Trials@uspto.gov
`571-272-7822
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`Paper 49
`Date: November 23, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`JI-SOO LEE,
`Patent Owner.
`_______________
`
`IPR2016-00045
`Patent 6,233,518 B1
`_______________
`
`
`
`Before PATRICK R. SCANLON, DANIEL J. GALLIGAN, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing of Final Written Decision
`on Remand
`37 C.F.R. § 42.71(d)(2)
`
`
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`

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`IPR2016-00045
`Patent 6,233,518 B1
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`I.
`INTRODUCTION
`On July 22, 2020, we issued a Final Written Decision on Remand
`determining challenged claims 45 and 46 of U.S. Patent 6,233,518 B1 (“the
`’518 Patent”) to be unpatentable. Paper 43 (the “Final Decision” or “Final
`Dec.”). Patent Owner subsequently requested, and was granted, a 30-day
`extension of the deadline for filing a request for rehearing, which reset the
`deadline to September 21, 2020. Paper 46.
`On September 16, 2020, Patent Owner filed a Request for Rehearing
`of our Final Decision. Paper 48 (“Rehearing Request” or “Reh. Req.”).
`Patent Owner seeks reconsideration of our determination that claims 45
`and 46 of the ’518 Patent were shown to be unpatentable over Yamada and
`Rosenquist. For the reasons explained below, Patent Owner’s Rehearing
`Request is denied.
`
`II.
`LEGAL STANDARD
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing
`“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.
`
`III. ANALYSIS
`Patent Owner argues that our Final Decision overlooked several claim
`terms and related claim constructions, misapprehended the disclosure of
`Rosenquist, and erroneously credited testimony from Petitioner’s declarant.
`Reh. Req. 3–12. None of these arguments is persuasive.
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`IPR2016-00045
`Patent 6,233,518 B1
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`A. Patent Owner Fails to Demonstrate that the Final Written
`Decision Overlooked Claim Language or Claim Constructions
`Patent Owner argues that the Final Decision overlooked three separate
`claim terms and corresponding constructions. We address each of these
`arguments in turn.
`“receiving a traffic information map which includes . . . a
`plurality of time-variant image vector entities”
`According to Patent Owner, our Decision on Institution correctly
`determined that Yamada’s system does not receive image vector entities
`under our construction of that claim term. Reh. Req. 4. In contrast, Patent
`Owner contends that our Final Decision “discussed only the three claimed
`components” of the image vector entity limitation (i.e., “attribute-
`designating statement, “shape-designating statement,” and “position-
`designating statement”), and “ignored other technically meaning features”
`contained in our construction of the term “image vector entities.” Id. at 4–5.
`This argument is not persuasive.
`Our Decision on Institution was a preliminary decision issued on an
`incomplete evidentiary record; it was not a final determination as to the
`patentability of any claim. Paper 7, 2. Thus, it is not surprising that our
`Final Decision differs in certain respects from our Decision on Institution;
`these differences do not demonstrate error. Moreover, inter partes reviews
`are adversarial proceedings in which the parties are required to spell out
`their arguments. After an inter partes review was instituted, Patent Owner
`was required to set forth all of its arguments for patentability in the Patent
`Owner Response (Paper 37). Our scheduling order made clear that any
`arguments not raised in the Patent Owner Response would be deemed
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`IPR2016-00045
`Patent 6,233,518 B1
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`waived. See Paper 33, 5. Our rules do not permit Patent Owner to remain
`silent during trial, and then raise an issue for the first time in a rehearing
`request. 37 C.F.R. § 42.71(d) (requiring Patent Owner to specify where each
`argument in its Rehearing Request “was previously addressed in a motion,
`an opposition, or a reply”).
`Patent Owner asserts that we focused on certain portions of our
`construction of the claim term “image vector entity” and gave short shrift to
`other portions. Reh. Req. 4. But the Rehearing Request does not identify
`anywhere in the Response where Patent Owner made arguments based on
`the allegedly overlooked portions of our claim construction.1 Moreover,
`after Patent Owner filed its Response, Petitioner filed a Reply and
`supporting testimony explaining how the combination of Yamada and
`Rosenquist would have taught or suggested all aspects of our construction of
`the “image vector entity” limitation. See Paper 38, 4–13; Ex. 1021 ¶¶ 3–22.
`Patent Owner elected not to file a sur-reply as it was permitted to do and,
`thus, did not dispute these contentions in any of its authorized briefing
`during trial.2 See Paper 33 (Scheduling Order), 6.
`
`1 Patent Owner asserts that it “restated the Board’s conclusion of the
`institution decision” on Page 41 of its Response. Reh. Req. 4 (citing Paper
`37, 41). But our Final Decision applied the same claim construction that we
`adopted in our Institution Decision. See Paper 7, 7–10 (construing “image
`vector entity”); Paper 43, 11, 25 (applying the same claim construction). In
`addition, page 41 of the Patent Owner Response does not set forth the
`argument Patent Owner now attempts to raise on rehearing.
`2 The record establishes that Patent Owner was represented by counsel
`throughout the remand proceeding, and was well aware of the option to file a
`sur-reply. Patent Owner’s remand counsel entered its first appearance on
`August 16, 2019, when it filed updated mandatory notices (Paper 35), a
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`Patent Owner, having failed to raise its present arguments during trial,
`may not do so in a rehearing request. See Paper 33, 5; 37 C.F.R. § 42.71(d).
`Our Final Decision could not have misapprehended or overlooked arguments
`that Patent Owner declined to raise during trial, and that were therefore
`waived.
`
`“a basic map . . . includes . . . time-invariant image vector
`entities …”
`Patent Owner next asserts that our Final Decision overlooked the
`claim term “a basic map” that includes “time-invariant image vector
`entities.” Reh. Req. 5–7. The Rehearing Request cites repeatedly to the
`challenged ’518 Patent (Ex. 1001) and Yamada (Ex. 1007), but fails to cite
`to any brief in which Patent Owner allegedly raised this argument during
`trial. See id. Moreover, the portion of Patent Owner’s Response directed to
`the combination of Yamada and Rosenquist never addresses or discusses this
`
`
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`power of attorney (Paper 36), and the Patent Owner Response (Paper 37).
`The due date for Patent Owner to file a sur-reply was October 11, 2019.
`Paper 33, 7. On November 12, 2019, after all briefing was complete (see
`Paper 33, 7), Patent Owner’s counsel filed a motion to withdraw. Paper 42.
`This motion made clear that Patent Owner had been informed of all relevant
`due dates, including the due date for a sur-reply. Paper 42, 7 (“[Counsel]
`has informed Patent Owner of the upcoming due dates in this matter,
`Petitioner’s filings, Patent Owner’s opportunity to file a sur-reply, the due
`date of filing such sur-reply, and Petitioner’s making of Petitioner’s expert
`available for deposition.”). We did not grant the motion to withdraw (see
`Paper 44) until after we issued our Final Written Decision (Paper 43). Since
`the motion was granted, Patent Owner has elected to proceed pro se. See
`Paper 45, 2.
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`claim limitation, much less argues that it was not taught or suggested by the
`cited references. See Paper 37, 35–41. And, as discussed above, Patent
`Owner declined to file a sur-reply. Accordingly, this argument also was
`waived. See Paper 33, 5. Our Final Decision could not have
`misapprehended or overlooked an argument for patentability that Patent
`Owner failed to make during trial. See 37 C.F.R. § 42.71(d).
`“a shape-designating statement . . . used to draw the shape of a
`real entity”
`Patent Owner’s argument regarding the limitation “shape-designating
`statement” fails for similar reasons. In our Final Decision, we determined
`that Rosenquist’s traffic message channel (TMC) messages taught this claim
`limitation. Final Dec. 24–25. On rehearing, Patent Owner asserts that
`Yamada does not teach shape-designating statements, and that Rosenquist’s
`TMC messages do not cure this deficiency. Reh. Req. 7–8.
`Patent Owner’s argument regarding Yamada is irrelevant because our
`Final Decision relied on Rosenquist. See Final Dec. 24–25. And the
`Rehearing Request fails to cite to any brief in which Patent Owner argued
`during trial that Rosenquist does not teach a shape-designating statement.
`See Reh. Req. 7–8.
`The Patent Owner Response does contain a generalized and
`conclusory assertion that “[n]othing in Yamada or Rosenquist teaches or
`suggests ‘receiving . . . a traffic state map . . . include[ing] a plurality of
`time-variant image vector entities . . . include[ing] an attribute-designating
`statement, an shape-designating statement and a position-designating
`statement.’” Paper 37, 38–39 (alterations and ellipses added by Patent
`Owner). But Patent Owner’s explanation of this assertion focuses on the
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`IPR2016-00045
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`attribute-designating statement limitation. See id. at 38–41. Patent Owner’s
`Response never addresses the issue of whether Rosenquist’s TMC messages
`would have taught or suggested the separate shape-designating statement
`claim limitation.3 See id. Because Patent Owner failed to raise this
`argument in its Response, and declined to file a sur-reply, this argument was
`waived and is not a proper basis for a request for rehearing. See Paper 33, 5;
`37 C.F.R. § 42.71(d).
`
`B. Patent Owner Fails to Demonstrate that the Final Written
`Decision “Totally Misapprehended Rosenquist”
`Patent Owner also argues that our Final Written Decision erroneously
`accepted explanations in Petitioner’s Reply regarding why Rosenquist
`teaches or suggests the claim limitations “attribute-designating” and “shape-
`designating statement.” Reh. Req. 8–9. Patent Owner’s Rehearing Request
`cites multiple portions of Rosenquist (Ex. 1008) that allegedly contradict or
`undermine Petitioner’s explanations. See id. at 9–10.
`But the Rehearing Request once again fails to cite to any brief in
`which Patent Owner raised these arguments during trial. See id. at 8–10.
`Patent Owner did argue in its Response that Rosenquist’s TMC messages
`lacked attribute-designating statements because they did not specify the
`colors of image vector entities. See Paper 37, 39–40. But our Final Written
`Decision rejected this argument, based in part on responsive arguments from
`Petitioner’s Reply (Paper 38) and testimony from the declarations of Dr.
`
`3 Patent Owner argued that Rosenquist’s TMC messages lacked attribute-
`designating statements, but Patent Owner never asserted that these TMC
`messages lacked shape-designating statements. See Paper 37, 39–40.
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`IPR2016-00045
`Patent 6,233,518 B1
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`Michalson that Petitioner filed with its Petition and Reply (Exs. 1003, 1021).
`See Final Dec. 20–22 (citing Paper 38, 8–9; Ex. 1003 ¶¶ 136, 146, 150; Ex.
`1021 ¶¶ 8, 11). In so doing, we credited the testimony from Paragraph 11 of
`Exhibit 1021, finding that this testimony was consistent with the disclosure
`of Rosenquist, and noted that Patent Owner never rebutted this testimony,
`declined to depose Dr. Michalson, and elected not to dispute this testimony
`in a sur-reply. See Final Dec. 22–23 & n. 4.
`To the extent Patent Owner’s Rehearing Request re-raises arguments
`that we rejected in our Final Decision, Patent Owner has failed to
`demonstrate that we misapprehended or overlooked those arguments or
`supporting evidence. The remaining arguments regarding Rosenquist—
`including Patent Owner’s argument that Rosenquist does not teach or
`suggest a shape-designating statement—were waived and may not now be
`raised in a rehearing request. See Paper 33, 5; 37 C.F.R. § 42.71(d).
`
`C.
`
`Patent Owner Fails to Demonstrate that the Final Written
`Decision “Erred in Evaluating the Testimony of Petitioner’s
`Expert Witness”
`Patent Owner’s final argument on rehearing is that our Final Decision
`erred in crediting testimony from Petitioner’s declarant, Dr. Michalson, that
`“a [person of ordinary skill in the art] would have understood that … the
`color designations used to draw colored symbols on Rosenquist’s client
`device would have been determined at the server side and transmitted to
`(and received by) the client device as image information.” Reh. Req. 10–12.
`This testimony comes from Paragraph 11 of the declaration submitted in
`support of Petitioner’s Reply (see Ex. 1021 ¶ 11), and is the same unrebutted
`testimony discussed above (see supra § III.B). As we have already
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`explained, we credited Paragraph 11 of Exhibit 1021 because it was
`consistent with the disclosure of Rosenquist, and because this testimony was
`unrebutted during trial. See supra § III.B; Final Dec. 22–23 & n. 4.
`The Rehearing Request does not identify any paper in which Patent
`Owner previously raised the rebuttal arguments it now raises on rehearing.
`See Reh. Req. 10–12. Patent Owner could have raised these arguments in a
`sur-reply brief, but declined to do so. See Paper 33, 6. It is now too late.
`See Paper 33, 5; 37 C.F.R. § 42.71(d).
`To the extent this portion of Patent Owner’s Rehearing Request re-
`raises arguments that we rejected in our Final Decision, Patent Owner has
`failed to demonstrate that we misapprehended or overlooked those
`arguments or supporting evidence. The remaining arguments regarding Dr.
`Michalson’s testimony were waived and may not be raised in a rehearing
`request. See Paper 33, 5; 37 C.F.R. § 42.71(d).
`
`IV. ORDER
`For the foregoing reasons, it is hereby ORDERED that Patent
`Owner’s Request for Rehearing is denied.
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`IPR2016-00045
`Patent 6,233,518 B1
`
`
`FOR PETITIONERS:
`
`Michael T. Hawkins
`Christopher C. Hoff
`Patrick J. Bisenius
`FISH & RICHARDSON P.C.
`IPR19473-0345IP1@fr.com
`ptabinbound@fr.com
`
`
`FOR PATENT OWNER:
`
`Ji-Soo Lee
`PATENT OWNER
`jisoo.lee520@gmail.com
`
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