Trials@uspto.gov Paper 20
`571-272-7822 Entered: July 24, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`CBM2015-00004
`Patent 6,658,464 B2
`
`____________
`
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION ON REHEARING
`37 C.F.R. § 42.71(c)
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`
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`
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`571-272-7822 Entered: July 24, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`CBM2015-00004
`Patent 6,658,464 B2
`
`____________
`
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION ON REHEARING
`37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`CBM2015-00004
`Patent 6,658,464 B2
`
`
`I. INTRODUCTION
`
`Petitioner, Motorola Mobility, LLC, filed a Petition (“Pet.”)
`
`requesting a review of claims 1, 8, 16, and 17 of U.S. Patent No.
`
`6,658,464 B2 (Ex. 1001, “the ’464 patent”). Paper 1. Patent Owner,
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`Intellectual Ventures I, LLC, filed a Preliminary Response (“Prelim.
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`Resp.”). Paper 6. The Board instituted a covered business method patent
`
`review of claims 1, 8, 16, and 17. Paper 9 (“Decision”).
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`Patent Owner filed a Request for Rehearing asking that the Board
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`reconsider its decision to institute via an expanded panel. Paper 11 (“Req.
`
`Reh’g”). For the reasons that follow, we deny Patent Owner’s Request for
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`Rehearing and dismiss the request to expand the panel.
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`
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`II. STANDARD
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`When rehearing a decision on a petition, the Board will review the
`
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
`
`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
`
`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
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`(Fed. Cir. 2004). The party challenging the decision has the burden of
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`showing the decision should be modified, and the request for rehearing must
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`specifically identify all matters the party believes the Board misapprehended
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`or overlooked. 37 C.F.R. § 42.71(d).
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`2
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`CBM2015-00004
`Patent 6,658,464 B2
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`III. ANALYSIS
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`
`
`Petitioner previously filed a petition for covered business method
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`patent review of claims 1, 8, 16, and 17 of the ’464 patent, and we denied
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`institution because Petitioner did not demonstrate that the ’464 patent is a
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`“covered business method patent.” Motorola Mobility, LLC v. Intellectual
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`Ventures I, LLC, Case CBM2014-00084, slip op. at 2 (PTAB Aug. 6, 2014)
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`(Paper 18) (the “84 Decision to Institute” or the “84 Petition” as
`
`appropriate).
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`
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`Patent Owner presents three arguments in support of the request for
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`the Board to reconsider and reverse its decision instituting trial. Req.
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`Reh’g 1˗15.
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`
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`A.
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`Alleged Abuse of Discretion
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`Patent Owner argues that the Board abused its discretion by not
`
`denying institution based upon 35 U.S.C. § 325(d), in that the Board’s
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`exercise of discretion was not based on sound legal principles because it did
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`not prevent a serial attack against the ’464 patent. Req. Reh’g 1˗4.
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`Patent Owner’s argument suggests that the Board should deny any
`
`second petition against a patent and that prevention of serial attacks against a
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`patent owner is the sole or primary factor in an analysis under 35 U.S.C.
`
`§ 325(d). Section 325(d) does not provide for such a prohibition.
`
`As stated in our Decision, a decision to institute in general, and
`
`determinations under 35 U.S.C. § 325(d) in particular, are discretionary
`
`decisions. See Dec. 20˗21 (citing 35 U.S.C. § 325(d); 35 U.S.C. § 314(a);
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-
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`00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19)). Under § 325(d), the
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`3
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`CBM2015-00004
`Patent 6,658,464 B2
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`Director “may” take into account whether the same or substantially the same
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`argument was previously presented to the Office. Id. Patent Owner’s
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`contention that the Board “should have exercised its discretion to deny the
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`Petition” is better described as disagreement with our Decision than as
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`demonstrating an abuse of discretion. See Req. Reh’g 3. Disagreement with
`
`a decision is not a proper basis for rehearing. As explained in the next
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`section, we have taken into consideration that Petitioner previously filed a
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`covered business method patent petition challenging the same claims of the
`
`same patent.
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`
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`
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`B. Alleged Misapprehended or Overlooked Argument
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`Patent Owner argues that the Board focused on whether the merits
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`were reached in the 84 Decision to Institute, and, in doing so, overlooked
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`Patent Owner’s argument that Petitioner already argued in the 84 Petition
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`whether the ’464 patent is a covered business method patent. Req.
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`Reh’g 4˗7.
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`We did not overlook Patent Owner’s contention that Petitioner
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`previously argued in the 84 Petition whether the ’464 patent is a covered
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`business method patent. The Decision acknowledges that Petitioner
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`previously filed a petition for review of the ’464 patent, and that we denied
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`institution because Petitioner did not demonstrate the ’464 patent is a
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`covered business method patent. Dec. 2, 20. The Decision acknowledges
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`that Patent Owner argued that the Petition raises substantially the same
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`argument presented in the 84 Decision to Institute, but concludes that trial
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`should be instituted nonetheless based on the totality of the circumstances.
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`4
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`CBM2015-00004
`Patent 6,658,464 B2
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`Dec. 20 (citing Prelim. Resp. 11˗13). Patent Owner has failed to
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`demonstrate this is an abuse of discretion.
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`
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`C. Alleged Roadmap for Petitioner
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`
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`Patent Owner argues that allowing Petitioner to re˗litigate the
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`jurisdictional issue of whether the ’464 patent is a covered business method
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`patent gave Petitioner a roadmap to correct the first petition. Req.
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`Reh’g 12˗15.
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`Here, Patent Owner does not identify any matter the Board
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`misapprehended or overlooked. As such, this argument does not persuade us
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`that our decision should be modified. See 37 C.F.R. § 42.71(d).
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`D. Conclusion
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`
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`Patent Owner has not persuaded us that our Decision is based on an
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`abuse of discretion.
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`
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`IV. EXPANDED PANEL REQUEST
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` Patent Owner contends that the rehearing request presents a
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`significant question, namely whether a petitioner that has fully litigated the
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`issue of whether a challenged patent is a covered business method patent
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`may be permitted to re˗litigate that same issue in a second petition against
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`the same patent. Req. Reh’g 14˗15.
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`We disagree with Patent Owner’s characterization of the issue as a
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`significant question, because the Board has previously determined that
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`§ 325(d) does not preclude institution of a covered business method review
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`where, as here, the merits of the earlier petition were not reached. JP
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`5
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`CBM2015-00004
`Patent 6,658,464 B2
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`Morgan Chase & Co. v. Maxim Integrated Prods., Inc., Case CBM2014-
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`00179, slip op. at 15 (PTAB Feb. 20, 2015) (Paper 11). Further, as stated
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`above, under § 325(d) the Director “may” take into account whether the
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`same or substantially the same argument was previously presented to the
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`Office.
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`Parties are not permitted to request panel expansion. See AOL Inc. v.
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`Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24,
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`2015) (Paper 12). Nor may a panel choose to expand the panel. See Apple
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`Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2 n.1
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`(PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). Rather,
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`the Chief Judge, acting on behalf of the Director, may act to expand a panel
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`on a suggestion from a judge or panel. Id. In this case, the suggestion to
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`expand the panel has been considered, but not adopted.
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`Accordingly, it is
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`V. ORDER
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`ORDERED that the Request for Rehearing is denied; and
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`FURTHER ORDERED that Patent Owner’s request for an expanded
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`panel is dismissed.
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`6
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`CBM2015-00004
`Patent 6,658,464 B2
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`PETITIONER:
`
`John Alemanni
`Martin Morlock
`KILPATRICK TOWNSEND & STOCKTON LLC
`JAlemanni@kilpatricktownsend.com
`mmorlock@kilpatricktownsend.com
`
`
`
`
`PATENT OWNER:
`
`Brenton R. Babcock
`Ted Cannon
`KNOBBE, MARTENS, OLSON & BEAR
`2brb@knobbe.com
`2tmc@knobbe.com
`
`Donald J. Coulman
`Tim Seeley
`INTELLECTUAL VENTURES
`dcoulman@intven.com
`tims@intven.com
`
`Matthew C. Phillips
`RENAISSANCE IP LAW GROUP LLP
`matthew.phillips@renaissanceiplaw.com
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`
`
`7
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