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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 51
`Entered: October 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`
`Case IPR2016-006221
`Patent 7,149,511 B1
`
`Before JUSTIN T. ARBES, PATRICK R. SCANLON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge HUDALLA.
`
`Opinion Dissenting filed by Administrative Patent Judge ARBES.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`1 Case IPR2016-00616 has been consolidated with this proceeding.
`1
`
`
`
`
`IPR2016-00622
`Patent 7,149,511 B1
`
`I. INTRODUCTION
`On September 19, 2017, Patent Owner, Rosetta-Wireless Corporation
`(“Rosetta”), filed a request for rehearing (Paper 49, “Req. Reh’g”) of our
`Final Written Decision (Paper 48, “Final Dec.), in which the Majority held
`that Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`Apple Inc. (collectively “Petitioner”) had shown by a preponderance of the
`evidence the unpatentability of claims 1–10, 19–22, 58–65, and 68–71 of
`U.S. Patent No. 7,149,511 B1 (Ex. 1001, “the ’511 patent”).2 Final Dec. 72–
`73. For the reasons explained below, Rosetta’s request for rehearing is
`denied.
`
`
`II. ANALYSIS
`The party requesting rehearing has the burden of showing the decision
`should be modified, which includes specifically identifying all matters the
`party believes we misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply. See
`37 C.F.R. § 42.71(d).
`
`Purported Violation of 35 U.S.C. § 318(a)
`Rosetta’s first argument relates to our Decision on Institution in
`IPR2016-00616. Rosetta highlights that Petitioner challenged claims 7 and
`64 of the ’511 patent over Kimura in IPR2016-00616, but we did not
`institute inter partes review on the Kimura ground as to these claims. Req.
`Reh’g 2. As a result, Rosetta contends our Final Written Decision violates
`
`A.
`
`
`2 Judge Arbes filed a dissent.
`
`2
`
`
`
`
`IPR2016-00622
`Patent 7,149,511 B1
`
`35 U.S.C. § 318(a), which states a Final Written Decision should be issued
`“with respect to the patentability of any patent claim challenged by the
`petitioner.” Id. Rosetta cites to a pending case before the U.S. Supreme
`Court that has taken up a similar issue. Id. (citing SAS Institute Inc. v. Lee,
`137 S. Ct. 2160 (2017)). Accordingly, Rosetta contends our Final Written
`Decision “is invalid and must be vacated.” Id. at 3.
`Rosetta never made arguments during trial about how any final
`written decision issuing in these proceedings would be “invalid” under
`§ 318(a) based on a failure to institute inter partes review of claims 7 and 64
`on the Kimura ground. Nor does Rosetta’s request for rehearing attempt to
`identify such arguments in the trial record. We additionally observe that
`neither party requested rehearing of our Decision on Institution in
`IPR2016-00616. As such, we could not have misapprehended or overlooked
`this issue.
`Moreover, our Final Written Decision addressed the patentability of
`claims 7 and 64 challenged by Petitioner and, as such, included a decision
`with respect to the patentability of those claims in this consolidated
`proceeding. Final Dec. 72–73. Namely, the Majority determined, inter alia,
`that claims 7 and 64 are unpatentable under 35 U.S.C. § 103(a) over Goggin.
`Id. at 72. Although the challenge based on Kimura to claims 7 and 64 from
`the Petition in IPR2016-00616 was not addressed in our Final Written
`Decision, Rosetta does not argue persuasively that § 318(a) requires a final
`written decision to address every ground of unpatentability raised in a
`petition, or, as in this case, two consolidated petitions.
`
`
`3
`
`
`
`
`IPR2016-00622
`Patent 7,149,511 B1
`
`B.
`
`Purported Unconstitutionality of Inter Partes Review
`With its second argument, Rosetta argues that a patent is a personal
`property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes
`review is an adjudicatory proceeding which, as in this case, may result in
`extinguishment of a patentee’s property rights by action of the Board and
`without the right to trial by jury.” Id. at 3. According to Rosetta, this
`violates the Seventh Amendment and Article III of the Constitution. Id.
`Rosetta cites to a pending case before the U.S. Supreme Court that has taken
`up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy
`Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate
`our Final Written Decision. Id. at 6.
`Rosetta never made arguments during trial about the purported
`unconstitutionality of inter partes review. Nor does Rosetta’s request for
`rehearing attempt to identify such arguments in the trial record. As such, we
`could not have misapprehended or overlooked this issue.
`
`
`
`
`
`
`4
`
`
`
`
`IPR2016-00622
`Patent 7,149,511 B1
`
`III. CONCLUSION
`For the reasons above, we conclude that Rosetta has not met its
`burden of showing that we misapprehended or overlooked any of Rosetta’s
`arguments regarding (1) a purported violation of 35 U.S.C. § 318(a) based
`on our decision not to institute inter partes review of claims 7 and 64 of the
`Kimura ground in IPR2016-00616, and (2) the purported unconstitutionality
`of inter partes review. We, therefore, deny Rosetta’s request to vacate our
`Final Written Decision.
`
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Rosetta’s Request for Rehearing is denied.
`
`
`5
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`ROSETTA-WIRELESS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-006221
`Patent 7,149,511 B1
`____________
`
`
`
`ARBES, Administrative Patent Judge, dissenting.
`I respectfully dissent for the reasons set forth in my dissent to the
`Final Written Decision.
`
`
`
`
`
`
`
`
`
`1 Case IPR2016-00616 has been consolidated with this proceeding.
`1
`
`
`
`
`IPR2016-00622
`Patent 7,149,511 B1
`
`PETITIONER:
`
`Megan Raymond
`Steven Baughman
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`mraymond@paulweiss.com
`sbaughman@paulweiss.com
`
`Andrew J. Sutton
`Richard McCaulley
`ROPES & GRAY LLP
`andrew.sutton@ropesgray.com
`richard.mccaulley@ropesgray.com
`
`Brian E. Ferguson
`Anish R. Desai
`Megan H. Wantland
`WEIL, GOTSHAL & MANGES, LLP
`Brian.Ferguson@weil.com
`Anish.Desai@weil.com
`Megan.Wantland@weil.com
`
`PATENT OWNER:
`
`Miranda Jones
`Michael Heim
`HEIM PAYNE & CHORUSH, LLP
`mjones@hpcllp.com
`mheim@hpcllp.com
`
`
`2
`
`
`
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