Trials@uspto.gov
`571-272-7822
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` Paper 18
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` Entered: January 31, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01254
`Patent 8,457,113 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
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`
`
`571-272-7822
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` Paper 18
`
`
`
` Entered: January 31, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01254
`Patent 8,457,113 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`
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`I.
`
`INTRODUCTION
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`Focal IP, LLC (“Patent Owner”) filed a Request for Rehearing of the
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`Decision to Institute (Paper 15, “Dec.”) an inter partes review as to claims
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`38 and 65 of U.S. Patent 8,457,113 B2 (Ex. 1001, “the ’113 patent”). Paper
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`17, “Req. Reh’g.” For the reasons that follow, the Request for Rehearing is
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`denied.
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`II. STANDARD OF REVIEW
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an opposition, or a
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`reply. Id. When reconsidering a decision on institution, we review the
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion may be determined if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
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`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
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`Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
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`III. ANALYSIS
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`Patent Owner contends that we misapprehended or overlooked Patent
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`Owner’s arguments in connection with the claim language regarding the
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`term “switching facility” recited in claims 38 and 65. Req. Reh’g at 1–5.
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`2
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`IPR2016-01254
`Patent 8,457,113 B2
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`
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`Patent Owner also contends that we misapprehended or overlooked Patent
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`Owner’s arguments regarding the teachings of the invention and disclaimers
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`disclosed in the Specification as to the claim construction of the terms
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`“switching facility” and “call processing system.” Id. at 5–15.
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`We are not persuaded by Patent Owner’s contentions that we
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`misapprehended or overlooked its arguments in connection with the claim
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`language regarding “switching facility.” Id. at 1–5. In its Preliminary
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`Response (Paper 8, “Prelim. Resp.”), apart from the reproduction of a
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`portion of claim 1, Patent Owner merely provides a single conclusory
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`statement without any explanation—“[t]he independent Challenged Claims
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`explicitly recite the functionality the ‘switching facility’ and ‘edge switch’
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`must have, and expressly distinguish that a ‘switching facility’ is not an
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`‘edge switch.’” Id. at 33–34. Patent Owner for the first time in its Request
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`for Rehearing presents additional arguments regarding the claim language.
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`Req. Reh’g 4–5. A request for rehearing is not an opportunity to submit new
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`arguments. See 37 C.F.R. § 42.71(d). We could not have misapprehended
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`or overlooked arguments that were not made previously in Patent Owner’s
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`Preliminary Response.
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`Furthermore, the portion of the claim language reproduced by Patent
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`Owner in the Preliminary Response misleadingly emphasizes a subset of the
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`recitation—“[t]he preamble states that ‘edge switches’ are ‘for routing calls
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`from and to subscribers within a local geographic area,’ and ‘switching
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`facilities’ are ‘for routing calls to other edge switches or other switching
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`facilities local or in other geographic areas.’” Prelim. Resp. 34 (citing
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`3
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`IPR2016-01254
`Patent 8,457,113 B2
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`
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`Ex. 1001, 15:30–38) (emphasis added by Patent Owner). The claim
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`language, in contrast, recites that “switching facilities” are for routing calls
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`“to other edge switches” or “other switching facilities local or in other
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`geographic areas.” Ex. 1001, 15:37–38 (emphases added). In its
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`Preliminary Response, Patent Owner proffers no explanation as to the
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`recitation in its entirety, and Patent Owner’s argument ignores certain words
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`in the claim language to support its allegation that the term “switching
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`facilities” excludes “edge switches” and “edge devices.” Prelim. Resp. 34.
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`Moreover, Patent Owner admits that Applicants introduced “switching
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`facility”—a term that was not used in the original Specification—into the
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`claims by Amendment to indicate that “switching facility” has broader
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`scope than “tandem switch.” Id. at 36; Ex. 2005, 62, 82. Patent Owner,
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`however, attempts to import from the prosecution history a negative
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`limitation into the claims, i.e., that “switching facility” “is not itself an edge
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`switch or edge device” (Prelim. Resp. 37–38) without taking into account
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`“access tandem” and “hybrid switch” specifically identified in that
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`prosecution history as being examples of the narrower term “tandem switch”
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`(Ex. 2005, 82). As we indicated in our Decision on Institution, we have
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`considered all of Patent Owner’s arguments presented in the Preliminary
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`Response regarding the claim term “switching facility,” and determine that
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`the broadest reasonable interpretation of the term is “any switch in the
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`communication network,” consistent with Applicants’ remarks filed with
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`that Amendment. Dec. 8–10; Ex. 2005, 82.
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`4
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`IPR2016-01254
`Patent 8,457,113 B2
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`
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`We also are not persuaded that we misapprehended or overlooked
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`Patent Owner’s arguments regarding the teachings of the invention and
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`disclaimers disclosed in the Specification. Req. Reh’g 5–15. In its Request
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`for Rehearing, Patent Owner repeats the same arguments as those in the
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`Preliminary Response (compare Req. Reh’g 5–15 with Prelim. Resp. 11–
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`39), as well as presents new arguments, for example, regarding the
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`description in the ’113 patent of making calls using Voice over Internet
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`Protocol (VoIP) technology (see, e.g., Reh’g Req, 10–11). A request for
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`rehearing is not an opportunity to express disagreement with a decision on
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`previously made arguments. Furthermore, we cannot have misapprehended
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`or overlooked newly made arguments. During trial, Patent Owner has an
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`opportunity to resubmit in its Response arguments previously made in its
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`Preliminary Response, as well as its arguments newly made in the Rehearing
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`Request, along with any other new arguments, explanations, and supporting
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`evidence. As noted in the Scheduling Order, any arguments for patentability
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`not raised in the Response will be deemed waived. Paper 16, 3.
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`For the foregoing reasons, Patent Owner has not demonstrated that we
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`abused our discretion in construing the terms of claims 38 and 65 for
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`purposes of the Decision on Institution and, consequently, Patent Owner’s
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`Request for Rehearing is denied.
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`5
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`6
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`IPR2016-01254
`Patent 8,457,113 B2
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`
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`PETITIONER:
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`Wayne Stacy
`wayne.stacy@bakerbotts.com
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`PATENT OWNER:
`
`Brent Bumgardner
`bbumgardner@nbclaw.net
`
`John Murphy
`murphy@nelbum.com
`
`
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