Symantec Corporationv.Rpost Communications Limited

Patent Trial and Appeal Board

Aug 6, 2014

13532647 (P.T.A.B. Aug. 6, 2014)

Trials@uspto.gov Paper 18
571-272-7822 Entered: August 6, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SYMANTEC CORPORATION,
Petitioner,

v.

RPOST COMMUNICATIONS LIMITED,
Patent Owner.

Case IPR2014-00357
Patent 8,468,199

Before THOMAS L. GIANNETTI, BEVERLY M. BUNTING, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

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

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I. SUMMARY
Petitioner, Symantec Corporation, requests rehearing of the Board’s
Decision to Institute (Paper 14, “Dec.”) an inter partes review of U.S. Patent
No. 8,468,199 (Ex. 1001, “the ’199 patent”) entered July 15, 2014. Paper 16
(“Req. Reh’g”). For the reasons that follow, Petitioner’s request for
rehearing is denied.
II. DISCUSSION
The applicable standard for a request for rehearing is set forth in
37 C.F.R. § 42.71(d), which provides in relevant part:
A party dissatisfied with a decision may file a request for
rehearing, without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request 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, opposition, or a
reply.
Petitioner argues that the Decision misapprehends (1) the relationship
between the embodiments depicted in Figures 2, 3, and 7 of Feldbau; and (2)
the proper standard for showing anticipation. Req. Reh’g 3-14. We do not
find these arguments persuasive for the reasons discussed below.
The embodiments of Feldbau
Petitioner argues that we erred by determining that the citations to
Feldbau provided by Petitioner for element [1.3] relate “only to the
embodiment of Figure 3,” because (1) the first citation describes the
invention as a whole, not the embodiment depicted in Figure 3; and (2) the
common reference numerals in both Figures 2 and 3 shows that the second
citation relates to more than just the embodiment of Figure 3. Req. Reh’g
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3-5. We did not, however, determine that the citations for element [1.3]
relate “only” to the embodiment of Figure 3. We stated that, “Petitioner . . .
cites to the embodiment of Figure 3 for element [1.3].” Dec. 20. Indeed, the
Petition cites to Feldbau at page 17, lines 23-25, and page 18, lines 13-15,
and those portions of Feldbau are within the description of Figure 3, which
begins on page 16, line 31. Ex. 1013, 16:31. Accordingly, our description
of those passages as describing “the embodiment of Figure 3,” is accurate.
Dec. 20. The Decision makes no determination as to how the embodiment
depicted in Figure 2 relates to the embodiment depicted in Figure 3. Nor
was any such determination necessary to our reasoning in the Decision.
Specifically, the relationship between the embodiments depicted in Figures 2
and 3 was not relevant to our determination that the embodiment depicted in
Figure 7 is an alternative to the embodiment depicted in Figure 2.
Petitioner also argues that we erred by determining that the
embodiment depicted in Figure 7 is an alternative to the embodiment
depicted in Figure 2 because (1) Figure 7 “describes additional details of the
email implementation” of Figure 2; (2) both Figures are described as
“constructed and operative in accordance with a preferred embodiment of
the present invention.” Req. Reh’g. 5-9. As support for its first contention,
however, Petitioner cites only the first paragraph in the description of Figure
7 (Req. Reh’g. 6 (citing Ex. 1013, 30:35-31:10)), which is silent as to the
relationship between the embodiment depicted in Figure 7 and the
embodiment depicted in Figure 2. As we noted in our Decision, Feldbau
elsewhere describes the embodiment of Figure 7 as an “alternative”
embodiment. Ex. 1013, 9:9-11. Moreover, Figure 7 does not share any
reference numerals in common with Figures 2 or 3, further suggesting that
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the depicted embodiments are distinct. As to Petitioner’s second contention,
we acknowledge that Feldbau describes both Figures 2 and 7 as being
“constructed and operative in accordance with a preferred embodiment of
the present invention,” (Ex. 1013, 12:19-25, 30:35-31:4). Elsewhere,
however, Feldbau describes Figure 2 as being “constructed and operative in
accordance with a preferred embodiment of the present invention,” and
describes Figure 7 as being “constructed and operative in accordance with
yet another preferred embodiment of the present invention.” Accordingly,
we are not persuaded that we erred by determining that the embodiment
depicted in Figure 7 of Feldbau is an alternative to the embodiment depicted
in Figure 2 of Feldbau.
The proper standard for anticipation
Petitioner argues that we erred by requiring the petition to expressly
identify reasons why features found in different embodiments of the same
prior art reference should be combined. Req. Reh’g 9-14. We required,
however, only that the Petition identify in Feldbau the elements arranged as
in the claim. As Petitioner acknowledges, “[a] prior art reference—in order
to anticipate under 35 U.S.C. § 102—must not only disclose all elements of
the claim within the four corners of the document, but must also disclose
those elements ‘arranged as in the claim.’” Net MoneyIN v. Verisign, Inc.,
545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck &
Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). We disagree with Petitioner’s
argument that Figures 2, 3, and 7, and their respective accompanying
descriptions, are directed to a single embodiment for the reasons discussed
above. Because the Petition fails to identify a single embodiment in which
each element was disclosed, it does not identify where Feldbau discloses the
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elements “arranged as in the claim,” as is required to show anticipation.
Accordingly, we are not persuaded that we misapplied the law of
anticipation.
III. CONCLUSION
For the foregoing reasons, the Board did not abuse its discretion when
it determined that Petitioner did not establish a reasonable likelihood that (1)
claims 1-8 are anticipated by Feldbau; and (2) claims 4, 5, 7, and 8 are
obvious over Feldbau.
IV. ORDER
It is hereby
ORDERED that Petitioner’s request for rehearing is denied.
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For PETITIONER:

Stuart P. Meyer, Esq.
David D. Schumann
FENWICK & WEST LLP
smeyer-ptab@fenwick.com
Dschumann-ptab@fenwick.com

For PATENT OWNER:

Lewis E. Hudnell, III
HUDNELL LAW GROUP P.C.
lewis@hudnelllaw.com

John K. Fitzgerald
FULWIDER PATTON LLP
jfitzgerald@fulpat.com
docketla@fulpat.com