Paper No. 57
`
`
`Trials@uspto.gov
`571.272.7822 Entered: November 6, 2015
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00587
`Patent 6,826,694 B1
`____________
`
`
`
`Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`I. BACKGROUND
`On September 29, 2015, International Business Machines Corporation
`(“Petitioner”) filed a Request for Rehearing (Paper 55 (“Req.”)) asking the
`Board to reconsider its Final Written Decision (Paper 54 (“Dec.”)).
`In the Final Written Decision, we determined that Petitioner failed to
`demonstrate by a preponderance of the evidence that claim 1 of U.S. Patent
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822 Entered: November 6, 2015
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00587
`Patent 6,826,694 B1
`____________
`
`
`
`Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`I. BACKGROUND
`On September 29, 2015, International Business Machines Corporation
`(“Petitioner”) filed a Request for Rehearing (Paper 55 (“Req.”)) asking the
`Board to reconsider its Final Written Decision (Paper 54 (“Dec.”)).
`In the Final Written Decision, we determined that Petitioner failed to
`demonstrate by a preponderance of the evidence that claim 1 of U.S. Patent
`
`
`
`
`
`IPR2014–00587
`Patent 6,826,694 B1
`No. 6,826,694 B1 (“the 694 patent”) is unpatentable over Hughes1 and
`Abraham2 because Hughes and Abraham are not prior art. Dec. 19. Hughes
`and Abraham would qualify under prior art only under 35 U.S.C. §§ 102(a)
`or 102(e). Id. at 11–12. Patent Owner sought to disqualify Hughes and
`Abraham as prior art by demonstrating that the claimed invention of the ’694
`patent was actually reduced to practice “at least as early as early 1996 but no
`later than June 11, 1996,” which is prior to the filing dates of Hughes and
`Abraham. Id. Patent Owner proffered a declaration of inventor Mr. Partha
`Dutta, a set of AT&T documents, and a declaration of non-inventor Dr.
`Dalibor Vrsalovic as evidence. Id. at 13. After weighing all of the evidence
`and taking into account Petitioner’s arguments, we determined that the
`evidence sufficiently established that the claimed invention was reduced to
`practice “at least as early as early 1996 but no later than June 11, 1996.” Id.
`at 18.
`
`In Petitioner’s Reply, Petitioner argued that, contrary to Patent
`Owner’s evidence, the claimed subject matter could not have been reduced
`to practice by June 11, 1996. Paper 37, 11–12 (“Pet. Reply”). The ’694
`patent has three named inventors, Mr. Partha Dutta, Mr. Mahesh Kumar, and
`Dr. Michah Lerner. Ex. 1004, 1. Mr. Dutta, Mr.Kumar, and Dr. Lerner
`were all employed by AT&T as part of the GeoPlex project, and Mr. Dutta
`testified that the claimed subject matter was one part of the GeoPlex project.
`See Dec. 13–14. Petitioner alleged that Mr. Kumar was not employed at
`AT&T until July 1997 and, thus, argued that the claimed invention could not
`have been conceived or reduced to practice earlier than July 1997. Pet.
`
`
`1 Hughes et al., U.S. Patent No. 5,842,040 (issued Nov. 24, 1998)(Ex. 1006).
`2 Abraham et al., U.S. Patent No. 5,983,270 (issued Nov. 9, 1999)(Ex.
`1007).
`
`2
`
`
`
`IPR2014–00587
`Patent 6,826,694 B1
`Reply 11–12. We were not persuaded by this argument because “the
`discrepancy between Mr. Kumar’s alleged date of employment and the
`alleged date of reduction to practice may be the result of an error in
`ascribing inventorship, and is not persuasive evidence that the claimed
`subject matter could not have been reduced to practice in 1996.” Dec. 17–
`18.
`In the Request for Rehearing, Petitioner argues that we “overlooked
`
`the factual and legal argument showing that IV’s argument regarding
`inventorship was both (i) unsupported by clear and convincing evidence and
`(ii) improperly raised.” Req. 2. We have considered Petitioner’s request but
`decline to modify our Decision for the reasons given below.
`
`
`II. ANALYSIS
`A. Standard of Review
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004). “The burden of showing a decision should be modified lies
`with the party challenging the decision.” 37 C.F.R. § 42.71(d).
`
`
`B. Analysis
`Petitioner argues that “the panel overlooked that it is not sufficient to
`
`find that IV’s argument [regarding the discrepancy with Mr. Kumar’s date of
`
`3
`
`
`
`IPR2014–00587
`Patent 6,826,694 B1
`employment] may be true, because IV must prove misjoinder of an inventor
`by clear and convincing evidence.” Req. 2–4.
`Petitioner’s argument is unpersuasive. As Petitioner acknowledges,
`Req. 4, it bears the ultimate burden of persuasion, by a preponderance of the
`evidence, that Hughes and Abraham are prior-art references, which includes,
`in this case, the burden of showing that IV is not entitled to an invention date
`earlier than Hughes’s and Abraham’s earliest effective filing dates. This
`means that “if the fact trier of the issue is left uncertain, the party with the
`burden loses.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800
`F.3d 1375, 1379 (Fed. Cir. 2015) (internal citation and quotation marks
`omitted). In contrast, Patent Owner bears a “second and distinct burden,”
`the burden of production or of “going forward with the evidence,” that it is
`entitled to an earlier invention date. See id. The burden of production “may
`entail producing additional evidence and presenting argument based on new
`evidence or evidence already of record.” Id. (internal quotation marks
`omitted).
`Patent Owner’s defense to the alleged ground of unpatentability was
`to disqualify Hughes and Abraham as prior art by producing evidence that
`the claimed subject matter was reduced to practice no later than June 11,
`1996. See Paper 29, 33–54. Patent Owner proffered Mr. Dutta’s
`declaration, Dr. Vrsalovic’s declaration, and the AT&T documents to meet
`its burden of production. See id. We weighed all of Patent Owner’s
`evidence, as well as Petitioner’s evidence and arguments, and determined
`that Petitioner did not persuade us that Hughes and Abraham were prior-art
`references. See Dec. 11–19.
`Petitioner raised the issue of Mr. Kumar’s date of employment in the
`Petitioner’s Reply in an attempt to rebut Patent Owner’s evidence of prior
`
`4
`
`
`
`IPR2014–00587
`Patent 6,826,694 B1
`inventorship. Pet. Reply 11–12. Petitioner argued that the alleged
`discrepancy with Mr. Kumar’s date of employment ipso facto established
`that the date of conception and the reduction to practice of the subject matter
`of claim 1 of the ’694 patent could not have occurred prior to July 1997. Id.
`In essence, Petitioner argued Mr. Kumar’s alleged date of employment
`outweighs all of Patent Owner’s evidence and necessarily leads to the
`conclusion that the date of conception and the reduction to practice of the
`subject matter of claim 1 of the ’694 patent could not have occurred prior to
`July 1997.
`Petitioner’s argument was and remains unpersuasive because, as we
`determined in our decision, “the discrepancy between Mr. Kumar’s alleged
`date of employment and the alleged date of reduction to practice may be the
`result of an error in ascribing inventorship, and is not persuasive evidence
`that the claimed subject matter could not have been reduced to practice in
`1996.” Dec. 17–18. We are also not persuaded that Patent Owner was
`required to prove by clear and convincing evidence that Mr. Kumar was
`misjoined as an inventor of the ’694 patent in order to meet its burden of
`going forward with evidence of prior invention. The clear-and-convincing-
`evidence standard applies to burdens of persuasion, not to burdens of
`production. See Dynamic Drinkware, 800 F.3d at 1378 (“The burden of
`persuasion is the ultimate burden assigned to a party who must prove
`something to a specified degree of certainty, such as by a preponderance of
`the evidence or by clear and convincing evidence” (emphasis added)
`(internal citation and quotation marks omitted)). Hess v. Advanced
`Cardiovascular Sys., Inc., 106 F.3d 976 (Fed. Cir. 1997), the case on which
`Petitioner relies in asserting this standard, is inapposite because there the
`appellant sought to correct inventorship under 35 U.S.C. § 256. Id. at 978–
`
`5
`
`
`
`IPR2014–00587
`Patent 6,826,694 B1
`79. Here, in contrast, Mr. Kumar’s status as a named co-inventor of the
`‘694 patent is relevant only to the extent that it relates to Patent Owner’s
`asserted date that the invention was reduced to practice. It is not an issue
`that we need to decide per se, and thus it does not make sense under these
`circumstances to impose on Patent Owner the burden of persuading us that
`Mr. Kumar was improperly named as an inventor.
`In its Petitioner’s Reply and Request, Petitioner cites to Davis v.
`Reddy, 620 F.2d 885, 888 (C.C.P.A. 1980) for the proposition that “patent
`owner could not claim a conception date that was before one of the joint
`inventors began to work for the patent owner.” Pet Reply 11; Req. 6. In
`Davis, a case regarding priority in an interference context, the court makes a
`passing reference to the fact that the Board noted that the senior party was
`not entitled to a conception date prior to when one of the co-inventors was
`employed at the senior party’s patent’s assignee. Davis, 620 F.2d at 888.
`Davis, however, does not include any discussion as to what facts the Board
`relied upon to make such a determination, and thus, Petitioner’s reliance on
`Davis v. Reddy is unpersuasive in this case because Petitioner has not
`established that the facts of Davis are similar to the facts of this case.
`Petitioner also argues that we overlooked Petitioner’s evidence
`concerning the issue of inventorship and concerning Mr. Kumar’s alleged
`date of employment because we dismissed Patent Owner’s motion to
`exclude such evidence as moot. Req. 1–2. Patent Owner’s motion to
`exclude sought to exclude Exhibits 1032, 1034, 1035 and 1036. Paper 40.
`Petitioner proffered exhibit 1032 and 1034 to establish that Mr. Kumar was
`an inventor. Pet. Reply 11. However, it is apparent from the ’694 patent,
`itself, that Mr. Kumar was named as an inventor when the ’694 patent was
`filed. Ex. 1004, 1. Petitioner proffered exhibits 1035 and 1036 to establish
`
`6
`
`
`
`IPR2014–00587
`Patent 6,826,694 B1
`that Mr. Kumar did not start work at AT&T until July 1997. Pet. Reply 11–
`12. In reaching our decision, we assumed that Petitioner was correct that
`Mr. Kumar did not start until July 1997. See Dec. 17–18. We, thus,
`dismissed Patent Owner’s motion to exclude as moot because we did not
`rely upon exhibits 1032, 1034, 1035, and 1036 in reaching our Decision. Id.
`at 19. As indicated in our Decision, even assuming that Mr. Kumar, a
`named inventor, did not start work at AT&T until July 1997, we were not
`persuaded that the alleged discrepancy between Mr. Kumar’s alleged date of
`employment and Patent Owner’s alleged date of reduction to practice ipso
`facto leads to the conclusion that the claimed subject matter could not have
`been reduced to practice by June, 1996. See Id. at 17–18.
`Petitioner further argues that consideration of Patent Owner’s
`argument is improper procedurally because it was first raised in Patent
`Owner’s motion to exclude. Req. 6–7. We acknowledge that previous
`Board decisions have stated that a motion to exclude is not an opportunity
`for submitting new arguments or a sur-reply. See Id. We, however, are not
`persuaded this was an abuse of our discretion that requires us to modify our
`decision to determine that Petitioner’s argument outweighs Patent Owner’s
`evidence of prior invention. We note that Patent Owner responded to Patent
`Owner’s argument regarding inventorship in its opposition to Patent
`Owner’s motion to exclude and had an opportunity to respond to the issue
`during oral argument. See Paper 48, 5–6; Paper 54, 14–16, 20–24.
`
`
`III. CONCLUSION
`We are not persuaded of an abuse of discretion by Petitioner.
`
`Petitioner’s request for rehearing denied.
`
`7
`
`
`
`IPR2014–00587
`Patent 6,826,694 B1
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`PETITIONER:
`
`Kenneth R. Adamo
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`kenneth.adamo@kirkland.com
`Eugene.goryunov@kirkland.com
`
`
`
`PATENT OWNER:
`
`Brenton Babcock
`Ted Cannon
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2brb@knobbe.com
`2tmc@knobbe.com
`
`Donald J. Coulman
`Tim Seeley
`INTELLECTUAL VENTURES MANAGEMENT
`dcoulman@intven.com
`tim@intven.com
`
`8
`
`
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