Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`Entered: November 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`____________
`
`Case IPR2016-00602
`Patent 8,887,308 B2
`____________
`
`
`
`
`
`
`
`Before GLENN J. PERRY, RAMA G. ELLURU, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 13
`Entered: November 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`____________
`
`Case IPR2016-00602
`Patent 8,887,308 B2
`____________
`
`
`
`
`
`
`
`Before GLENN J. PERRY, RAMA G. ELLURU, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2016-00602
`Patent 8,887,308 B2
`
`
`Unified Patents Inc. (“Petitioner”) filed a Request for Rehearing
`
`(Paper 12, “Req. Reh’g”) of our Decision Denying Institution of Inter Partes
`
`Review (Paper 11, “Institution Decision” or “Inst. Dec.”) of U.S. Patent No.
`
`8,887,308 B2 (“the ’308 patent”). Petitioner seeks rehearing of our
`
`determination not to institute inter partes review of the ’308 patent over
`
`grounds based on DeMello1 as well as grounds based on Pestoni.2 See Req.
`
`Reh’g 1–2. In our Institution Decision, we determined that Petitioner had
`
`not explained sufficiently its arguments that DeMello teaches the recited
`
`“credential assigned to the apparatus of (a),” (Inst. Dec. 9–10), or that
`
`Pestoni teaches the recited step of “requesting the query data, from the
`
`apparatus of (a),” (id. at 12–15). Petitioner asserts that we “overlooked and
`
`misapprehended” the meaning of “credential.” Req. Reh’g 4 (emphasis
`
`omitted). Petitioner also asserts that we overlooked its obviousness
`
`argument with respect to the recited “requesting” step. Id. at 8. For the
`
`reasons that follow, Petitioner’s request for rehearing is denied.
`
`
`
`I. BACKGROUND
`
`The Petition challenged claim 1 of the ’308 patent on the following
`
`grounds. Pet. 3, 19–52.
`
`Reference(s)
`DeMello
`DeMello, Wieder,3 and “the admitted prior art”
`Pestoni
`Pestoni, Wieder, and “the admitted prior art”
`
`Basis
`§ 102
`§ 103
`§ 102
`§ 103
`
`
`1 DeMello, U.S. Patent No. 6,891,953 B1, issued May 10, 2005 (Ex. 1006).
`2 Pestoni, U.S. Publ’n No. US 2008/0313264 A1, published Dec. 18, 2008
`(Ex. 1007).
`3 Wieder, U.S. Patent No. 8,001,612 B1, issued Aug. 16, 2011 (Ex. 1008).
`
`2
`
`
`
`IPR2016-00602
`Patent 8,887,308 B2
`
`For the asserted grounds based on DeMello, Petitioner relied solely on
`
`DeMello as teaching the recited “credential assigned to the apparatus of (a).”
`
`Pet. 30–33. Similarly, for the asserted grounds based on Pestoni, Petitioner
`
`relied solely on Pestoni as teaching the recited step of “requesting the query
`
`data, from the apparatus of (a).” Id. at 48–49. We denied institution of these
`
`asserted grounds because we were not persuaded by Petitioner’s arguments
`
`regarding the teachings of DeMello or Pestoni.
`
`
`
`II. STANDARD OF REVIEW
`
`When rehearing a decision, the Board reviews the decision for an
`
`abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs
`
`when a “decision [i]s based on an erroneous conclusion of law or clearly
`
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.,
`
`Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir.
`
`1988). “The burden of showing that a decision should be modified lies with
`
`the party challenging the decision.” Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the
`
`dissatisfied party must (1) “specifically identify all matters the party believes
`
`the Board misapprehended or overlooked” and (2) identify the place “where
`
`each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s
`
`arguments with these principles in mind.
`
`
`
`III. ANALYSIS
`
`As an initial matter, we note that, in the “Relief Requested” section of
`
`Petitioner’s Request for Rehearing, Petitioner submits only that it “requests
`
`3
`
`
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`IPR2016-00602
`Patent 8,887,308 B2
`
`rehearing of the Decision and institution of an inter partes review (‘IPR’)
`
`based on obviousness over Pestoni in view of Wieder.” Req. Reh’g 2. By
`
`contrast, Petitioner later presents arguments about the recited “credential,”
`
`which our Institution Decision addressed specifically with respect to
`
`DeMello. Id. at 3–8; Inst. Dec. 9–10. Petitioner also presents arguments
`
`about the recited step of “requesting the query data,” which our Decision
`
`addressed specifically with respect to Pestoni. Req. Reh’g 12; Inst. Dec. 12–
`
`15. It is not clear whether Petitioner requests rehearing as to only grounds
`
`based on Pestoni. We give Petitioner the benefit of the doubt, however, and
`
`assume that Petitioner intended to request rehearing on both the grounds
`
`based on DeMello and the grounds based on Pestoni. Accordingly, we
`
`address grounds based on both DeMello and Pestoni.
`
`
`
`A. “credential assigned to the apparatus of (a)”
`
`In our Institution Decision, we agreed with Patent Owner that the
`
`specification of the ’308 patent describes the recited “credential” as an API
`
`Key that “[is] usually embedded in the source code of the apparatus,” which
`
`“uses the API Key to establish a data exchange session with the API.” Inst.
`
`Dec. 9 (citing Ex. 1003, 10:51–66); Prelim. Resp. 28–29.
`
`Petitioner now contends that we “overlooked and misapprehended the
`
`meaning of ‘credential.’” Req. Reh’g 3 (emphasis omitted). In particular,
`
`Petitioner points out that the portion of the ’308 patent on which we relied
`
`“nowhere uses the term ‘credential.’” Id. Petitioner further points out that
`
`“[t]he term ‘credential’ . . . is everywhere consistently used in the ’308
`
`Patent to refer to ‘membership credentials’ or ‘password credentials’ which
`
`are provided by the ‘excelsior enabler’ (user).” Id. We are unpersuaded by
`
`4
`
`
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`IPR2016-00602
`Patent 8,887,308 B2
`
`Petitioner’s contention. While the portion of the ’308 patent on which we
`
`relied does not use the term “credential,” it describes the API Key as a part
`
`of an “access authentication system.” Ex. 1003, 10:52–53. Given this
`
`description, the API Key may satisfy the recited credential, even though it is
`
`not expressly referred to as a “credential” in the specification of the ’308
`
`patent.
`
`Petitioner further contends that the passage “following immediately
`
`after the API discussion [in the ’308 patent] quoted by Patent Owner, makes
`
`it clear that the API key is different from the credential.” Req. Reh’g 4
`
`(citing Ex. 1003, 11:8–14). We are unpersuaded by Petitioner’s contention.
`
`As Petitioner points out, this passage, as well as several other passages
`
`throughout the ’308 patent, refers to “membership credentials.” Id. at 3–6.
`
`That does not mean, however, that these membership credentials describe
`
`the recited credential. Indeed, the membership credentials in the ’308 patent
`
`are assigned to a user. See id. The recited credential, on the other hand,
`
`must be assigned to an apparatus.
`
`Petitioner further contends that “[t]he claim language, interpreted in
`
`view of the specification, refers to a ‘credential assigned to the apparatus of
`
`(a)’ as a user membership credential submitted through the user device
`
`(apparatus), and thereby ‘assigned’ to the apparatus.” Id. at 6. We are
`
`unpersuaded by Petitioner’s contention. As discussed above, the ’308 patent
`
`describes both credentials assigned to a user and credentials assigned to an
`
`apparatus. Claim 1 expressly requires the recited credential to be assigned to
`
`an apparatus, not a user. This is supported by the specification of the ’308
`
`patent, which describes an API Key that “[is] usually embedded in the
`
`5
`
`
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`IPR2016-00602
`Patent 8,887,308 B2
`
`source code of the apparatus,” which “uses the API Key to establish a data
`
`exchange session with the API.” Ex. 1003, 10:51–66.
`
`Petitioner further contends that the Petition defined the claim term
`
`“credential” as “any information or data that permits access to a service,
`
`such as a user name, phrase, e-mail address, certificate, other login or
`
`password.” Req. Reh’g 6; Pet. 17–18. We are not persuaded by Petitioner’s
`
`contention. As Patent Owner argued in its Preliminary Response,
`
`Petitioner’s proposed construction “include[s] credentials assigned to a user
`
`when the claim term language itself specifically limits the credential as one
`
`assigned to the apparatus.” Prelim. Resp. 20–21. Given that claim 1
`
`requires the “credential” to be assigned to an apparatus, rather than a user,
`
`Petitioner has not explained persuasively why we should have adopted its
`
`proposed construction of the recited credential.
`
`Petitioner further contends that Patent Owner’s discussion of the
`
`prosecution history for the ’308 patent is misleading. We are not persuaded
`
`by Petitioner’s contention, however, because we did not rely on Patent
`
`Owner’s discussion of the prosecution history in our Institution Decision.
`
`Lastly, Petitioner contends that:
`
`[C]laim 1 must be interpreted, as was done in the claim
`construction in the Petition, to consider the whole point of the
`’308 Patent – an existing (unmodified) password, e-mail, etc. is
`used to verify the user by a 3rd party (e.g., an Amazon or
`Facebook login), and then a verification token or “query data”
`(e.g., Facebook ID) is written to an “authorization object” (e.g.,
`media metadata) to restrict the digital content to the users with
`such password, e-mail, etc.
`
`Req. Reh’g 8. We are unpersuaded by Petitioner’s contention. Using a
`
`password or e-mail to verify a user is only a part of the claimed invention of
`
`6
`
`
`
`IPR2016-00602
`Patent 8,887,308 B2
`
`the ’308 patent. See Ex. 1003, 14:42–43 (claim 1 reciting “verification data
`
`provided by at least one user”). As discussed above, claim 1, which defines
`
`the invention of the ’308 patent, further recites a “credential assigned to the
`
`apparatus of (a).” Petitioner does not give sufficient weight to this part of
`
`the invention, which uses a credential (e.g., API Key) to verify an apparatus.
`
`
`
`B. “requesting the query data, from the apparatus of (a)”
`
`In our Institution Decision, we determined that Petitioner did not
`
`demonstrate a reasonable likelihood of prevailing on its assertion that claim
`
`1 would have been obvious over Pestoni, Wieder, and the admitted prior art
`
`because “we [we]re not persuaded that Petitioner ha[d] provided adequately
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness” as to the recited step of “requesting the query
`
`data, from the apparatus (a).” Inst. Dec. 14–15. We noted that Petitioner did
`
`not, for example, proffer any reason for combining Pestoni and any other
`
`patent or printed publication to arrive at the claimed invention. Id. at 14.
`
`Petitioner now contends that we “overlooked the obviousness
`
`argument for ‘requesting the query data.’” Req. Reh’g 8 (emphasis
`
`omitted). According to Petitioner, “[t]he Petition certainly offers reasons to
`
`combine with Wieder for the token database . . . , but [the requesting step]
`
`doesn’t require combination because it is obvious from Pestoni alone.” Id.
`
`at 9. We disagree with Petitioner’s contention. As we noted in our
`
`Institution Decision, an obviousness analysis requires “‘some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.’” Inst. Dec. 14 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006)). Even if the recited requesting step “doesn’t require
`
`7
`
`
`
`IPR2016-00602
`Patent 8,887,308 B2
`
`combination” with another patent or printed publication, Petitioner did not
`
`explain sufficiently why one of ordinary skill in the art would have
`
`considered modifying Pestoni to arrive at the claimed invention. See id. For
`
`instance, Petitioner merely asserted, without further explanation, that “it
`
`would be obvious to one of skill in the art to implement Pestoni with a
`
`request and corresponding reception.” Pet. 49. Accordingly, we are not
`
`persuaded that Petitioner has provided adequately articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness as
`
`to the recited requesting step. See Kahn, 441 F.3d at 988.
`
`Petitioner further contends that the recited requesting step “is certainly
`
`obvious because it is explicitly mentioned as an option in Pestoni.” Req.
`
`Reh’g 9. In support of this contention, Petitioner points out that “[t]he
`
`Federal Circuit has held that trying one of multiple options mentioned in a
`
`reference is obvious.” Id. (citing Bayer Schering Pharam A.G. v. Barr
`
`Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009). This is a new argument,
`
`however, which does not address what was overlooked or misapprehended
`
`in our Institution Decision, and is not appropriate in a request for rehearing.
`
`See 37 C.F.R. § 42.71(d).
`
`We, nonetheless, find Petitioner’s contention unpersuasive. Claim 1
`
`recites “requesting the query data, from the apparatus of (a), . . . wherein the
`
`query data request is a request for the at least one verified web service
`
`[account] identifier.” As explained in our Institution Decision, “the device
`
`(apparatus of (a)) in Pestoni sends to the license server a content license
`
`request (query data), which includes various parameters such as a domain ID
`
`(web service account identifier).” Inst. Dec. 12–13 (citing Ex. 1007 ¶ 72).
`
`That is, Pestoni describes receiving the domain ID from the device.
`
`8
`
`
`
`IPR2016-00602
`Patent 8,887,308 B2
`
`Petitioner asserts that the recited requesting step “is explicitly mentioned as
`
`an option in Pestoni,” but Petitioner does not direct us to any portion of
`
`Pestoni that discusses requesting the domain ID from the device. See Req.
`
`Reh’g 9. Instead, Petitioner points out that we noted in our Institution
`
`Decision that “Pestoni describes the content license request (query data)
`
`from the device as ‘optionally’ including the domain ID (web service
`
`account identifier).” See Req. Reh’g 9; Inst. Dec. 13. That the content
`
`license request optionally includes the domain ID does not suggest that the
`
`license server may request the domain ID; rather, it suggests that the license
`
`server may receive the domain ID.
`
`Petitioner further contends that “the Petition articulates that the
`
`generated content license of Pestoni has the domain ID, which would make
`
`it obvious to obtain the domain ID from the ‘apparatus of (a),” which is the
`
`apparatus providing the request for digital content.” Req. Reh’g 9. We are
`
`unpersuaded by Petitioner’s contention. As discussed above, Petitioner has
`
`not directed us to any portion of Pestoni that teaches or suggests requesting
`
`the domain ID from the device. Moreover, for the reasons discussed above,
`
`we are not persuaded that Petitioner has provided adequately articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness as to the recited requesting step. See Kahn, 441 F.3d at 988.
`
`Petitioner further contends that our Institution Decision “also
`
`overlooks the discussion of element c), which is somewhat redundant with
`
`element d).” Req. Reh’g 10. Element c) recites, in part, “wherein the data
`
`exchange session is also capable of an exchange of query data, wherein the
`
`query data comprises at least one verified web service account identifier,”
`
`while element d) refers to the recited requesting step (i.e., “requesting the
`
`9
`
`
`
`IPR2016-00602
`Patent 8,887,308 B2
`
`query data, from the apparatus of (a), . . . wherein the query data request is a
`
`request for the at least one verified web service [account] identifier”). See
`
`Pet. 48–49. According to Petitioner, “to the extent the request isn’t explicit,
`
`it is certainly obvious” based on the cited portions of Pestoni on which
`
`Petitioner relies for element c). Req. Reh’g 11. We disagree with
`
`Petitioner’s contention. As with element d), the cited portions of Pestoni on
`
`which Petitioner relies for element c) teach receiving the domain ID, not
`
`requesting the domain ID. See id.; Req. Reh’g 10–11. Moreover, we are not
`
`persuaded that Petitioner has provided adequately articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness as
`
`to element c). See Kahn, 441 F.3d at 988.
`
`We note that Petitioner asserts that “[t]he opinion of expert Mr.
`
`Cherukuri is that, upon reading Pestoni, one of skill in the art would
`
`understand that the content license generator 260 [of the license server]
`
`requests and receives the domain ID before generating the content license.”
`
`Req. Reh’g 11. Petitioner further contends that “[t]his demonstrates that one
`
`of skill in the art would find such a request to be obvious from Pestoni.” Id.
`
`(citing Ex. 1009 ¶¶ 98–101). Again, we are not persuaded that Petitioner or
`
`Mr. Cherukuri has provided adequately articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness as to
`
`the recited requesting step. See Kahn, 441 F.3d at 988.
`
`Lastly, Petitioner contends that, “[a]s presented in the Petition, each
`
`element is shown by, and obvious in light of, Pestoni alone.” Req. Reh’g
`
`12. For the reasons discussed above with respect to the recited requesting
`
`step, we disagree with Petitioner’s contention.
`
`
`
`10
`
`
`
`IPR2016-00602
`Patent 8,887,308 B2
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner has not demonstrated that we
`
`abused our discretion by not instituting inter partes review of the challenged
`
`claim of the ’308 patent on grounds that were based on DeMello or Pestoni.
`
`
`
`V. ORDER
`
`Accordingly, it is ORDERED that Petitioner’s request for rehearing is
`
`11
`
`denied.
`
`
`
`PETITIONER:
`
`Kevin Jakel
`kevin@unifiedpatents.com
`
`Scott Kolassa
`skolassa@kilpatricktownsend.com
`
`Paul Haughey
`phaughey@kilpatricktownsend.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Clare Frederick
`clare@richardspatentlaw.com
`
`Patrick Richards
`patrick@richardspatentlaw.com
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