” or “Dec.”) of claims 1–22 (the “challenged claims”) of U.S. Patent No. 9,232,254 B2 (Ex. 1001, the “’254 patent”). Patent Owner requested Precedential Opinion Panel (POP) review of the Request for Rehearing (Req. Reh’g 2–3) and also filed a Petition Under 37 C.F.R. § 1.181(a)(3) Invoking the Supervisory Authority of the Director (Paper 15). Patent Owner’s request for POP review and its Petition Invoking the Supervisory Authority of the Director were denied. Papers 21, 22. For the reasons set forth below, the Request for Rehearing is denied. II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d) In the Decision, we determined that the Federal Circuit’s decision Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), did not warrant terminating or staying this case. Dec. 26–27. Specifically, we explained that, according to Arthrex, “no constitutional infirmity [exists] in an institution decision.” Id. at 27 (quoting Arthrex, 941 F.3d at 1340) (alteration in Decision). We also explained that we generally do not stay cases pending an appeal to the Federal Circuit or the Supreme Court. Id. IPR2019-01413 Patent 9,232,254 B2 3 In the Request for Rehearing, Patent Owner argues that this case should be terminated or stayed because 1) a mandate has not issued in Arthrex, and, thus, the Administrative Patent Judges presiding over this case remain unconstitutionally appointed (Req. Reh’g 5–7); 2) the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (id. at 7–11); and 3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex (id. at 11–13). Patent Owner’s arguments do not demonstrate that we misapprehended or overlooked any matters. The Decision addresses issues relating to the institution of an inter partes review, and, as we explained in the Decision, Arthrex states that an institution decision involves “no constitutional infirmity.” Dec. 27 (quoting Arthrex, 941 F.3d at 1340). III. CONCLUSION The Request for Rehearing does not demonstrate that the Decision misapprehended or overlooked any matters. IV. ORDER It is hereby ORDERED that the Request for Rehearing is denied. IPR2019-01413 Patent 9,232,254 B2 4 PETITIONER: Frederic M. Meeker Bradley C. Wright Blair A. Silver C. Andy Mu Craig W. Kronenthal Wesley W. Jones BANNER & WITCOFF, LTD. fmeeker@bannerwitcoff.com bwright@bannerwitcoff.com bsilver@bannerwitcoff.com amu@bannerwitcoff.com ckronenthal@bannerwitcoff.com wjones@bannerwitcoff.com PATENT OWNER: Jason D. Eisenberg Richard M. Bemben STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. jasone-ptab@sternekessler.com rbemben-ptab@sternekessler.com