Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 42
`
`Entered: September 27, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01404
`Patent 6,968,459 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion to Excuse Late Filing of
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.5(c)(3)
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
`
`
`Paper 42
`
`Entered: September 27, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01404
`Patent 6,968,459 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion to Excuse Late Filing of
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.5(c)(3)
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`
`INTRODUCTION
`I.
`Petitioner Unified Patents Inc. sought inter partes review of claims 1,
`2, 13–15, 18, 33, 34, 39, 46, and 48 of U.S. Patent No. 6,968,459 B1 (“the
`’459 patent”). Paper 2. Patent Owner Intellectual Ventures II, LLC filed a
`Preliminary Response. Paper 8. Upon consideration of the Petition and
`Preliminary Response, we instituted an inter partes review of claims 1, 2,
`13, 14, 33, 34, 39, 46, and 48 pursuant to 35 U.S.C. § 314. Paper 9. 1
`During the trial, Patent Owner filed a Patent Owner Response
`(Paper 19) and observations on cross examination (Paper 30). Petitioner
`filed a Reply to the Patent Owner Response (Paper 23, “Reply”) and a reply
`to Patent Owner’s observations (Paper 31). An oral hearing was conducted
`on November 14, 2017. The record contains a transcript of the hearing
`(Paper 33, “Tr.”). Upon consideration of the complete trial record, we
`determined that Petitioner had failed to show by a preponderance of the
`evidence that any of the challenged claims are unpatentable. Paper 34
`(“Decision”).
`Petitioner filed a Request for Rehearing (Paper 35, “Reh’g Req.”),
`requesting reconsideration of our Decision and a Motion to Excuse Late
`Filing of Petitioner’s Request for Rehearing (Paper 36, “Motion”). 2 We
`
`
`1 We did not institute, however, review of claims 15 and 18 because we
`determined that Petitioner had not established a reasonable likelihood it
`would prevail with respect to those claims. Id.
`2 After Petitioner filed its Request for Rehearing, the Supreme Court issued
`its decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018),
`concerning final written decisions issued by the Board addressing fewer than
`all claims a petitioner challenged in a petition. Neither party asserts that the
`Court’s decision in SAS Institute requires additional consideration in this
`proceeding.
`
`2
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`have considered Petitioner’s Motion and its Request for Rehearing. For the
`following reasons, Petitioner’s Motion is granted and its Request is denied.
`
`I.
`
`UNOPPOSED MOTION TO EXCUSE LATE FILING
`
`Petitioner filed its Request for Rehearing on February 10, 2018, one
`day after the filing deadline of February 9, 2018. Motion 1. Our rules
`provide that “[a] late action will be excused on a showing of good cause or
`upon a Board decision that consideration on the merits would be in the
`interests of justice.” 37 C.F.R. § 42.5(c)(3). Petitioner asserts that both
`good cause and the interests of justice support excusing its late filing
`because: (1) Petitioner timely served its Request on Patent Owner’s counsel,
`(2) Petitioner attempted to file timely its Request, and (3) Petitioner filed its
`Request the next day. Motion 1.
`Petitioner asserts that both of its in-house counsel, who are backup
`counsel of record in this proceeding, attempted to file the Request for
`Rehearing on February 9, 2018, but were unable to do so because they
`lacked filing privileges for our electronic filing system. Motion 1.
`Petitioner’s outside counsel could not be reached at the time of attempted
`filing and Petitioner’s lead outside counsel was unavailable due to an urgent
`family health matter. Id. at 1–2. In-house counsel then attempted to contact
`the Board via email telephone and timely served its Request for Rehearing
`on Patent Owner’s counsel. Id. at 2. Outside counsel subsequently filed the
`Request for Rehearing the next day. Id. at 2. Patent Owner has not filed an
`opposition to the motion.
`Under these circumstances, we find Petitioner has shown good cause
`to excuse its delay of filing by one day. In particular, good cause is
`demonstrated here by lead counsel’s unavailability due to an urgent family
`
`3
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`
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`IPR2016-01404
`Patent 6,968,459 B1
`
`health matter, back-up counsel’s attempts to file, and back-up counsel’s
`timely service on opposing counsel. Accordingly, Petitioner’s Motion to
`Excuse Late Filing of Petitioner’s Request for Rehearing is granted.
`
`II. ANYALSIS OF REHEARING REQUEST
`
`Of the challenged claims, claims 1, 15, 18, 33, and 39 of the
`’459 patent are independent. Claim 1 illustrates the claimed subject
`matter, and is reproduced below.
`1.
`A method comprising:
`sensing whether a storage device has device-specific
`security information stored thereon;
`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
`operating the computer in a restricted-access mode when
`the storage device does not have the device-specific security
`information, wherein in the restricted-access mode the computer
`permits read access to the storage device and prevents write
`access to the storage device.
`Ex. 1001, 9:16–28.
`In our Decision, we determined, “[b]ased on the complete evidentiary
`record before us, [that] Petitioner has not identified in Bensimon explicit or
`inherent disclosure of the claimed restricted-access mode.” Decision 16.
`We explained that “[c]laim 1 requires operating in restricted-access mode
`‘when the storage device does not have the device-specific security
`information.’” Id. (citing Ex. 1001, 9:24–26). We observed that “Petitioner
`identifies Bensimon’s read/write password, alone or in combination with the
`password-enabling flag, as the device-specific security information, yet
`Petitioner does not identify in Bensimon an explicit disclosure that
`
`4
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`Bensimon’s storage device operates in the claimed restricted-access mode
`when the read/write password is absent from the device.” Id. at 16–17
`(citing Reply 16–22). For this reason, we found Petitioner failed to establish
`by a preponderance of the evidence that any of the challenged claims are
`unpatentabe. Id. at 18–19.
`In its Request for Rehearing, Petitioner asserts that we found
`Bensimon “taught all of the elements of the claim in ‘one possible mode of
`operation.’” Reh’g Req. 1 (citing Decision 17). According to Petitioner,
`“[t]he Board found that Bensimon sometimes teaches all of the elements of
`the claim, but misapprehended that this meant the claims were not
`anticipated. This was legal error.” Id. at 1–2. Petitioner elaborates, “the
`Board found that Bensimon discloses a ‘restricted-access mode’ by
`disclosing a ‘write protection’ mode. Id. at 3 (citing Decision 16–17).
`“The burden of showing a decision should be modified lies with the
`party challenging the decision . . .” who “must specifically identify all
`matters the party believes [we] misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or a
`reply.” 37 C.F.R. § 42.71(d).
`Petitioner’s argument is predicated upon a mischaracterization of our
`factual findings. Petitioner asserts that we found Bensimon “taught all of the
`elements of the claim in ‘one possible mode of operation.’” Reh’g Req. 1
`(citing Decision 17). We, however, made no such finding. The phrase that
`Petitioner attributes to us—namely, “one possible mode of operation”—does
`not appear anywhere in our Final Written Decision. Compare Reh’g Req. 1
`(citing Decision 17) to Decision 17. Contrary to Petitioner’s assertions, we
`did not find “that Bensimon sometimes teaches all of the elements of the
`
`5
`
`
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`IPR2016-01404
`Patent 6,968,459 B1
`
`claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’
`by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision,
`16–17). Rather, we found the exact opposite—that Bensimon fails to
`disclose the claimed restricted-access mode because, as claimed, that mode
`requires the absence of the claimed device-specific security information (i.e.
`the read/write password, or alternatively the combination of the read/write
`password and password-enabling flag). Decision 16–17 (citing Reply 16–
`22) (“Petitioner identifies Bensimon’s read/write password, alone or in
`combination with the password-enabling flag, as the device-specific security
`information, yet Petitioner does not identify in Bensimon an explicit
`disclosure that Bensimon’s storage device operates in the claimed
`restricted-access mode when the read/write password is absent from the
`device.”) (bolding added; italics original).
`In light of our factual findings, Petitioner’s reliance on Hewlett–
`Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314 (Fed. Cir. 2003) and Power
`Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 843 F.3d 1315 (Fed.
`Cir. 2016) (applying Hewlett holding to anticipation) in misplaced. In those
`cases, the Federal Circuit addressed “a prior art product that sometimes, but
`not always, embodies a claimed method.” Hewlett–Packard Co., 340 F.3d
`at 1326. Here, however, Petitioner failed to show that Bensimon ever
`embodies the claimed method. Instead of disclosing the claimed restricted-
`access mode, we found that Bensimon describes providing no protection in
`the absence of the read/write password (i.e. the claimed device-specific
`security information). Decision 17 (citing Ex. 1004, 5:33–39, 6:3–4, 6:13–
`29). We further rejected Petitioner’s argument based on Bensimon’s write
`protection mode because access to the write protection mode turns on the
`
`6
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`presence or absence of Bensimon’s write protection password, not the
`presence or absence of Bensimon’s read/write password and password-
`enabling flag, as required to meet the independent claims. Id. (citing
`Ex. 1004, 6:13–23; Reply 16; Ex. 1012 ¶ 18).
`We are not persuaded, therefore, that we misapprehended our factual
`findings, as Petitioner asserts. Accordingly, we maintain our decision that
`Petitioner failed to show by a preponderance of the evidence that claims 1, 2,
`13, 14, 33, 34, 39, 46, and 48 are unpatentable.
`
`
`II. ORDER
`
`It is, therefore,
`ORDERED Petitioner’s Motion to Excuse Late Filing of Petitioner’s
`Request for Rehearing (Paper 36) is granted; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a),
`Petitioner’s Request for Rehearing (Paper 35) is denied.
`
`
`
`
`
`
`
`7
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`FOR PETITIONER:
`Lionel M. Lavenue
`James D. Stein
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Lionel.Lavenue@finnegan.com
`James.Stein@finnegan.com
`
`Roshan Suresh Mansinghani
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`
`PATENT OWNER:
`Byron Pickard
`Steven Peters
`Lestin L. Kenton
`STERNE, KESSLER GOLDSTEIN & FOX PLLC
`ptab@sternekessler.com
`bpickard@skgf.com
`speters@skgf.com
`lkenton-PTAB@sternekessler.com
`
`8
`
`
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