Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
`
` Entered: January 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPENWEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01261
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
`
` Entered: January 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPENWEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01261
`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
`
`
`
`
`
`
`
`IPR2016-01261
`Patent 8,457,113 B2
`
`
`
`I.
`
`INTRODUCTION
`
`Focal IP, LLC (“Patent Owner”) filed a Request for Rehearing of the
`
`Decision to Institute (Paper 19, “Dec.”) an inter partes review as to claims 1,
`
`2, 8, 11, 15–19, 94, 95, 102, 109–13, 128, 163, 164, 166–68, 175, and 179–
`
`81 (“challenged claims”) of U.S. Patent 8,457,113 B2 (Ex. 1001, “the ’113
`
`patent”). Paper 21, “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
`
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`
`specifically all matters we misapprehended or overlooked, and the place
`
`where each matter was previously addressed in a motion, an opposition, or a
`
`reply. Id. When reconsidering a decision on institution, we review the
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`
`discretion may be determined if a decision is based on an erroneous
`
`interpretation of law, if a factual finding is not supported by substantial
`
`evidence, or if the decision represents an unreasonable judgment in weighing
`
`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
`
`Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).
`
`III. ANALYSIS
`
`Patent Owner contends that we misapprehended or overlooked Patent
`
`Owner’s arguments in connection with Petitioner’s reasons for combining
`
`2
`
`
`
`IPR2016-01261
`Patent 8,457,113 B2
`
`
`
`the asserted prior art references. Req. Reh’g at 1–5. Patent Owner also
`
`contends that we misapprehended or overlooked Patent Owner’s arguments
`
`regarding the intrinsic record as to the construction of the term “tandem
`
`switch.” Id. at 5–8.
`
`We are not persuaded that we misapprehended or overlooked Patent
`
`Owner’s arguments in connection with Petitioner’s reasons for combining
`
`the asserted prior art references. Id. at 1–5. In its Request for Rehearing,
`
`Patent Owner repeats the same arguments as those in the Preliminary
`
`Response (Paper 11, “Prelim. Resp.”), which are based on Patent Owner’s
`
`alleged deficiencies regarding Chang’s teachings of a “call processing
`
`system.” Compare Req. Reh’g 2–5 with Prelim. Resp. 58–63. As we
`
`indicated in our Decision on Institution, we have considered all of Patent
`
`Owner’s arguments presented in the Preliminary Response regarding the
`
`Petitioner’s proposed combination of Archer and Chang, and determined
`
`that Petitioner had made a sufficient showing. Dec. 19–21.
`
`A request for rehearing is not an opportunity to express disagreement
`
`with a decision on previously made arguments. During trial, Patent Owner
`
`has an opportunity to resubmit in its Response arguments previously made in
`
`its Preliminary Response, along with any new arguments, explanations, and
`
`supporting evidence. As noted in the Scheduling Order, any arguments for
`
`patentability not raised in the Response will be deemed waived. Paper 20, 3.
`
`We also are not persuaded by Patent Owner’s contentions that we
`
`misapprehended or overlooked its arguments regarding the intrinsic record
`
`and the claim construction of the term “tandem switch.” Req. Reh’g at 5–8.
`
`3
`
`
`
`IPR2016-01261
`Patent 8,457,113 B2
`
`
`
`Although Patent Owner acknowledges that we considered the intrinsic
`
`record, specifically the prosecution history, Patent Owner asserts we
`
`misapprehended or overlooked Patent Owner’s contentions pertaining to an
`
`affirmative disclaimer in the Specification. Id. at 6–7. Patent Owner’s
`
`contentions, however, are new because in the Preliminary Response, the
`
`contentions pertaining to the disclaimer disclosed in the Specification were
`
`raised with respect to only the terms “switching facility” and “coupled to.”
`
`Prelim. Resp. 34–43. Furthermore, in its Request for Rehearing, Patent
`
`Owner attempts to import a negative limitation into the claims (Req. Reh’g
`
`6), without taking into account “access tandem” and “hybrid switch”
`
`specifically identified in that prosecution history as being examples of the
`
`term “tandem switch” (Ex. 2005, 82).
`
`A request for rehearing is not an opportunity to submit new
`
`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
`
`Preliminary Response.
`
`Patent Owner also mischaracterizes the Decision stating that we relied
`
`“on an item of extrinsic evidence. . . to modify the meaning of this term, as
`
`used in the intrinsic record.” Req. Reh’g 7. However, our Decision is based
`
`on the intrinsic record, including the Specification’s disclosure of
`
`“conventional PSTN tandem switch 16,” and “well-known, PSTN tandem
`
`switches.” Dec. 10 (citing Ex. 1001, 4:43–45). We, further, determined no
`
`express construction of the term “tandem switch” was needed because the
`
`4
`
`
`
`IPR2016-01261
`Patent 8,457,113 B2
`
`
`
`asserted prior art expressly discloses “tandem” switches. See, e.g., id. at 9–
`
`12.
`
`For the foregoing reasons, Patent Owner has not demonstrated that we
`
`abused our discretion in construing the terms of the challenged claims for
`
`purposes of the Decision on Institution or that we misapprehended or
`
`overlooked Patent Owner’s other arguments and, consequently, Patent
`
`Owner’s Request for Rehearing is denied.
`
`
`
`PETITIONER:
`
`Patrick McPherson
`Christopher Tyson
`Wayne Stacy
`pdmcpherson@duanemorris.com
`cjtyson@duanemorris.com
`wayne.stacy@bakerbotts.com
`
`
`PATENT OWNER:
`
`Brent Bumgardner
`bbumgardner@nbclaw.net
`John Murphy
`murphy@nelbum.com
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
