Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 15
`Entered: April 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01872
`Patent 7,385,994 B2
`_______________
`
`
`
`Before BRYAN F. MOORE, BRIAN J. MCNAMARA,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 15
`Entered: April 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01872
`Patent 7,385,994 B2
`_______________
`
`
`
`Before BRYAN F. MOORE, BRIAN J. MCNAMARA,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2015-01872
`Patent 7,385,994 B2
`
`I. INTRODUCTION
`On March 14, 2016, we issued a Decision on Institution (Paper 10,
`“Dec.”) instituting an inter partes review of claims 1–4, 7, 11–14, 17, and
`20–25 of U.S. Patent No. 7,385,994 B2 (“the ’994 patent”), and declining to
`institute a review of claims 5, 6, 8–10, 15, 16, 18, and 19. Petitioner filed a
`Request for Rehearing (Paper 13, “Req.”), requesting reconsideration of our
`decision not to institute as to claims 5, 10, and 15. Req. 1.
`
`
`II. ANALYSIS
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). The burden of
`showing that the Decision should be modified is on Petitioner, the party
`challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he
`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, an opposition, or a reply.” Id.
`
`A. Claims 5 and 15
`In the Petition, Petitioner argued that claims 5 and 15 would have
`been obvious over Lu alone or Lu in combination with Pankaj. Pet. 40–44.
`As to Lu alone, we determined that Petitioner had not shown a reason why a
`skilled artisan would have added “an identification code” with “an identifier
`for the user” to Lu’s packets to “assist in tier allocation.” Dec. 26–27. We
`reached this conclusion because 1) Petitioner did not show that adding an
`identifier to a packet to aid in routing packets to their destinations also
`assisted in tier allocation; and 2) Lu’s packets already include a class field
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`IPR2015-01872
`Patent 7,385,994 B2
`for making distinctions based on subscription requirements (Lu’s technique
`of tier allocation) and Petitioner did not show a reason to add an identifier
`that would serve essentially the same purpose. Id. Petitioner does not
`challenge this aspect of our Decision on Institution.
`Nevertheless, Petitioner argues that we misapprehended or overlooked
`its arguments as to the combination of Lu and Pankaj. Req. 1. In the
`Petition, Petitioner included a claim chart mapping disclosure in Pankaj to
`claim 5 (and incorporated that mapping into its analysis of claim 15).
`Pet. 40–43. Specifically, Petitioner included quotes from paragraphs 7, 48,
`53, 68, 69, 103, 107, and 164 of Pankaj without further explanation. Id. at
`41–42. Petitioner then included a single paragraph of argument purporting
`to explain the applicability of paragraphs 8, 77, 144, and 159 of Pankaj, but
`not addressing the material cited in the claim chart. Id. at 44. Petitioner’s
`argument also cited to Dr. Lanning’s testimony, which merely repeated,
`nearly verbatim, the arguments in the Petition. Id. (citing Ex. 1006 ¶ 98).
`Specifically, the Petition argued that a skilled artisan would have
`incorporated unspecified “fairness metric values” into Lu’s packets so that
`each class of packets in Lu would be treated differently with respect to the
`fairness criteria and to allow differentiation in treatment for individual users
`or groups of users according to a classification scheme. Id. We determined
`that the Petition did not explain adequately which fairness criteria Petitioner
`asserted would have been incorporated from Pankaj into Lu or why a skilled
`artisan would have done so. Dec. 37.
`In the Request, Petitioner identifies the fairness metric values
`described in paragraph 76 of Pankaj (not cited in the Petition) and explains
`that these fairness metric values could be used in Lu’s packets so that
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`IPR2015-01872
`Patent 7,385,994 B2
`different groups of users could be served before others. Req. 5. According
`to Petitioner, a skilled artisan would have incorporated these values into the
`“class” fields of Lu’s data packets such that Lu’s system could make
`distinctions based on subscribers’ subscription requirements and identify the
`priorities of certain users. Id. at 5–6. This argument was not presented in
`the Petition. A request for rehearing, is not an opportunity for a party to
`introduce new argument, bolster insufficient argument, or mend gaps in the
`evidence relied on in the Petition. See 37 C.F.R. § 42.71(d). Because
`Petitioner did not make this argument in the Petition, we could not have
`misapprehended or overlooked it.
`In any case, as Patent Owner explained in the Preliminary Response
`(at 42–43), Lu already provides a mechanism (the class field) for making
`distinctions based on subscribers’ subscription requirements. Ex. 1002,
`5:21–32, 5:57–67; Dec. 27. Petitioner does not explain why a skilled artisan
`would have had reason to incorporate what appears to be a redundant
`feature. Thus, Petitioner’s argument is unpersuasive.
`The Request also argues that we overlooked the citations provided in
`the claim chart (Ex. 1003 ¶¶ 7, 48, 53, 68, 69, 103, 107, 164). Req. 4.
`Petitioner admits that it “did not explicitly discuss these disclosures from
`Pankaj in addressing claims 5 and 15,” but argues that they were self-
`explanatory. Id. at 7. Nevertheless, Petitioner provides two pages of
`argument explaining how the various parameters described in the chart could
`serve as identifiers and why a skilled artisan would have incorporated them
`into Lu’s packets. Id. at 6–7 (citing Ex. 1003 ¶¶ 53, 68, 103, 107, 110).
`These arguments cannot be gleaned from the quotations in the chart alone.
`
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`IPR2015-01872
`Patent 7,385,994 B2
`Because Petitioner’s arguments were not presented in the Petition, we could
`not have misapprehended or overlooked them.
`Even if we were to consider these arguments for the first time on
`request for rehearing, these arguments would not be persuasive. For
`example, Petitioner argues that Pankaj describes a Delivery Priority
`Parameter (“DPP”) that reflects the desired priority of each user and could
`be used in Lu’s system to identify each user’s desired criteria. Req. 6. As
`explained above, Lu already includes a class field corresponding to priority.
`Petitioner does not explain why a skilled artisan nevertheless would have
`incorporated what would have been a redundant feature. Nor does Petitioner
`cite to testimony or other persuasive evidence to support this new argument.
`As to the other parameters, Petitioner argues that “[p]arameters such as an
`index, weight, or subscript could be incorporated Lu’s data packets 620 to
`serve as identifiers and assist in tier allocation for similar reasons that the
`fairness metric values and DPPs could be incorporated into Lu’s data
`packets 620.” Id. at 7. Once again, Petitioner has provided no such reasons.
`Petitioner has not persuaded us that we misapprehended or overlooked
`its arguments as to claims 5 and 15.
`
`B. Claim 10
`Petitioner contends that we also misapprehended or overlooked its
`arguments as to claim 10, which recites “determining a tier of service for
`each user when a packet data session for each user commences.” In the
`Petition, Petitioner argued that Lu’s users send data packets to a network,
`which places the packets into queues until they can be transferred, and that a
`skilled artisan would have understood Lu’s packet session to commence
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`IPR2015-01872
`Patent 7,385,994 B2
`when its end users desire to communicate. Pet. 54. Petitioner further argued
`that Lu processes and distinguishes data transmitted by subscribers based on
`low, medium, and high classes (tiers of service) and that a skilled artisan
`would have recognized that Lu determines the class for a user at the time the
`packet data session for the user commences. Id. at 54–55. Petitioner cited to
`Mr. Lanning’s testimony, which merely repeated, nearly verbatim, the
`arguments in the Petition. Pet. 54–55 (citing Ex. 1006 ¶¶ 125–26).
`In the Decision on Institution, we agreed with Patent Owner that
`Petitioner’s arguments were too conclusory and unsupported by evidence to
`establish a reasonable likelihood of prevailing as to claim 10. Dec. 29–30.
`Petitioner contends that we misapprehended or overlooked its arguments and
`evidence in reaching this conclusion. Req. 8.
`Petitioner first argues that, while the ’994 patent does not define a
`“session” or explain when a session commences, its description nevertheless
`implies that a tier of service determination “presumably must occur when a
`‘data packet is transmitted . . . from a source node to a destination node’”
`and “a session may commence when the communication itself begins.”
`Id. at 9–10 (quoting Ex. 1001, 2:2–4). According to Petitioner, “[t]he ’994
`patent suggests that commencing a session may simply comprise
`transmitting ‘individual data packets for the duration of the particular data
`transmission.’” Id. at 10 (quoting Ex. 1001, 2:6–7). Thus, Petitioner
`concludes, “a session for the ’994 patent commences when an individual
`data packet is transmitted.” Id. at 10–11. These are claim construction
`arguments that should have been presented in the Petition. See 37 C.F.R
`42.104(b)(3) (“the petition must set forth: . . . How the challenged claim is to
`be construed.”). Because Petitioner did not present its claim construction
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`IPR2015-01872
`Patent 7,385,994 B2
`arguments in the Petition, we could not have misapprehended or overlooked
`them. Likewise, Petitioner’s expanded analysis of Lu based on this claim
`construction (Req. 10–12) could not have been misapprehended or
`overlooked as it was not presented in the Petition.
`Petitioner also argues that we overlooked its incorporation of
`arguments from its analysis of claim element 1(a) in the Petition.
`Specifically, Petitioner argued: “As previously discussed, Lu distinguishes
`subscribers based on tiers such as low, medium, and high classes.
`See discussion of claim 1(a) above.” Pet. 54–55. According to Petitioner,
`this swept in Petitioner’s quotation (reproduced in the claim chart for claim
`element 1(a)) of Lu, Exhibit 1002, at 2:37–49, which, inter alia, refers to
`“video display quality, multimedia capability, or end-to-end transmission
`delay.” Req. 11–12. Petitioner argues that these are references to video and
`multimedia sessions. Id. at 12. We are not persuaded that Petitioner’s brief
`reference to Lu distinguishing subscribers based on tiers, accompanied by a
`citation to Petitioner’s claim 1(a) analysis (which itself does not discuss
`sessions or the relevance of video and multimedia), is sufficient articulation
`of the argument now made in the Request. Rather, this is yet another new
`argument made in the Request, and one that we could not have
`misapprehended or overlooked.
`Petitioner has not persuaded us that we misapprehended or overlooked
`its arguments as to claim 10.
`
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`IPR2015-01872
`Patent 7,385,994 B2
`
`III. CONCLUSION
`Petitioner has not shown that we abused our discretion in declining to
`institute an inter partes review of claims 5, 10, and 15. Accordingly,
`Petitioner’s request for rehearing is denied.
`
`
`IV. ORDER
`Petitioner’s Request for Rehearing is denied.
`
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`IPR2015-01872
`Patent 7,385,994 B2
`
`PETITIONER:
`J. Robert Brown, Jr.
`Charles Rogers
`CONLEY ROSE, P.C.
`rbrown@dfw.conleyrose.com
`crogers@conleyrose.com
`
`
`
`PATENT OWNER:
`
`Lori Gordon
`Bryon Pickard
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`lgordon-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`
`James Hietala
`Tim Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tim@intven.com
`
`
`
` 9
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