IPR2019-01416 (P.T.A.B. Jun. 9, 2020)

Rovi Guides, Inc.

Patent Trials and Appeals BoardJun 9, 2020

IPR2019-01416 (P.T.A.B. Jun. 9, 2020)

Trials@uspto.gov Paper 24 571-272-7822 Date: June 9, 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. IPR2019-01416 Patent 7,735,107 B2 Before JAMESON LEE, WESLEY B. DERRICK, and SHEILA F. MCSHANE, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION Denying Patent Owner’s Request on Rehearing 37 C.F.R. § 42.71 IPR2019-01416 Patent 7,735,107 B2 2 I. INTRODUCTION On February 25, 2020, Patent Owner Rovi Guides, Inc., filed a Request for Rehearing (Paper 12, “Reh’g Req.”) under 37 C.F.R. § 42.71(d) of the Board’s Decision Granting Institution of Inter Partes Review (Paper 10, “Decision” or “Dec.”) of claims 1–16 of U.S. Patent No. 7,735,107 B2 (“the ’107 patent”). Patent Owner also filed a Petition under 37 C.F.R. § 1.181(a)(3) Invoking the Supervisory Authority of the Director (Paper 13); the § 1.181(a)(3) petition was denied (Paper 18). Patent Owner also “requests that the Precedential Opinion Panel (‘POP’) resolve this rehearing request” (Reh’g Req. 2), but we have not received a formal request as set forth in Standard Operating Procedure 2 (“PTAB SOP2”). See PTAB SOP2 (rev. 10, Sept. 20, 2018) at 5 (§ II.C.1). II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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.” Id. III. ANALYSIS Patent Owner’s Request for Rehearing focuses on the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941.3d 1320 IPR2019-01416 Patent 7,735,107 B2 3 (Fed. Cir. 2019). See generally Reh’g Req. Patent Owner argues as follows: (1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceeding remain unconstitutionally appointed, and, therefore, the instant proceeding should be stayed (Reh’g Req. 5–7); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 7–11 (citing, e.g., concurring opinion in Polaris Innovations Ltd. v. Kingston Tech. Co., 792 Fed.Appx. 820 (Fed. Cir. 2020) (unpublished))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of the proceeding is warranted (id. at 11–13). The Federal Circuit’s mandate has now issued. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020) (Ex. 3001). As to the contended insufficiency in the remedy set forth in Arthrex, Patent Owner’s position is contrary to that decision by our reviewing court. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”). Further, as set forth in the Decision, we determined that Arthrex did not warrant terminating or staying this case. Dec. 42. First, we set forth that “Arthrex indicates that there is ‘no constitutional infirmity’ in an institution decision.” Id. (citing Arthrex, 941 F.3d at 1340). Second, we set forth that “the Board generally declines to stay proceedings pending an appeal to the Federal Circuit or the Supreme Court.” Id. (citing Askeladden LLC v. Purple Leaf, LLC, IPR2016-1720, Paper 22 at 2 (PTAB Sept. 11, 2017). Patent Owner’s disagreement with Arthrex and the sufficiency of its remedy does not meet Patent Owner’s burden here. In sum, Patent Owner’s arguments do not identify any matter IPR2019-01416 Patent 7,735,107 B2 4 misapprehended or overlooked in our Decision, nor do they identify any abuse of discretion. On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–16 of the ’107 patent was an abuse of discretion. IV. ORDER For the reasons given, it is: ORDERED that Patent Owner’s Request for Rehearing is denied. IPR2019-01416 Patent 7,735,107 B2 5 FOR PETITIONER: Frederic M. Meeker Bradley C. Wright Blair A. Silver Scott Kelly Kirk Sigmon Harry Porter John Hutchins Christian LaForgia BANNER & WITCOFF, LTD fmeeker@bannerwitcoff.com bwright@bannerwitcoff.com bsilver@bannerwitcoff.com skelly@bannerwitcoff.com ksigmon@bannerwitcoff.com wporter@bannerwitcoff.com jhutchins@bannerwitcoff.com claforgia@bannerwitcoff.com FOR PATENT OWNER: Jason D. Eisenberg Jeffrey Helvey Salvador Bezos STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. jasone-ptab@sternekessler.com jhelvey-ptab@sternekessler.com sbezos-ptab@sternekessler.com