Trials@uspto.gov
`571-272-7822
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` Paper 15
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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
`____________
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01260
`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
`
`
`
`
`
`
`571-272-7822
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` Paper 15
`
`
`
` Entered: January 31, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01260
`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
`
`
`
`
`
`
`
`IPR2016-01260
`Patent 8,457,113 B2
`
`
`
`I.
`
`INTRODUCTION
`
`Focal IP, LLC (“Patent Owner”) filed a Request for Rehearing of the
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`Decision to Institute (Paper 12, “Dec.”) an inter partes review as to claims 1,
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`2, 8, 11, 15, and 17–19 of U.S. Patent 8,457,113 B2 (Ex. 1001, “the ’113
`
`patent”). Paper 14, “Req. Reh’g.” For the reasons that follow, the Request
`
`for Rehearing is denied.
`
`II. STANDARD OF REVIEW
`
`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
`
`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.
`
`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).
`
`III. ANALYSIS
`
`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 claim 1. Req. Reh’g at 1–4. Patent
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`2
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`
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`IPR2016-01260
`Patent 8,457,113 B2
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`
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`Owner also contends that we misapprehended or overlooked Patent Owner’s
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`arguments regarding the teachings of the invention and disclaimers disclosed
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`in the Specification as to the claim construction of the terms “switching
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`facility,” “coupled to,” and “tandem access controller.” Id. at 5–13. Patent
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`Owner further contends that we overlooked the failure of Petitioner to
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`address the factors for obviousness of claims 2, 8, 11, and 15–19. Id. at 13–
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`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 1–4. In its Preliminary
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`Response (Paper 7, “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 36. Patent Owner for the first time in its Request for
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`Rehearing presents additional arguments regarding the claim language. Req.
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`Reh’g 3–4. 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
`
`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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`3
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`IPR2016-01260
`Patent 8,457,113 B2
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`
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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. 36 (citing
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`Ex. 1001, 15:35–38) (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, 15:37–39 (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. 36.
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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 38; 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. 39–40) 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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`4
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`
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`IPR2016-01260
`Patent 8,457,113 B2
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`
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`communication network,” consistent with Applicants’ remarks filed with
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`that Amendment. Dec. 14–16; Ex. 2005, 82.
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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 5–13. In its Request
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`for Rehearing, with respect to the terms “switching facility” and “coupled
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`to,” Patent Owner repeats the same arguments as those in the Preliminary
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`Response (compare Req. Reh’g 5–11 with Prelim. Resp. 12–41), as well as
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`presents new arguments, for example, regarding the description in the ’113
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`patent of making calls using Voice over Internet Protocol (VoIP) technology
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`(see, e.g., Reh’g Req, 9–10).
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`With respect to arguments in the Request for Rehearing relating to the
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`term “tandem access controller,” although Patent Owner acknowledges that
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`we considered a portion of the Specification in construing this term, Patent
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`Owner asserts we analyzed this portion “in a vacuum” again pointing to its
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`same arguments regarding the teachings of the invention and disclaimers
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`disclosed in the Specification. Id. at 12. But Patent Owner’s contentions are
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`new because in the Preliminary Response, the contentions pertaining to the
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`teachings of the invention and disclaimers disclosed in the Specification
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`were raised with respect to only the terms “switching facility” and “coupled
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`to.” Prelim. Resp. 35–43. Additionally, Patent Owner mischaracterizes the
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`Decision stating that we gave “‘tandem access controller’ the same
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`unreasonably broad construction as the term ‘call processing system.’” Id. at
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`12. However, in our Decision, we determined no express construction of the
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`5
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`IPR2016-01260
`Patent 8,457,113 B2
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`
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`term “tandem access controller” was needed because the asserted prior art
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`discloses the more limited example of a tandem access controller set forth in
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`the Specification. See, e.g., Dec. 18.
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`Accordingly, Patent Owner’s arguments regarding the teachings of the
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`invention and disclaimers disclosed in the Specification with respect to the
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`terms “switching facility,” “coupled to,” and “tandem access controller”
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`(Req. Reh’g 5–13) are not persuasive. A request for rehearing is not an
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`opportunity to express disagreement with a decision on previously made
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`arguments. Furthermore, we cannot have misapprehended or overlooked
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`newly made arguments. During trial, Patent Owner has an opportunity to
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`resubmit in its Response arguments previously made in its Preliminary
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`Response, as well as its arguments newly made in the Request for
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`Rehearing, along with any other new arguments, explanations, and
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`supporting evidence. As noted in the Scheduling Order, any arguments for
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`patentability not raised in the Response will be deemed waived. Paper 16, 3.
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`We further are not persuaded that we misapprehended or overlooked
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`Patent Owner’s arguments regarding the failure of Petitioner to address the
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`factors for obviousness of claims 2, 8, 11, and 15–19. Req. Reh’g 13–15.
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`Patent Owner contends that “Petitioner does not even assert that Claims 11
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`or 16 should be rendered obvious by the purported Shtivelman-O’Neal
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`combination.” Id. at 13. Patent Owner relies on what appears to be a
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`typographical omission (Pet. 4) because, as we noted in our Decision (see,
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`e.g., Dec. 28, 30–31), Petitioner presents contentions in this regard (see, e.g.,
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`Pet. 45, 56, 57, 63–68). Additionally, Patent Owner’s contentions are new,
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`6
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`IPR2016-01260
`Patent 8,457,113 B2
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`
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`as in its Preliminary Response, Patent Owner referred back to its anticipation
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`contentions (Prelim. Resp. 60–61).
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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 1, 2, 8, 11, 15, and
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`17–19 for purposes of the Decision on Institution or that we misapprehended
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`or overlooked Patent Owner’s other arguments and, consequently, Patent
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`Owner’s Request for Rehearing is denied.
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`7
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`
`
`PETITIONER:
`
`Mark Passler
`Brice Dumais
`ip@akerman.com
`brice.dumais@akerman.com
`
`
`PATENT OWNER:
`
`Brent Bumgardner
`bbumgardner@nbclaw.net
`John Murphy
`murphy@nelbum.com
`
`
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