Samsung Electronics Co. Ltd.v.Rembrandt Wireless Technologies, LP

Patent Trial and Appeal Board

Oct 24, 2014

12543910 (P.T.A.B. Oct. 24, 2014)

Trials@uspto.gov Paper 20
571-272-7822 Date Entered: October 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
AMERICA, INC., SAMSUNG TELECOMMUNICATIONSAMERICA,
LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
Petitioner,

v.

REMBRANDT WIRELESS TECHNOLOGIES, LP,
Patent Owner.
____________

Case IPR2014-00514
Patent 8,023,580 B2
____________

Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
JUSTIN BUSCH, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

Petitioner filed a Request for Rehearing (Paper 19, “Req. Reh’g”) of
the Board’s decision entered September 9, 2014 (Paper 18, “Decision”),
which declined to institute inter partes review of U.S. Patent No. 8,023,580.
IPR2014-00514
Patent 8,023,580 B2

2

Petitioner incorrectly asserts that we overlooked the “controlling legal
authority” of Massachusetts Institute of Technology v. AB Fortia,774 F.2d
1104, 1109 (Fed. Cir. 1985). We did not. Rather, we found the factual
circumstance presented by Petitioner to be different from that in the cited
authority.
In Massachusetts Institute, a paper (“the Birmingham paper”) was
orally presented at the First International Cell Culture Congress in
Birmingham, Alabama. The conference was attended by 50 to 500 cell
culturists. Afterward, copies of the paper were distributed on request,
without any restriction, to as many as six persons, more than one year prior
to the filing date of the patents at issue. Mass. Inst. of Tech., 774 F.2d at
1108–09. Petitioner argues the Court held that the Birmingham paper was a
printed publication because the Birmingham paper was “orally presented at a
conference attended by between 50 and 500 cell culturists,” and “[a]fter the
presentation, copies were distributed on request.” Req. Reh’g 3. Petitioner,
however, leaves out a critical fact — the Birmingham paper was
disseminated “without restriction” to attendees who were not authors of the
paper. Mass. Inst. of Tech., 774 F.2d at 1109.
In this case, Draft Standard is a draft of a proposed IEEE (Institute of
Electrical and Electronics Engineers) Standard. Decision 5; Ex. 1005, i.
Petitioner’s declarant, Mr. O’Hara, testifies that there were “no restrictions
on who could attend the 802.11 Working Group’s meetings.” Decision 5;
Ex. 1004 ¶ 10. Mr. O’Hara also testifies that Draft Standard “was discussed
at one or more of the meetings of the 802.11 working group” and “made
available to all attendees.” Decision 6; Ex. 1004 ¶ 12. However, the
Petition and Declaration do not allege, and the supporting evidence is
IPR2014-00514
Patent 8,023,580 B2

3

insufficient to show, that Draft Standard was distributed at a Working Group
meeting “without restriction,” much less “without restriction” to an attendee
who was not a member of the Working Group.
As we noted in the Decision, Mr. O’Hara’s testimony is that Draft
Standard was available on the Working Group’s servers in password-
protected files. Decision 6; Ex. 1004 ¶ 11. The passwords were provided to
limit distribution “‘to interested individuals, as opposed to the entire
[I]internet.’” Decision 6, quoting Ex. 1004 ¶ 11. Maintaining Draft
Standard in password-protected files is not consistent with the idea of
distributing the document at a Working Group meeting “without restriction.”
As we noted in the Decision, we do not find sufficient argument or
evidence to indicate that any Working Group meeting was advertised or
otherwise announced to the public, such that any individual who was not
already a member of, or otherwise aware of, the 802.11 Working Group
would have known about Draft Standard such that he or she would have
known to request a copy or ask for access to the document. Decision 7–8.
Further, the cover of Draft Standard indicates that members of the public
would need an appropriate license to reproduce any portion of the document.
Ex. 1005, i. Even if the document was distributed at Working Group
meetings, it was not “without restriction” as in Massachusetts Institute.
Moreover, unlike the case in Massachusetts Institute, the purpose of a
standards-setting working group is not dissemination of information to the
potentially interested public but generation of a document such as one that
might be appropriate “‘[t]o offer a standard for use by regulatory bodies to
standardize access to one or more frequency bands for the purpose of local
area communication.’” Decision 5 (quoting Ex. 1005, 1).
IPR2014-00514
Patent 8,023,580 B2

4

Petitioner now submits that “whether persons other than members of
the 802.11 Working [G]roup knew about [Draft] Standard is irrelevant in a
situation where, as with [Draft] Standard in this particular case, the reference
was distributed to persons having ordinary skill in the art. Ex. 1004 (O’Hara
Declaration), ¶9-12.” Req. Reh’g 2–3. The O’Hara Declaration, however,
does not account for restrictions on dissemination. Cf. Kyocera Wireless
Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (Fed. Cir. 2008) (finding
that “ETSI did not impose restrictions on ETSI members to prevent them
from disseminating information about the standard to nonmembers,” which
weighed toward public accessibility). Also, the Working Group created
Draft Standard. See Ex. 1004 ¶ 2. Provision of a document to co-authors of
the document cannot constitute dissemination, or availability, of the
document to the public.
Petitioner’s request for rehearing is denied.
IPR2014-00514
Patent 8,023,580 B2

5

For Petitioner:
Jeffrey A. Miller
Daniel G. Cardy
DICKSTEIN SHAPIRO LLP
millerj@dicksteinshapiro.com
cardyd@dicksteinshapiro.com

For Patent Owner:

Thomas Engellenner
Reza Mollaaghababa
Lana Gladstein
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaaghababar@pepperlaw.com
gladsteinl@pepperlaw.com