Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: March 17, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`____________
`
`Case IPR2016-01519
`Patent 8,887,308 B2
`____________
`
`
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: March 17, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`WILLIAM GRECIA,
`Patent Owner.
`____________
`
`Case IPR2016-01519
`Patent 8,887,308 B2
`____________
`
`
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2016-01519
`Patent 8,887,308 B2
`
`
`I. INTRODUCTION
`DISH Network L.L.C. (“Petitioner”) filed a Request for Rehearing
`(Paper 8, “Req. Reh’g”) of our Decision Denying Institution of Inter Partes
`Review (Paper 7, “Institution Decision” or “Inst. Dec.”) of U.S. Patent
`No. 8,887,308 B2 (Ex. 1001, “the ’308 patent”). Petitioner seeks rehearing
`of our determination not to institute inter partes review of the ’308 patent
`over the sole asserted ground based on Tiu1 and Fetterman.2 Req. Reh’g 2.
`In our Institution Decision, we determined that Petitioner had not explained
`sufficiently its arguments that the combination of Tiu and Fetterman teaches
`or suggests any of the following claim limitations: (1) “establishing an API
`communication between the apparatus of (a) and a database apparatus,”
`(Inst. Dec. 11–14), (2) “establishing the API communication requires a
`credential assigned to the apparatus of (a),” (id. at 14–15), and (3) “the
`computer readable authorization object is processed by the apparatus of (a)
`using a cross-referencing action . . . to determine one or more of a user
`access permission for the cloud digital content” (id. at 15–17). Petitioner
`asserts that our “Decision overlooks and misapprehends several aspects of
`the Petition.” Req. Reh’g 1. For the reasons that follow, Petitioner’s
`Request for Rehearing is denied.
`
`
`
`1 Tiu, U.S. Publ’n No. 2008/0222199 A1, published Sept. 11, 2008
`(Ex. 1004).
`2 Fetterman, U.S. Publ’n No. US 2008/0313714 A1, published Dec. 18, 2008
`(Ex. 1006).
`
`2
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`IPR2016-01519
`Patent 8,887,308 B2
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`
`II. BACKGROUND
`The Petition challenged claim 1 of the ’308 patent on the following
`ground: obviousness over Tiu, Fetterman, and the knowledge of a person of
`ordinary skill in the art under 35 U.S.C. § 103. Pet. 5, 34–67; see Inst. Dec.
`6 n.3.
`
`Petitioner relied on Fetterman for the first two disputed limitations:
`“establishing an API communication between the apparatus of (a) and a
`database apparatus,” (id. at 48–49), and “establishing the API
`communication requires a credential assigned to the apparatus of (a)” (id. at
`51–54). For the third disputed limitation, “the computer readable
`authorization object is processed by the apparatus of (a) using a cross-
`referencing action . . . to determine one or more of a user access permission
`for the cloud digital content,” Petitioner relied on Tiu. Id. at 65–67. We
`denied institution of review on the sole asserted ground because we were not
`persuaded by Petitioner’s arguments regarding the teachings of Fetterman or
`Tiu.
`
`III. STANDARD OF REVIEW
`When considering a request for rehearing of a decision, the Board
`reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c).
`An abuse of discretion occurs when a “decision [i]s based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d
`1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should
`be modified lies with the party challenging the decision.” Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its
`request for rehearing, the dissatisfied party must (1) “specifically identify all
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`IPR2016-01519
`Patent 8,887,308 B2
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`matters the party believes the Board misapprehended or overlooked” and (2)
`identify the place “where each matter was previously addressed.” 37 C.F.R.
`§ 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We
`address Petitioner’s arguments with these principles in mind.
`
`IV. ANALYSIS
`A. “establishing an API communication between
`the apparatus of (a) and a database apparatus”
`For this limitation, Petitioner relied on Fetterman, arguing that
`device 140 corresponds to the recited “apparatus of (a)” and that the web-
`based social network (e.g., Facebook) corresponds to the recited “database
`apparatus.” Pet. 48–49. In our Institution Decision, we were not persuaded
`by Petitioner’s arguments because the fact “[t]hat the API key [in Fetterman]
`is assigned to the vendor of the third-party application implies an API
`communication between Facebook and the vendor of the third-party
`application, not the user’s device [140] itself.” Inst. Dec. 13.
`Petitioner contends that “the Board misapprehended Petitioner’s
`argument,” which “explains that it is the user’s device that makes this http
`call, not the third-party application.” Req. Reh’g 6. According to Petitioner,
`“the YOUR_API_KEY, though it is vendor specific (exactly as described in
`the specification of the ‘308 Patent), nevertheless resides on the user’s
`device and is sent to Facebook in a communication from the user’s device to
`Facebook because the http call is being made by the user’s device.” Id.
`We are not persuaded by Petitioner’s contention. First, in our
`Institution Decision, we did consider Petitioner’s argument that “Fetterman
`teaches that the user device . . . itself calls to Facebook’s API from the user’s
`browser such that the user device communicates directly with Facebook and
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`IPR2016-01519
`Patent 8,887,308 B2
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`its databases using a Facebook API call.” Inst. Dec. 11; Pet. 48. We were
`not persuaded by this argument, however, because the portions of Fetterman
`cited by the Petition “describe an API communication between a web-based
`social network and a third party application, not a user device.” Inst. Dec.
`12; see also id. at 12–13 (discussing Ex. 1006 ¶¶ 23, 28, Fig. 2).
`Second, Petitioner does not direct us to persuasive evidence
`supporting its assertion that “the http call is being made by the user’s
`device.” Indeed, Figure 2 of Fetterman indicates that the call is made by the
`third party application. See Ex. 1006, Fig. 2. In particular, the procedure in
`Figure 2 provides that “[i]n order for a Facebook API client to use the API,
`the user of the client application must be logged in to Facebook. To
`accomplish this, direct your users to [the URL].” Id. Here, each of the
`terms “Facebook API client,” “client application,” and “your” refers to the
`third party application, not to the user’s device. See also id.
`(“YOUR_API_KEY” refers to “api_key” that is “[u]niquely assigned to the
`vendor”); Pet. 31 (“Figure 2, where the Facebook API documentation
`explains to the programmer of the third-party application”) (emphasis
`added); see Prelim. Resp. 28–29. Thus, it is the third party application (not
`the user’s device), that makes the call to “use the API.”
`Third, although Petitioner’s assertion that API keys in both the
`’308 patent and Fetterman are vendor specific may be true, it does not
`support Petitioner’s argument that Fetterman’s user device makes the API
`call to establish an API communication with Facebook. The ’308 patent
`describes an apparatus with an API key as either an Internet powered
`desktop or a browser based application, where the API key “[is] usually
`embedded in the source code of the apparatus,” which uses the API Key to
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`IPR2016-01519
`Patent 8,887,308 B2
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`establish a data exchange session with the API. Ex. 1001, 10:51–66. Given
`this description, we recognize that the ’308 patent contemplates a browser
`based application with an API key that is used to establish an API
`communication, such as the third party application described in Fetterman.
`Throughout its argument, however, Petitioner has treated Fetterman’s
`device 140 as corresponding to the recited “apparatus of (a).” Pet. 48–49.
`Petitioner also challenges our determination regarding Petitioner’s
`proffered reasoning for combining the teachings of Tiu and Fetterman. Req.
`Reh’g 3–6. In our Institution Decision, we explained that we were not
`persuaded by Petitioner’s reasoning because the login process in Fetterman
`seemed “more effort-intensive” than the login process in Tiu. Inst. Dec. 13
`(citing Pet. 48 (“[A] POSITA would have been motivated to use the simpler
`login API method provided by the Facebook API described by Fetterman in
`place of the more effort-intensive coding process required in Tiu whereby
`the third party server mediates the API.”); Ex. 1006, Fig. 2). Petitioner now
`contends that “the Board misapprehended the disclosure of Fetterman with
`respect to the login process of a web-based application and instead applied
`the operation of the login process for a desktop application,” adding that
`there is “no additional complexity for the user, as the Board mistakenly
`concluded.” Req. Reh’g 3, 6. We are not persuaded by Petitioner’s
`contention. Nevertheless, we need not revisit this additional challenge.
`Even if there were “no additional complexity for the user” and there were
`sufficient reason to combine the teachings of Fetterman and Tiu, we still
`remain unpersuaded by Petitioner’s foundational argument that Fetterman
`teaches “establishing an API communication between the apparatus of (a)
`and a database apparatus,” as discussed above.
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`Patent 8,887,308 B2
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`B. “establishing the API communication requires
`a credential assigned to the apparatus of (a)”
`For this limitation, Petitioner relied on Fetterman, arguing that the
`API key corresponds to the recited “credential assigned to the apparatus of
`(a).” Pet. 53. In our Institution Decision, we were not persuaded by
`Petitioner’s argument because the API key in Fetterman is assigned to the
`vendor of the third-party application, not to device 140 (which Petitioner
`identified as the recited “apparatus of (a)”). Inst. Dec. 14–15.
`Petitioner now contends that we overlooked the issue created by the
`proper claim construction of the disputed claim limitation “in view of the
`observation that the Board did not explicitly address the construction of the
`term ‘credential assigned to the apparatus [of] (a),” did not address Patent
`Owner’s own broad construction of the term, and did not discuss footnote 13
`of the Petition.” Req. Reh’g 8.
`We are not persuaded by Petitioner’s contention. Although we
`considered the entirety of the record, we are not obligated to respond in
`writing to every unpersuasive argument made before us. For instance,
`Petitioner argued in its Petition that the term “credential assigned to the
`apparatus of (a)” means “[d]ata that represents a permission to conduct a
`data exchange session between the apparatus of (a) and the database
`apparatus.” Pet. 20 (original emphasis omitted; additional emphasis added).
`Petitioner pointed out that this construction was offered by Patent Owner in
`a separate case. Id. In its Request for Rehearing, Petitioner notes that it also
`argued that Fetterman’s API key satisfies the recited “credential” because
`the API key “is the data that is ‘sent to Facebook as proof that the user is
`allowed to engage in API Communications’ and is therefore ‘data that
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`IPR2016-01519
`Patent 8,887,308 B2
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`represented a permission to conduct a data exchange session between the
`apparatus of (a) and the database apparatus.’” Req. Reh’g 7–8 (citing Pet.
`53). Claim 1, however, requires that the recited credential is both “assigned
`to the apparatus of (a)” and “recognized as a permission to conduct a data
`exchange session between the apparatus of (a) and the database apparatus.”
`Ex. 1001, 14:54–57. On its face, Petitioner’s construction does not give
`sufficient weight to the claim requirement that the credential be assigned to
`the apparatus of (a). In light of this deficiency, Petitioner did not explain
`persuasively why we should have adopted its proposed construction of
`“credential assigned to the apparatus of (a).”
`In footnote 13 of the Petition, Petitioner argued that “[n]othing in the
`claim language or specification of the ’308 Patent requires that the
`‘credential assigned to the apparatus of (a)’ be unique or particular to the
`apparatus of (a), i.e., unique or particular to the user device.” Pet. 54 n.13.
`In support of its argument, Petitioner explained that “[i]ndeed, as described
`by the ’308 Patent, the claimed credential, or API key, can be ‘issued to
`individual content providers,’ not to individual users or devices.” Id.
`Although the ’308 patent may not require the recited credential to be
`assigned to a user device, claim 1 explicitly requires the recited credential to
`be assigned to the apparatus of (a). As discussed above, Petitioner has
`identified Fetterman’s device 140 (i.e., a user device) as the recited
`“apparatus of (a).” Pet. 48–49. Given that identification, Petitioner did not
`explain persuasively in the footnote how Fetterman’s API key, which is
`assigned to the vendor of a third party application (rather than to the user
`device), teaches the recited “credential,” which must be assigned to the
`apparatus of (a).
`
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`IPR2016-01519
`Patent 8,887,308 B2
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`
`Petitioner further contends that “the Board overlooked the broadest
`reasonable construction of the terms ‘credential assigned to the apparatus
`[of] (a).’” Req. Reh’g 7. In particular, Petitioner contends that “the Board
`adopted an implicitly narrow meaning of ‘assigned’ such that the credential
`must be unique to the user’s device as opposed to being specific to the
`vendor but nevertheless useable as a credential by the device, as in the case
`of Fetterman’s Facebook API key.” Id. We are not persuaded by
`Petitioner’s contention. Claim 1 specifies a credential that is assigned to the
`apparatus of (a). The Specification of the ’308 patent supports the claim
`language, disclosing an “apparatus . . . with an API Key” required to
`establish a data exchange session with the API. Ex. 1001, 10:51–66. Given
`the claim language, as well as the cited disclosure of the ’308 patent,
`Petitioner does not explain persuasively why we have “adopted an implicitly
`narrow meaning” of the term “assigned.”
`
`C. “the computer readable authorization object is processed by
`the apparatus of (a) using a cross-referencing action . . . to
`determine one or more of a user access permission for
`the cloud digital content”
`For this limitation, Petitioner relied on Tiu, arguing that the third party
`content site username and password correspond to the recited “authorization
`object” and that computer 270 corresponds to the recited “apparatus of (a).”
`Pet. 65. In our Institution Decision, we were not persuaded by Petitioner’s
`arguments because “using third-party content site Flickr’s username and
`password for accessing content on the Flickr site implies a cross-referencing
`action at the Flickr site, not at computer 270.” Inst. Dec. 16.
`Petitioner now contends that “the Board overlooked [its] argument as
`it did not address the construction of ‘cross-referencing,’ and did not apply
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`IPR2016-01519
`Patent 8,887,308 B2
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`the broadest construction of that term.” Req. Reh’g 9–10; see also id. at 8
`(“the Board overlooked the broadest reasonable construction of the term
`‘cross-referencing’”). Petitioner explains that “the term ‘cross-referencing’
`is used in varied and inconsistent ways in the specification [of the ’308
`patent] and, thus, should be construed broadly,” such that the term “would
`encompass actions that occur on hardware other than the user’s device, but
`that further the acts of determining access permissions at the ‘apparatus of
`(a).’” Id. at 9 (citing Pet. 65–66, 65 n.15). According to Petitioner, “[i]t is
`sufficient to meet the claim term that the user’s device merely utilizes such
`cross-referenced information.” Id. We are not persuaded by Petitioner’s
`contention. Claim 1 explicitly requires the apparatus of (a) to use a cross-
`referencing action, not merely cross-referenced information. This is
`supported by the Specification of the ’308 patent, which teaches that “the
`apparatus will obtain the decryption key to first seek the MAC address
`record,” and, “[i]f the MAC address is found, then a cross-reference process
`is executed by comparing the MAC address retrieved from the metadata of
`the digital media file with the MAC address retrieved from the networking
`card connected to the apparatus or The App.” Ex. 1001, 13:41–47 (emphasis
`added) (cited at Pet. 65 n.15). If there is a match, the user then will be
`granted access rights. Id. at 13:47–48. Although Petitioner asserts that the
`Specification of the ’308 patent uses the term “cross-referencing” in “varied
`and inconsistent” ways, Petitioner did not in its Petition, nor may it now in
`its Request for Rehearing, address any such inconsistencies or provide
`persuasive explanation as to why “varied and inconsistent” use of the term
`compels a construction of the term that encompasses “merely utiliz[ing]
`such cross-referenced information” by the apparatus of (a).
`
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`IPR2016-01519
`Patent 8,887,308 B2
`
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion by declining to institute an inter partes review of the
`challenged claim of the ’308 patent.
`
`VI. ORDER
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing
`is denied.
`
`PETITIONER:
`
`Robert R. Laurenzi
`Shyamkrishna Palaiyanur
`KAYE SCHOLER LLP
`robert.laurenzi@kayescholer.com
`shyam.palaiyanur@kayescholer.com
`
`PATENT OWNER:
`
`Patrick D. Richards
`Clare Frederick
`RICHARDS PATENT LAW P.C.
`patrick@richardspatentlaw.com
`clare@richardspatentlaw.com
`
`
`11
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