`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
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CISCO SYSTEMS, INC.,
`Petitioner,
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`v.
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`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01257
`Patent 8,457,113 B2
`____________
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`
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`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
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`PARVIS, Administrative Patent Judge.
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`
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`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2016-01257
`Patent 8,457,113 B2
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`
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`I.
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`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) an inter partes review as to claims 143–147,
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`149, 150, 163, and 176–178 of U.S. Patent 8,457,113 B2 (Ex. 1001, “the
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`’113 patent”). Paper 17, “Req. Reh’g.” For the reasons that follow, the
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`Request for Rehearing is 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 its Preliminary Response (Paper 8, “Prelim. Resp.”)
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`regarding the teachings of the invention and disclaimers disclosed in the
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`2
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`IPR2016-01257
`Patent 8,457,113 B2
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`Specification as to the claim construction of the term “controller.” Req.
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`Reh’g at 2–11. We are not persuaded that we misapprehended or
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`overlooked those arguments.
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`In its Request for Rehearing, Patent Owner repeats the same
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`arguments as those in the Preliminary Response (compare Req. Reh’g 2–11
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`with Prelim. Resp. 12–34), as well as presents new arguments, for example,
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`regarding the description in the ’113 patent of making calls using Voice over
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`Internet Protocol (VoIP) technology (see, e.g., Reh’g Req, 9–10). A request
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`for rehearing is not an opportunity to express disagreement with a decision
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`on previously made arguments. Furthermore, we cannot have
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`misapprehended or overlooked newly made arguments. During trial, Patent
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`Owner has an opportunity to resubmit in its Response arguments previously
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`made in its Preliminary Response, as well as its arguments newly made in
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`the Rehearing Request, along with any other new arguments, explanations,
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`and supporting evidence. As noted in the Scheduling Order, any arguments
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`for patentability not raised in the Response will be deemed waived. Paper
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`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 143–147, 149, 150,
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`163, and 176–178 for purposes of the Decision on Institution and,
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`consequently, Patent Owner’s Request for Rehearing is denied.
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`3
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`4
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`IPR2016-01257
`Patent 8,457,113 B2
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`PETITIONER:
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`Wayne Stacy
`wayne.stacy@bakerbotts.com
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`PATENT OWNER:
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`Brent Bumgardner
`bbumgardner@nbclaw.net
`John Murphy
`murphy@nelbum.com
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`