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`Paper: 55
`Entered: June 22, 2018
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01643
`Patent 6,775,745 B1
`____________
`
`
`
`Before JEFFREY S. SMITH, GEORGIANNA BRADEN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`

`

`IPR2016-01643
`Patent 6,775,745 B1
`
`
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`I. INTRODUCTION
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`Patent Owner filed a Request for Rehearing (Paper 52, “Req. Reh’g”)
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`of our Final Written Decision of March 26, 2018 (Paper 51, “FWD”), which
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`held that claims 1, 2, 4, 12, and 14 of US Patent No. 6,775,745 B1 (Ex.
`
`1001, the “’745 patent”) are unpatentable. In its Request, Patent Owner
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`argues that the FWD improperly relied on Petitioner’s Reply evidence in
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`finding the challenged claims unpatentable. Req. Reh’g 1.
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`For the reasons set forth below, Patent Owner’s Request for
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`Rehearing is denied.
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`II. STANDARD OF REVIEW
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`Section 37 C.F.R. § 42.71(d) states:
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`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. 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.
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`III. DISCUSSION
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`Patent Owner contends that the Board failed to apply a concrete legal
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`standard for assessing whether Petitioner’s Reply improperly raises new
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`evidence. Req. Reh’g 4. According to Patent Owner, the Board erroneously
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`applied Idemitsu Kosan Co., LTD. v. SFC Co. LTD., 870 F.3d 1376, 1381
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`(Fed. Cir. 2017) in stating that “Petitioner’s arguments . . . are not beyond
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`the proper scope of a reply because we find that they fairly respond to Patent
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`Owner’s arguments raised in Patent Owner’s Response.” Req. Reh’g 4–5
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`(citing FWD 50).
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`2
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`

`

`IPR2016-01643
`Patent 6,775,745 B1
`
`
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`In Idemitsu, the Federal Circuit stated that:
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`[W]hat Idemitsu characterizes as an argument raised “too late” is
`simply the by-product of one party necessarily getting the last
`word. If anything, Idemitsu is the party that first raised this issue,
`by arguing—at least implicitly—that Arakane teaches away from
`non-energy-gap combinations. SFC simply countered, as it was
`entitled to do. To the extent Idemitsu suggests that the Board
`could not reach a counterargument because it was not
`preemptively addressed by the petition or institution decision,
`Idemitsu is plainly mistaken. See Genzyme Therapeutic Prod.
`Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed.
`Cir. 2016) (“There is no requirement, either in the Board’s
`regulations, in the APA, or as a matter of due process, for the
`institution decision to anticipate and set forth every legal or
`factual issue that might arise in the course of the trial.”).
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`870 F.3d at 1381.
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`According to Patent Owner, its Response, unlike that of Idemitsu,
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`contained “garden-variety ‘missing limitation’ arguments,” and “argued
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`simply that the evidence submitted with the Petition did not show that the
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`alleged prior art discloses all of the claim limitations.” Req. Reh’g 5–6.
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`However, Patent Owner’s Response asserted that “[o]ne cannot combine
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`elements from different embodiments to support a finding of anticipation.”
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`PO Resp. 30 (citing NetMoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371
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`(Fed. Cir. 2008)). Contrary to Patent Owner’s contention, asserting that the
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`relied-upon disclosures were from different embodiments and could not be
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`combined to support a finding of anticipation is not a garden-variety missing
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`limitation argument. Here, as in Idemitsu, Patent Owner “is the party that
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`first raised this issue,” and Petitioner “simply countered, as it was entitled to
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`do.” 870 F.3d at 1381. Patent Owner has not persuasively explained why
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`Petitioner’s Reply to Patent Owner’s arguments pertaining to NetMoneyIN,
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`3
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`

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`IPR2016-01643
`Patent 6,775,745 B1
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`Inc. was beyond the scope of a proper reply.
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`Patent Owner contends that the Board should have applied the
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`concrete legal standard set forth in the Trial Practice Guide. Req. Reh’g 6–
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`10. The Trial Practice Guide states that “a reply that raises a new issue or
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`belatedly presents evidence will not be considered and may be returned.” 77
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`Fed. Reg. 48756, 48767. As we discussed above, however, Patent Owner,
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`not Petitioner, first raised the issue of whether the allegedly different
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`embodiments could be combined to support a finding of anticipation. We
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`disagree that we did not follow the legal standard in the Trial Practice Guide.
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`Patent Owner contends that the Reply Declaration of Dr. Franzon
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`asserts a new anticipation theory that “a reference may still anticipate if that
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`reference teaches that the disclosed components or functionalities may be
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`combined and one of skill in the art would be able to implement the
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`combination” and provides new testimony that “the disclosed components or
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`functionalities in Karedla may be easily combined and implemented.” Req.
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`Reh’g 10–11 (citing Ex. 1016 ¶¶ 7, 82–88). Patent Owner, however, “is the
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`party that first raised this issue,” and Petitioner “simply countered, as it was
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`entitled to do.” Idemitsu, 870 F.3d at 1381. Patent Owner has not
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`persuasively explained why Petitioner’s Reply to Patent Owner’s arguments
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`pertaining to NetMoneyIN, Inc. was beyond the scope of a proper reply.
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`Patent Owner, in a footnote, tells us that it is disconcerted by our
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`finding that “a skilled artisan would at once envisage using a read-ahead
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`strategy with a variation on LRU algorithm, such as the frequency-based
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`LRU algorithm of Karedla.” Req. Reh’g 11 n.1(citing FWD 31). According
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`to Patent Owner, there is no evidence in the record supporting our finding,
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`4
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`

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`IPR2016-01643
`Patent 6,775,745 B1
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`either in the Petition or the Reply. Id. Patent Owner’s contention, however,
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`disregards the evidence cited in the Petition, which we cited in the FWD to
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`support our finding. See Pet. 21–22 (citing Ex. 1004, 8; Ex. 1002 ¶ 82);
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`FWD 28–31 (citing Ex. 1004, 8; Ex. 1002 ¶ 82).
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`Patent Owner contends that the Board erred in denying its request for
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`authorization to file a sur-reply to rebut Petitioner’s arguments and evidence
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`presented in the Reply. Req. Reh’g 13–14. Patent Owner, however, did
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`address the issue of whether embodiments could be combined to support a
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`finding of anticipation in its Response. Patent Owner’s contention that it
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`should have an additional chance to address this issue is “simply the by-
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`product of one party necessarily getting the last word.” Idemitsu, 870 F.3d
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`at 1381. Having determined that Petitioner’s Reply briefing and evidence
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`were not improper, we discern no reason that Patent Owner, who does not
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`bear the burden of persuasion on patentability (see 35 U.S.C. § 316(e)),
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`should be entitled to the last word.
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner did not show that the Board
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`misapprehend or overlooked any arguments or evidence presented by Patent
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`Owner in determining that claims 1, 2, 4, 12, and 14 of the ’745 patent are
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`unpatentable.
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`5
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`

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`IPR2016-01643
`Patent 6,775,745 B1
`
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`PETITIONERS:
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`Roshan Mansinghani
`roshan@unifiedpatents.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`James Stein
`james.stein@finnegan.com
`
`Lionel Lavenue
`lionel.lavenue@finnegan.com
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`
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`PATENT OWNER:
`
`John R. King
`2jrk@knobbe.com
`
`Ted M. Cannon
`2tmc@knobbe.com
`
`Tim Seeley
`tims@intven.com
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`James Hietala
`jhietala@intven.com
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`Brenton Babcock
`2brb@knobbe.com
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`6
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