Travelocity.com LPv.Cronos Technologies LLC

Patent Trial and Appeal Board

Oct 16, 2014

08351795 (P.T.A.B. Oct. 16, 2014)

Trials@uspto.gov Paper 12
571-272-7822 Entered: October 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TRAVELOCITY.COM L.P., PRICELINE.COM INC.,
and EXPEDIA, INC.,
Petitioner,

v.

CRONOS TECHNOLOGIES, LLC,
Patent Owner.
____________

Case CBM2014-00082
Patent 5,664,110
____________

Before JENNIFER S. BISK, JAMES B. ARPIN, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

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

INTRODUCTION

Travelocity.com L.P., Priceline.com Inc., and Expedia, Inc.
(collectively, “Petitioner”) request rehearing of our Decision denying
institution of inter partes review (Paper 10 (“Dec. on Inst.” or “Decision”))
of claims 1–3, 8–19, 22–28, 31–36, and 41–44 of U.S. Patent No. 5,664,110
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(Ex. 1001, “the ’110 Patent”), entered on September 15, 2014. Paper 11
(“Reh’g Req.”) 1. For the reasons that follow, Petitioner’s Request for
Rehearing is denied.
BACKGROUND
In its corrected Petition (Paper 8, “Pet.”), Petitioner refers to the
following references:
Exhibit References
1004 U.S. Patent No. 5,347,632, issued to Filepp et al. on Sep. 13,
1994, from an application filed July 28, 1989 (“Filepp”)
1005 Viescas, J., The Official Guide to the Prodigy Service, Microsoft
Press, 1991 (excerpted Introduction, Chs. 1, 2, 6, and 7)
(“Viescas”)
1006 Peapod, Inc., Peapod User Manual v. 3.1, Aug. 1992 (“Peapod”)

Dec. on Inst. 8 (citing Pet. vi).

Specifically, Petitioner asserts that “[w]hile these references individually
may render the claims unpatentable, Petitioner[] rel[ies] on 35 U.S.C.
§ 103[(a)] to simplify the number of grounds for trial.” Pet. 19. Therefore,
Petitioner challenges the patentability of claims 1–3, 8–19, 22–28, 31–36,
and 41–44 of the ’110 Patent based only on the following three grounds of
unpatentability:
References Basis Claims challenged
Viescas, Filepp, and Peapod § 103(a) 1–3, 8–15, 17–19, 22, 24,
26–28, 31–36, 41, and 43–44
Viescas, Filepp, Peapod, and
DeAngelis
§ 103(a) 1–3, 8–19, 22–28, 31–36,
and 41–44
Viescas, Peapod, and the
admitted prior art of DeAngelis
§ 103(a) 1–3, 8–19, 22–28, 31–36,
and 41–44

Dec. on Inst. 8–9 (citing Pet. 16).
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Petitioner requests rehearing of our Decision for three reasons. Reh’g
Req. 1–2. First, Petitioner argues that, although Petitioner agrees that
“general citations to the MPEP or to the United States Supreme Court’s
decision in [KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)], or both, are
insufficient to provide an adequate reason or reasons to combine the
teachings of the applied references” (Dec. on Inst. 19), we overlooked that
Petitioner provided “a number of substantive grounds in support of a
motivation to combine the various references that went far beyond general
citations to the MPEP or KSR” (Reh’g Req. 2–3). See Reh’g Req. 2–10.
Second, Petitioner argues that we overlooked Patent Owner’s response to
Petitioner’s substantive grounds for the combination of the applied
references (Prelim. Resp. 5–6), which allegedly shows that Patent Owner did
not contend that the Petition failed to provide substantive grounds to
combine the teachings of the cited references (Reh’g Req. 2). See Reh’g
Req. 11–13. Third, Petitioner argues that we abused our discretion by
failing “to apply the correct legal standard for finding obviousness over a
single reference.” Reh’g Req. 2 (emphasis added); see id. at 13–15.
Petitioner requests rehearing of our Decision denying institution with respect
to claims 1–3, 8–19, 22–28, 31–36, and 41–44 of the ’110 Patent. Reh’g
Req. 2.

STANDARD OF REVIEW
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
a panel will review the decision for an abuse of discretion.” 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.”
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PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565,
1567 (Fed. Cir. 1988). In its Request for Rehearing, the dissatisfied party
must (1) “specifically identify all matters the party believes the Board
misapprehended or overlooked” and (2) “identify the place where each
matter was previously addressed.” 37 C.F.R. § 42.71(d).

DISCUSSION
1. Substantive Grounds in Support of Motivation to Combine the Applied
References
As noted in our Decision, on the record before us, we were not
persuaded that it is more likely than not that Petitioner would prevail in
showing that claims 1–3, 8–19, 22–28, 31–36, and 41–44 are unpatentable
over the asserted combinations of Viescas, Peapod, and other references.
Dec. on Inst. 19. A patent claim is unpatentable under 35 U.S.C. § 103(a) if
the differences between the claimed subject matter and the prior art are
“such that the subject matter, as a whole, would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” KSR, 550 U.S. at 406. The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) objective evidence of nonobviousness, i.e., secondary
considerations. Dec. on Inst. 16 (citing Graham v. John Deere Co., 383 U.S.
1, 17–18 (1966)). Thus, the obviousness inquiry is based on factual
inquiries including the differences between the claimed invention and the
prior art. Id.; see Dec. on Inst. 20.
For independent claims 1 and 22, we noted that Petitioner had not
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articulated any differences between the recited terminal and method and
each of Viescas, Filepp, and Peapod. Dec. on Inst. 20 (citing Pet. 25–32,
42–51, 61–63, 64, 66–67). As we explained in our Decision,
[w]ithout having identified specifically the differences between
the recited invention and the prior art, Petitioner has failed to
make a meaningful obviousness analysis under 35 U.S.C.
§ 103(a), and, thus, has failed to establish that it is more likely
than not that . . . independent claim 1 or 22 is unpatentable over
the asserted combinations of Viescas, Peapod, and the other
references. Without Petitioner having identified specifically
these differences, we are unable to evaluate properly any reason
offered by Petitioner for modifying Viescas, and Peapod, in
view of the other references. Consequently, Petitioner has
failed to demonstrate that it is more likely than not that it would
prevail on the ground that independent claims 1 and 22 are
unpatentable over Viescas, Peapod, and the other references.
For the same reasons, Petitioner also has failed to demonstrate
that it is more likely than not that it would prevail with respect
to the remainder of the challenged claims.

Dec. on Inst. 20 (first emphasis added).
Petitioner argues that we overlooked the additional substantive
grounds which it provided for combining the references to teach or suggest
the subject matter recited in the challenged claims. Reh’g Req. 3–5.
Petitioner, however, misunderstands our reasons for denying the Petition.
As noted above, because Petitioner failed to identify the differences between
each of the applied references and the subject matter recited in the
challenged claims, Petitioner failed to demonstrate why a person of ordinary
skill in the relevant art would combine the references in the manner
proposed to achieve the recited subject matter, as required by Graham.
1

1
Petitioner argues that we failed to provide guidance “as to what level of
detail is required to demonstrate that it is more likely than not that references
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Dec. on Inst. 19–20.
As we explained in the Decision, without Petitioner having identified
specifically the differences between the recited invention and the applied
references, we were unable to evaluate properly any reason offered by
Petitioner for combining Viescas, Peapod, and Filepp. Id.; see also id. at
17–18 (“[B]ecause neither Petitioner nor Dr. Taylor specifies what teachings
of each reference a person of ordinary skill in the art would combine, we
find Petitioner’s arguments and Dr. Taylor’s opinion [(Ex. 1011 ¶¶ 49–53)]
unpersuasive.”). Moreover, even if we look at these additional reasons, we
are not persuaded that they are sufficient. At best, the additional substantive
arguments offered by Petitioner may indicate that the references are in the
same field of endeavor (e.g., Reh’g Req. 4 (“That Viescas, Filepp, Peapod
and DeAngelis all discuss electronic commerce and particularly grocery
shopping.”)) or provide general reasons why the teachings of these
references could be combined (id. at 5 (“That persons having ordinary skill
in the art could have programmed a general purpose PC (Prodigy, Peapod) to
perform the functions of DeAngelis . . . .” (emphasis added)). Nevertheless,
without knowing what limitations of the recited claims are alleged to be
missing from one reference and supplied by another, we concluded that
Petitioner’s proffered reasons for combining Viescas, Peapod, and Filepp to
teach or suggest the challenged claims are insufficient. Dec. on Inst. 19–20.
Petitioner further argues that we overlooked evidence that
Ex. 1013 discloses three systems that were available in 1991 to
allow grocery shopping from home in the manner claimed in

can be combined.” Reh’g Req. 15. However, in our Decision, we followed
the guidance previously provided by the United States Supreme Court in
Graham. Dec. on Inst. 16, 19–20.
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the contested claims of the ’110 patent. These systems included
two stores that used three of the references that are relied on in
the Petition (Dominick's and Prodigy (Filepp and Viescas);
Jewel and Peapod), and is thus also evidence of the motivation
to combine . . .

Reh’g Req. 6.
Although we agree that this evidence was included in the record for this
case, Petitioner fails to identify where it raised in its Petition the argument
that it now presents in the Request for Rehearing. Id. at 6–9; see Pet. 22, 24,
and 60 (limited citations to Ex. 1013). As noted above, in the Request for
Rehearing, Petitioner must “identify the place where each matter was
previously addressed” in the Petition. 37 C.F.R. § 42.71(d). Petitioner has
not done so here; and we have reviewed the Petition, and we do not find this
argument presented.
Petitioner further argues that,
when the information that was specifically set forth within the
Petition and the information from the exhibits that are part of
the Petition and that were discussed within the Petition is
considered, it is apparent that it would be obvious to combine
the references that are relied on in the Petition, under the
standard set forth in KSR.

Reh’g Req. 10 (emphasis added).
Information contained in exhibits or portions of exhibits, but not discussed
in the Petition, is not incorporated into the Petition merely by the exhibits’
presence in the record. See Cisco Systems, Inc. v. C-Cation Techs., LLC,
IPR2014-00454, slip op. 7–10 (PTAB Aug. 29, 2014) (expanded panel); see
also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999)
(Incorporation “by reference amounts to a self-help increase in the length of
the [] brief[,]” and “is a pointless imposition on the court’s time. A brief
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must make all arguments accessible to the judges, rather than ask them to
play archeologist with the record.”). We could not have overlooked or
misapprehended arguments or evidence that were not presented in the
Petition.
Finally, Petitioner cites to various examples of petitions filed in other
covered business methods reviews, in which “the petitioners provided a
similar level of detail regarding the motivation to combine references.”
Reh’g Req. 9. Even assuming that these decisions suggest a different level
of detail in demonstrating a reason to combine references, Petitioner does
not suggest that the facts in those cases are similar to the facts before us in
the instant case or that, if so, the decisions of the panels in the cited cases are
in any way binding upon us here. Moreover, citation to these decisions is
made for the first time in this Request for Rehearing. We again note that, in
a Request for Rehearing such as this, Petitioner must “identify the place
where each matter was previously addressed” in the Petition. 37 C.F.R.
§ 42.71(d). Petitioner has not done so here. Reh’g Req. 9–10. We could not
have overlooked or misapprehended arguments or evidence that was not
presented in the Petition.
For the reasons set forth above, we are not persuaded that we
misapprehended or overlooked sufficient substantive grounds provided by
Petitioner in support of a reason to combine the various references.
2. Patent Owner’s Response
Petitioner argues that we overlooked Patent Owner’s response to
Petitioner’s substantive grounds for the combination of the applied references
(Prelim. Resp. 5–6), and that Patent Owner did not argue that the Petition failed
to provide substantive grounds to combine the teachings of the cited references
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(Reh’g Req. 2). See Reh’g Req. 11–13. Consequently, Petitioner argues that:
The Patent Owner did not make that argument because it was
clear that it was incorrect, and instead unsuccessfully attempted to
rebut the arguments presented by the Petitioners. The Board
should not give the Patent Owner a pass to raise all of the
defenses that the Patent Owner is supposed to raise.
Reh’g Req. 12 (emphasis added).
Initially, we note that Petitioner bears the burden of demonstrating
that it is more likely than not that Petitioner would prevail in showing
unpatentability on the grounds asserted in its Petition (37 C.F.R.
§ 42.208(c)), and Patent Owner is not required to file a Preliminary
Response to the Petition (37 C.F.R. § 42.207(a) (“The patent owner may file
a preliminary response to the petition.”)). See 37 C.F.R. § 42.300(a).
Moreover, the preliminary response is limited both in subject matter and in
the patent owner’s ability to present “any new testimonial evidence beyond
that already of record.” 37 C.F.R. §§ 42.207(a) and (c). In particular,
Potential patent owner preliminary responses include:

(1) The petitioner is statutorily barred from pursuing a review.
(2) The references asserted to establish that the claims are
unpatentable are not in fact prior art.
(3) The prior art lacks a material limitation in all of the
independent claims.
(4) The prior art teaches or suggests away from a combination
that the petitioner is advocating.
(5) The petitioner’s claim interpretation for the challenged
claims is unreasonable.
(6) If a petition for post-grant review raises 35 U.S.C. 101
grounds, a brief explanation as to how the challenged claims are
directed to a patent-eligible invention.
Office Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 12, 2012)
(emphasis added).

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Thus, if Patent Owner chooses to file a Preliminary Response, Patent Owner
may choose to focus on non-substantive reasons for denying institution or to
respond substantively to all or only some of the grounds of unpatentability
raised by Petitioner, or both. As explained in the Office Trial Practice
Guide, we “may not authorize a trial where the information presented in the
petition, taking into account any patent owner preliminary response, fails to
meet the requisite standard for instituting the trial.” 77 Fed. Reg. at 48756;
see, e.g., 35 U.S.C. §§ 314, 324. Therefore, contrary to Petitioner’s
assertion, nothing may be gleaned from the Patent Owner’s challenge or
failure to challenge the grounds of unpatentability for any particular reason.
Consequently, for the reasons set forth above, we are not persuaded
that we abused our discretion in failing to limit our analysis of Petitioner’s
arguments in view of the challenges to the grounds for unpatentability
presented by Patent Owner in the Preliminary Response.
3. Correct Legal Standard for Finding Obviousness Over a Single
Reference
Petitioner argues that we also failed “to apply the correct legal
standard, which is that obviousness can be established over even a single
reference.” Reh’g Req. 13. Further, Petitioner argues that
[b]ecause ‘anticipation is the epitome of obviousness,’ as
recognized by both the [Board] and the Federal Circuit, if each
element of the claims is found in a first reference, then there is
no need to further analyze the other references or to provide a
rationale to combine the first reference with other references.
Id. at 14–15.

Nevertheless, as noted above, Petitioner did not assert any grounds of
unpatentability based on any of the applied references individually. Instead,
Petitioner challenged the patentability of claims 1–3, 8–19, 22–28, 31–36,
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and 41–44 of the ’110 Patent based only on various combinations of
references, as set forth in the table above. Dec. on Inst. 8–9. Petitioner does
not point us to any language in its brief arguing that a person of ordinary
skill in the art would have found the challenged claims obvious over any of
the references individually. Consequently, we are not persuaded by
Petitioner’s arguments regarding the unpatentability of the challenged claims
based on any of the applied references individually, which we could not
have overlooked or misapprehended, as they were not raised in the Petition.

CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
misapprehended or overlooked matters raised in the Petition in our Decision
on Institution. 37 C.F.R. § 42.71(d). The Request for Rehearing is denied.
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PETITIONER:

Christopher Rourk
Nathaniel St. Clair II
JACKSON WALKER L.L.P.
crourk@jw.com
nstclair@jw.com

PATENT OWNER:

Douglas L. Bridges
Melvin Baines
CAPITOL LEGAL GROUP, PLLC
bridges@capitallegalgroup.com
barnes@capitallegalgroup.com