Trials@uspto.gov
`571-272-7822
`
`
`Paper 55
`Entered: November 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC., and
`BLIZZARD ENTERTAINMENT, INC.,
`Petitioner,
`
`v.
`
`AC TECHNOLOGIES S.A.,
`Patent Owner.
`____________
`
`Case IPR2015-01802
`Patent 7,904,680 B2
`____________
`
`
`Before MICHAEL R. ZECHER, MATTHEW R. CLEMENTS, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing and
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`Paper 55
`Entered: November 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC., and
`BLIZZARD ENTERTAINMENT, INC.,
`Petitioner,
`
`v.
`
`AC TECHNOLOGIES S.A.,
`Patent Owner.
`____________
`
`Case IPR2015-01802
`Patent 7,904,680 B2
`____________
`
`
`Before MICHAEL R. ZECHER, MATTHEW R. CLEMENTS, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing and
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2015-01802
`Patent 7,904,680 B2
`
`
`I.
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71(d), Amazon.com, Inc. and Blizzard
`Entertainment, Inc. (collectively, “Petitioner”) request rehearing of our Final
`Written Decision (Paper 32, “Dec.”). Paper 33 (“Req. Reh’g”); Dec. 13–21
`(analyzing obviousness). Specifically, Petitioner “submits that the Board
`overlooked Petitioners’ second basis for the [unpatentability] of Claims 2, 4,
`and 6 based upon the server-to-server portion of Rabinovich’s system.”
`Req. Reh’g 2. With our authorization (Paper 34), Patent Owner filed a
`Response to Petitioner’s Request for Rehearing. Paper 35. Patent Owner
`argued, inter alia, that granting Petitioner’s Request for Rehearing would
`violate Patent Owner’s due process rights. Paper 35, 5–8.
`On July 11, 2017, we issued an Order authorizing Patent Owner to file
`an additional brief addressing whether claims 2, 4, and 6 are unpatentable
`under 35 U.S.C. § 103 as obvious over Rabinovich under the construction of
`“computer unit” adopted in our Final Written Decision, and authorizing
`Petitioner to file a reply. Paper 36, 4–5.
`Patent Owner filed a brief (Paper 47, “PO Br.”) to which Petitioner
`filed a Reply (Paper 49, “Pet. Reply”). Petitioner also filed a Motion to
`Exclude. Paper 52. Patent Owner filed an Opposition (Paper 53), to which
`Petitioner filed a Reply (Paper 54).
`For the reasons set forth below, Petitioner’s Request for Rehearing is
`granted, and Petitioner’s Motion to Exclude is dismissed as moot.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`
`2
`
`
`
`
`IPR2015-01802
`Patent 7,904,680 B2
`
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was addressed previously in a motion, an opposition, or a
`reply. Id. With this in mind, we address the arguments presented by
`Petitioner.
`
`§ 103 2, 4, 6
`
`III. ANALYSIS
`The Petition presents three grounds of unpatentability:
`Reference
`Basis Claims challenged
`Rabinovich1
`§ 103 1–15
`Rabinovich (under Patent Owner’s
`§ 102 1, 3, 5, 7–15
`claim constructions)
`Rabinovich (under Patent Owner’s
`claim construction)
`Pet. 4–5. We instituted on the first and second grounds—i.e., claims 1–15
`under 35 U.S.C. § 103 as obvious over Rabinovich and claims 1, 3, 5, and
`7–15 under 35 U.S.C. § 102 as anticipated by Rabinovich. Paper 10 (“Dec.
`to Inst.”) 26. With respect to the third ground, we stated
`Petitioner argues that claims 2, 4, and 6 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Rabinovich. Pet. 56–57.
`Petitioner presents this as a third ground based upon an
`alternative claim construction of the term “computer unit.” We
`addressed Petitioner’s contentions in our analysis above of
`Ground 1 and determined that Petitioner has established a
`reasonable likelihood of showing that claims 2, 4, and 6 are
`unpatentable as obvious over Rabinovich under our construction
`of “computer unit.” As a result, this ground is moot.
`
`
`1 Rabinovich, M., et al., “Dynamic Replication on the Internet,” Work
`Project No. 3116-17-7006, AT&T Labs Research Technical Memorandum
`HA6177000-980305-01TM (March 5, 1998). Exhibit 1006.
`
`3
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`IPR2015-01802
`Patent 7,904,680 B2
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`Dec. to Inst. 25 (emphasis added). In our Final Written Decision, we
`determined that (1) Petitioner had not established that claims 1–15 of U.S.
`Patent No. 7,904,680 B2 (Ex. 1002, “the ’680 patent”) are unpatentable as
`obvious over Rabinovich; and (2) Petitioner had established that claims 1, 3,
`5, and 7–15 are unpatentable as anticipated by Rabinovich. Dec. 21–38
`(analyzing anticipation). Although the third ground incorporated
`Petitioner’s analysis from the second ground, and we were persuaded by the
`second ground, we did not determine that claims 2, 4, and 6 were
`unpatentable as obvious over Rabinovich. As a result, Petitioner “submits
`that the Board overlooked Petitioners’ second basis for the [unpatentability]
`of Claims 2, 4, and 6 based upon the server-to-server portion of
`Rabinovich’s system.” Req. Reh’g 2.
`In its additional brief, Patent Owner makes two arguments, which we
`address in turn.
`
`A. Jurisdiction
`Patent Owner argues that we lack jurisdiction to determine whether
`claims 2, 4, and 6 would have been obvious over Rabinovich because we
`denied institution of this ground as moot. PO Br. 1–2. Petitioner counters
`that Patent Owner’s argument exceeds the scope of the additional briefing
`we authorized in our Order (Paper 36) and argues that we may consider
`whether claims 2, 4, and 6 would have been obvious over Rabinovich.
`Our reviewing court has held that
`[d]ue process requires notice and an opportunity to be heard by
`an impartial decision-maker. Abbott Labs. v. Cordis Corp., 710
`F.3d 1318, 1328 (Fed. Cir. 2013). As formal administrative
`adjudications, IPRs are subject to the Administrative Procedure
`Act (“APA”). [ SAS Institute, Inc. v. ComplementSoft, LLC, 825
`F.3d 1341, 1351 (Fed. Cir. 2016)]. Under the APA, the Board
`
`4
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`IPR2015-01802
`Patent 7,904,680 B2
`
`
`must inform the parties of “the matters of fact and law asserted.”
`5 U.S.C. § 554(b)(3). It also must give the parties an opportunity
`to submit facts and arguments for consideration. Id. § 554(c).
`Each party is entitled to present oral and documentary evidence
` Id.
`in support of its case, as well as rebuttal evidence.
`§ 556(d).
`Intellectual Ventures II LLC v. Ericsson Inc., 686 Fed.Appx. 900 (Fed. Cir.
`2017). By instituting the first ground (i.e., the ground based on obviousness
`over Rabinovich), we put Patent Owner on notice that we would be
`determining whether dependent claims 2, 4, and 6 would have been obvious
`over Rabinovich. To the extent our characterization of the third ground (i.e.,
`another ground based on obviousness over Rabinovich) as “moot” in our
`Decision on Institution created any ambiguity, we have subsequently
`received briefing and evidence from both parties to address explicitly
`whether dependent claims 2, 4, and 6 would have been obvious over
`Rabinovich based on the construction of “computer unit” in our Decision on
`Institution and maintained in our Final Written Decision. Both parties have
`now had adequate notice and opportunity to be heard on that issue. As a
`result, we are not persuaded that we lack jurisdiction to determine whether
`claims 2, 4, and 6 would have been obvious over Rabinovich.
`B. Obviousness of claims 2, 4, and 6
`Dependent claims 2 and 4 depend from independent claims 1 and 3,
`respectively, and recite “wherein the at least one computer unit and the at
`least two data storage units are connected over a wireless network.”
`Dependent claim 6 depends from independent claim 5, and recites “wherein
`the at least one first means and the at least two second data storage means
`are connected over a wireless network.”
`
`5
`
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`IPR2015-01802
`Patent 7,904,680 B2
`
`
`Petitioner’s contentions in the third ground (i.e., a ground based on
`obviousness over Rabinovich) with respect to claims 2, 4, and 6 refer back to
`its contentions in the first ground (i.e., also a ground based on obviousness
`over Rabinovich). Pet. 56 (“For the same reasons set forth with respect to
`Claim 2 in Section VI(A)(1) above, [Claim 2] would also have been obvious
`under Patent Owner’s claim construction.”), 57 (“For the same reason set
`forth with respect to Claim 2, Claim [4/6] would have been obvious.”).
`Specifically, Petitioner contends that
`by 1999, wireless networks (either server/server connections or
`client/server connections) were well known to those of ordinary
`skill in the art and in common usage (Ex. 1005 at ¶ 262), as noted
`by the Examiner during the prosecution of the ’680 Patent.
`(Ex. 1009 at 88 (“However, Examiner takes Official Notice that
`such wireless networks were notoriously well known in the art
`and commonly used at the time of the invention, for the well
`known benefit of allowing communication between mobile units,
`or otherwise desirable to have disconnected from fixed
`wiring.”).) Accordingly, it would have been obvious to a person
`of ordinary skill in the art that the network of Rabinovich could
`be either wired or wireless.
`Pet. 36.
`Patent Owner identifies two types of wireless network—infrastructure
`and ad hoc—and argues that, “[b]ecause the Board construed both the
`“computer unit” and “data storage units” as hosts . . . the claims necessarily
`require a wireless connection between two hosts” and, therefore, “only the
`ad hoc wireless network meets the wireless network limitation of the
`dependent claims.” PO Br. 3. Specifically, Patent Owner argues that “the
`ad hoc network is the only one of the two types of wireless networks that
`connects hosts” and “the wireless connection in [an infrastructure] network
`is between a host and a client.” Id. at 3–4. Patent Owner then argues that
`
`6
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`IPR2015-01802
`Patent 7,904,680 B2
`
`Rabinovich “is designed to operate in wired networks” and, therefore, a
`person of ordinary skill in the art would not have used Rabinovich’s
`replication methods on an ad hoc wireless network. Id. at 4–6.
`Petitioner counters that the “wireless network” recited in the
`dependent claims is not limited to an ad hoc network and Rabinovich was
`not designed for use only in wired networks. Pet. Reply 1.
`Apart from the claims, the ’680 patent does not use the term “wireless
`network.” The specification uses the term “wireless” in only one paragraph:
`The individual components of the inventive system according to
`an embodiment of the present invention are connected with each
`other via data transmission means, which can comprise
`electrically conductive connections, and/or bus systems, and/or
`computer networks, and/or wired or wireless (mobile) telephone
`networks, and/or the Internet. The present invention is thus
`suited for each computer structure and arrangement as well as for
`each computer system which utilises distributed and networked
`means.
`Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited
`“wireless network” to an ad hoc network. Moreover, we are not persuaded
`by Patent Owner’s contention that our construction of “computer unit”
`requires limiting the recited “wireless network” to an ad hoc network.
`Specifically, dependent claims 2 and 4 each recite “wherein the at least one
`computer unit and the at least two data storage units are connected over a
`wireless network.” Dependent claim 6 recites a similar limitation. We
`construed “computing unit” to encompass any computing device. Dec. 6.
`We did not, as Patent Owner contends, “construe[] both the ‘computer unit’
`and ‘data storage units’ as hosts” (PO Br. 3). Although our construction
`encompasses Rabinovich’s hosts, it does not require the recited “computer
`unit” and “data storage units” to be hosts. Moreover, even assuming that
`
`7
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`IPR2015-01802
`Patent 7,904,680 B2
`
`both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require
`only that they be “connected over a wireless network,” not “between” or
`“directly connected to each other,” as Patent Owner contends (PO Br. 3).
`Thus, we are not persuaded by Patent Owner’s contention that two hosts
`“connected over a wireless network” necessarily requires a wireless
`connection “between” two hosts. Id. Based on our review of the ’680
`patent, we construe “connected over a wireless network” as broad enough to
`encompass a connection through a wireless hub.
`Because we determine that the “wireless network” recited in
`dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s
`argument that Rabinovich’s replication method would have been unsuitable
`for use over an ad hoc network does not persuasively rebut Petitioner’s
`showing.
`Having considered the arguments and evidence of both parties, we are
`persuaded that Petitioner has shown by a preponderance of the evidence that
`dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Rabinovich.
`
`IV. MOTION TO EXCLUDE
`Petitioner filed a Motion to Exclude Exhibit 2012 and any reference to
`Exhibit 2012 made by Patent Owner in its Brief. Paper 52, 1. Patent Owner
`filed an Opposition (Paper 53), to which Petitioner filed a Reply (Paper 54).
`We decline to assess the merits of Petitioner’s Motion to Exclude.
`Even without excluding the identified evidence, we have concluded that
`Petitioner has demonstrated, by a preponderance of the evidence, that claims
`2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is
`dismissed as moot.
`
`8
`
`
`
`IPR2015-01802
`Patent 7,904,680 B2
`
`
`V. ORDER
`For the reasons given, it is:
`ORDERED that Petitioner’s Request for Rehearing (Paper 33) is
`granted; and
`FURTHER ORDERED that claims 2, 4, and 6 of the ’680 patent are
`held unpatentable;
`FURTHER ORDERED that Petitioner’s Motion to Exclude is
`dismissed as moot; and
`FURTHER ORDERED that, because the analysis contained herein
`modifies our Final Written Decision, parties to the proceeding seeking
`judicial review of the decision must comply with the notice and service
`requirements of 37 C.F.R. § 90.2.
`
`
`9
`
`
`
`IPR2015-01802
`Patent 7,904,680 B2
`
`For PETITIONER:
`
`Daniel T. Shvodian
`Christopher L. Kelley
`Wing Liang
`PERKINS COIE LLP
`DShvodian@perkinscoie.com
`ckelley@perkinscoie.com
`wliang@perkinscoie.com
`
`For PATENT OWNER:
`
`Minghui Yang
`HARDY PARRISH YANG, LLP
`myang@hpylega.com
`
`Steven E. Tiller
`WHITEFORD TAYLOR & PRESTON LLP
`stiller@wtplaw.com
`
`Andrew G. DiNovo
`DINOVO PRICE ELLWANGER LLP
`adinovo@dpelaw.com
`
`
`
`
`10
`
`
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