`
`
`
`
`
`
`IPR2016-01404
`Request for Rehearing
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`UNIFIED PATENTS, INC.
`Petitioner
`v.
`
`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
`
`U.S. Patent 6,968,459
`IPR2016-01404
`__________________________
`
`
`
`REQUEST FOR REHEARING
`
`
`
`
`
`
`IPR2016-01404
`Request for Rehearing
`
`
`
`
`I.
`
`INTRODUCTION
`
`
`
`In its Final Written Decision, the Board found all challenged claims 1, 2, 13,
`
`14, 33, 34, 39, 46, and 48 not unpatentable based on finding the independent claims
`
`not anticipated by Bensimon. See Unified Patents Inc. v. Intellectual Ventures II
`
`LLC, IPR2016-01404, Paper 34, at (Jan. 10, 2018). In doing so, the Board found
`
`that the primary reference on which review was instituted, Bensimon et al., U.S.
`
`Patent 5,533,125, issued July 2, 1996 (Ex. 1004, “Bensimon”) taught all of the
`
`elements of the claim in “one possible mode of operation.” Paper 34, at 17. The
`
`Board reasoned that because that mode did not need to occur, Bensimon did not
`
`anticipate the claim. It thus found that the “restricted-access mode” limitation was
`
`not taught.
`
`The Federal Circuit holds that “a prior art product that sometimes, but not
`
`always, embodies a claimed method nonetheless teaches that aspect of the
`
`invention.” Hewlett–Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed.
`
`Cir. 2003); Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 843 F.3d
`
`1315, 1337 (Fed. Cir. 2016) (applying Hewlett holding to anticipation); Unwired
`
`Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016). The Board found
`
`that Bensimon sometimes teaches all of the elements of the claim, but
`
` 1
`
`
`
`
`
`
`
`
`misapprehended that this meant the claims were not anticipated. This was legal error.
`
`Petitioner respectfully requests the Board find the challenged claims 1, 2, 13, 14, 33,
`
`IPR2016-01404
`Request for Rehearing
`
`34, 39, 46, and 48 unpatentable.
`
`II. ARGUMENT
`
`A. Legal Standard
`
`Parties may file a single request for rehearing without prior authorization from
`
`the Board. 37 C.F.R.§ 42.71(d). On rehearing, the burden of showing the Decision
`
`should be modified lies with the party challenging the Decision. Id. “The request
`
`must specifically identify all matters the party believes the Board misapprehended
`
`or overlooked, and the place where each matter was previously addressed in a
`
`motion, an opposition, or a reply.” Id.
`
`B.
`
`Bensimon discloses the “restricted-access mode” limitation
`
`Claim 11 requires, inter alia:
`
`[1] operating a computer in a full-access mode when the storage
`device has the device-specific security information, wherein in the full-
`access mode the computer permits both read and write access to the
`storage device; and
`
`[2] operating the computer in a restricted-access mode when the
`storage device does not have the device-specific security information,
`
`
`1 Claim 1 is representative of all the challenged independent claims. Paper 34, 5.
`
`As a result, only this claim is discussed here.
`
` 2
`
`
`
`
`
`
`
`IPR2016-01404
`Request for Rehearing
`
`
`
`wherein in the restricted-access mode the computer permits read access
`to the storage device and prevents write access to the storage device.
`
`The Board did not dispute that Bensimon discloses [1] by disclosing a “read/write
`
`protection mode” wherein the device has a “read/write password” that corresponds
`
`to the claimed “device-specific security information,” but the Board held that
`
`Bensimon did not disclose [2]. Paper 34, 15-17.
`
`Regarding [2], the Board found that Bensimon discloses a “restricted-access
`
`mode” by disclosing a “write protection” mode. Id., 16-17. The Board also found
`
`that Bensimon expressly disclosed two configurations for the device when the
`
`read/write password was absent: “write protection” mode and “no protection”
`
`mode. Id. What determines which of these two configurations options is available
`
`is the presence of another password, the “write-protection” (i.e., read-only)
`
`password. Id. The Board concluded that Bensimon’s express disclosure of two
`
`configurations that depended on the presence of a password other than the read/write
`
`password did not satisfy the claims “because claim 1 requires operating in restricted
`
`access mode when the storage device does not have the device-specific storage
`
`information[.]” Id., 17. That is, the Board held that the claims were not anticipated
`
`because Bensimon discloses the claimed arrangement only some of the time and not
`
`all of the time—Bensimon discloses the claimed arrangement only the times it is
`
`configured with the “write-protection” password. Id. This was legal error.
`
` 3
`
`
`
`
`
`
`
`IPR2016-01404
`Request for Rehearing
`
`
`
`The Federal Circuit has long held that “a prior art product that sometimes, but
`
`not always, embodies a claimed method nonetheless teaches that aspect of the
`
`invention.” Hewlett–Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed.
`
`Cir. 2003); Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 843 F.3d
`
`1315, 1337 (Fed. Cir. 2016) (applying Hewlett holding to anticipation); Unwired
`
`Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016).
`
`The PTAB has applied this principle many times. See, e.g., Google LLC et
`
`al. v. Fujinomaki, IPR2016-01522, Paper 31 at 37-38 (Jan. 8, 2018) (Final Written
`
`Decision) (finding that prior art that sometimes embodies a claimed method
`
`anticipates and thus renders the claims unpatentable); Ameriforge Grp., Inc.,
`
`IPR2015-00233, Paper 37 at 22-23 (May 16, 2016) (Final Written Decision) (same);
`
`RPX Corp. et al. v. Iridescent Networks, Inc., IPR2017-01661, Paper 9 at 21 (Dec.
`
`13, 2017) (Institution Decision) (instituting where this was the case); Ex Parte Mary
`
`Lou Kesse, Zhiyong Wei, & Liangtao Zhu, Appeal No. 2014-002007, “Decision on
`
`Appeal” at 12 (May 20, 2016) (affirming examiner’s rejection in these
`
`circumstances).
`
`In view of this longstanding precedent, the Board has already found that
`
`Bensimon discloses the “restricted-access mode” limitation. As discussed above,
`
`this panel acknowledged that Bensimon expressly discloses its device operating in a
`
` 4
`
`
`
`
`
`
`
`IPR2016-01404
`Request for Rehearing
`
`
`“restricted-access mode” when the device does not have the “device-specific
`
`security information” as claimed: when Bensimon’s device does not have the read-
`
`write password (i.e., “device specific security information”) it operates in a write-
`
`protection mode (i.e., “restricted access mode”) in the situation when the device has
`
`the write-protection password. Paper 34, 16-17. As the Federal Circuit holds, it
`
`does not matter that Bensimon’s device does not always operate as claimed (e.g.,
`
`when its device does not have the write-protection password). What matters is that
`
`the Petitioner demonstrated, and the Board found, that Bensimon expressly discloses
`
`a situation when its device operates as exactly as the claim requires (i.e., it can be in
`
`a “restricted access mode”—the write-protection mode—when it does not have the
`
`read-write password). Hewlett-Packard, 340 F.3d at 1326.
`
`The Board’s decision here is similar to the arguments rejected in the Hewlett-
`
`Packard case. There, the patent owner argued that a prior art scanner did not
`
`“perform a final scan . . . which corresponds to the portion of the preview scan” as
`
`claimed because the prior art could be configured to behave differently (i.e.,
`
`changing a setting on the scanner would cause behavior different than the claims).
`
`340 F.3d at 1326. The Federal Circuit rejected this argument because the patent
`
`owner required the prior art to “always” operate as the claims state. Id. It was
`
`sufficient that the prior art could be configured to operate as the claims state even
`
` 5
`
`
`
`
`
`
`
`IPR2016-01404
`Request for Rehearing
`
`
`though it could also be configured to operate differently. Id. Such is the case here.
`
`The Board found that Bensimon discloses a device configuration that operates as the
`
`“restricted-access mode” limitation states (i.e., when the read-write password is not
`
`present but the device is configured with a write-protection password) and a
`
`configuration in which it does not (i.e., without either the read-write and write
`
`protection passwords). Given the Board’s factual findings, the Board should hold
`
`that Bensimon discloses this limitation and therefore anticipates the challenged
`
`claims.
`
`III. CONCLUSION
`
`Petitioner respectfully requests the Board find the challenged claims 1, 2, 13,
`
`14, 33, 34, 39, 46, and 48 unpatentable. In its Final Written Decision, the Board
`
`found that Bensimon teaches a method that sometimes, but not always, meets all of
`
`the claim limitations. Paper 34, at 17. But “a prior art product that sometimes, but
`
`not always, embodies a claimed method nonetheless teaches that aspect of the
`
`invention.” Hewlett–Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed.
`
`Cir. 2003). Thus, given the Board’s findings, Bensimon anticipates the claim.
`
`Petitioner has demonstrated that the independent claims, of which Claim 1 is
`
`representative, are unpatentable. Therefore, Petitioner requests that the Board
`
`reverse its finding that the claims were not unpatentable, as the Board’s reason for
`
` 6
`
`
`
`
`
`
`
`
`finding the challenged claims patentable was its finding that Claim 1 was not
`
`IPR2016-01404
`Request for Rehearing
`
`anticipated by Bensimon. Paper 34, 18-19.
`
`Respectfully submitted,
`
`
`
`By: /Roshan S. Mansinghani/
`Roshan S. Mansinghani, Lead Counsel
`Reg. No. 62,429
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 7
`
`
`
`
`
`
`
`
`
`Dated: February 9, 2018
`
`
`
`IPR2016-01404
`Request for Rehearing
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 9, 2018, I caused a true and correct copy of
`
`the Petitioner’s Request for Rehearing in IPR2016-01404 to be served via
`
`electronic mail on the following addresses, where the patent owner’s counsel has
`
`consented to electronic service:
`
`Lori A. Gordon
`Email: lgordon-PTAB@skgf. com
`Byron L. Pickard
`Email: bpickard-PTAB@skgf.com
`Steven W. Peters
`Email: speters-PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`/Jonathan Stroud/
`Jonathan Stroud
`Reg. No. 72,518
`
`
`
`
`
`
` 8
`
`
`
`
`
`James R. Hietala
`Email: jhietala@intven.com
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, WA 98005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
