Trials@uspto.gov
`571.272.7822
`
` Paper 12
`
`
` Entered: January 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`JOHN L. BERMAN,
`Patent Owner.
`____________
`
`Case IPR2016-01571
`Patent 5,523,791
`____________
`
`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
` Paper 12
`
`
` Entered: January 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`JOHN L. BERMAN,
`Patent Owner.
`____________
`
`Case IPR2016-01571
`Patent 5,523,791
`____________
`
`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01571
`Patent 5,523,791
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner requests rehearing of our Decision (Paper 10, “Dec.”)
`denying institution, under 35 U.S.C. § 325(d), of an inter partes review of
`claims 2–8 and 10–15 of U.S. Patent No. 5,523,791. Paper 11 (“Req.
`Reh’g”), 1. On rehearing, the burden of showing that the Decision should be
`modified lies with Petitioner, the party challenging the Decision. See 37
`C.F.R. § 42.71(d). “The request must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously address in a motion, an opposition, or a reply.”
`Id. Petitioner contends that: (1) the Board overlooked evidence when it
`declined institution under § 325(d) because the obviousness ground
`presented was never considered, during original examination or otherwise
`(Req. Reh’g 2–7); and (2) the Board overlooked newly presented evidence
`that establishes claims 2–8 and 10–15 as obvious based on Russell and Intel
`User’s Manual (id. at 7–10). Petitioner does not challenge our Decision to
`deny institution of an inter partes review of claims 9 and 16 (Dec. 14). See
`id at 1.
`In our Decision, we concluded that Petitioner’s obviousness
`challenges of claims 2–8 and 10–15 over Russell alone or in combination
`with Intel User’s Manual relied on the same or substantially the same prior
`art and arguments previously presented to the Office. Dec. 12. Petitioner
`argues that we overlooked that the Examiner never rejected the claims as
`obvious over Russell during prosecution, but rather rejected the claims as
`“anticipated” by Russell. Req. Reh’g 2–3. Petitioner asserts the Examiner’s
`comment in the Interview summary that newly added claims overcome
`Russell merely evidences consideration of anticipation for the newly added
`claims and there is no evidence the Examiner considered obviousness based
`on Russell. Id. at 3. Petitioner further contends that claim 5 (which later
`
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`IPR2016-01571
`Patent 5,523,791
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`issued as claim 2) differs from the original claims significantly in scope and
`content and introduced multiple additional “means-plus-function”
`limitations that never appeared in the original claims or specification. Id. at
`3–5.
`
`Petitioner’s assertion that the Examiner never considered Russell for
`obviousness, but rather only for anticipation, is speculative and is premised
`on the assumption that the Examiner blindly analyzed the reference for
`compliance with 35 U.S.C. § 102 while ignoring other statutory
`requirements of patentability such as non-obviousness under 35 U.S.C.
`§ 103. Petitioner presents no persuasive argument or evidence to support
`that assumption. Our conclusion that Russell was substantially considered
`during the prosecution of the challenged claims (Dec. 11) is unaltered by
`Petitioner’s unpersuasive argument that the Examiner did not consider
`Russell for obviousness.
`Furthermore, we disagree with Petitioner that the Examiner did not
`substantially consider Russell for the newly added claims. Our Decision
`noted that the Examiner Interview Summary evidences consideration by the
`Examiner of Russell for the newly added claims. Dec. 11. In particular, the
`Examiner stated “claims 5, 11, 12, and 18 also overcome Russell.” Ex.
`1006, 52. Petitioner’s claim map of the differences between “newly added
`claim 5” to the original claims is immaterial because the Examiner explicitly
`indicated that Russell was considered for the limitations of this “newly
`added claim,” even though it has limitations that differ from the original
`claims. See id.
`After concluding the same or substantially the same prior art or
`arguments were presented previously to the Office, our Decision determined
`it was appropriate to exercise our discretion to deny institution of these
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`IPR2016-01571
`Patent 5,523,791
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`grounds because Petitioner failed “to present any arguments distinguishing
`the Examiner’s prior consideration of Russell or to provide a compelling
`reason why we should readjudicate substantially the same prior art and
`arguments as those presented during prosecution and considered by the
`Examiner.” Dec. 12. Petitioner now newly argues that the Petition
`discusses and addresses teachings of Russell with respect to the “address
`generator means” limitation of claim 2 that are different from the teachings
`of Russell the Examiner applied. Req. Reh’g 7–8. Petitioner argues the
`“address generator means” limitation of claim 2 (old claim 5) was never
`considered over Russell and that the Petition used Intel User’s Manual to
`illustrate how a person of ordinary skill would understand how Russell
`meets the “address generator” limitation. Id. at 8–9.
`But these arguments do not change our conclusion that substantially
`the same prior art was presented to, and considered by, the Office. Rather,
`Petitioner’s arguments endeavor to distinguish the Examiner’s prior
`consideration of Russell to provide a reason why we should readjudicate the
`same prior art. We decline to alter our decision to exercise our discretion to
`deny institution based on these new arguments. Moreover, we disagree with
`Petitioner’s assertion the Examiner did not consider Russell for the “address
`generator means.” The “address generator means” was present in “newly
`added claim 5” (issued claim 2) when the Examiner stated “claim[] 5 . . .
`also overcomes[s] Russell.” See Ex. 1006, 42–43, 52.
`We conclude that Petitioner has not identified adequately any matter
`that we misapprehended or overlooked.
`
`In view of the foregoing, it is:
`ORDERED that Petitioner’s Request for Rehearing request is denied.
`
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`IPR2016-01571
`Patent 5,523,791
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`PETITIONER:
`
`P. Andrew Riley
`Yoonhee Kim
`Jonathan Stroud
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`Andrew.riley@finnegan.com
`Yoonhee.kim@finnegan.com
`jonathan@unifiedpatents.com
`
`PATENT OWNER:
`
`John Weatherspoon
`BIBBY, MCWILLIAMS, AND KEARNEY, PLLC
`jweatherspoon@kmkpllc.com
`
`5
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