Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper: 69
`Entered: October 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY INC., ALIBABA.COM HONG KONG LTD., AND
`BOOKING.COM B.V.,
`Petitioner,
`
`v.
`
`GLOBAL EQUITY MANAGEMENT (SA) PTY. LTD.,
`Patent Owner.
`___________
`
`Case IPR2016-01828
`Patent 6,690,400 B1
`____________
`
`
`Before KARL D. EASTHOM, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
` DECISION
`Granting-in-Part Patent Owner’s Motion for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper: 69
`Entered: October 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY INC., ALIBABA.COM HONG KONG LTD., AND
`BOOKING.COM B.V.,
`Petitioner,
`
`v.
`
`GLOBAL EQUITY MANAGEMENT (SA) PTY. LTD.,
`Patent Owner.
`___________
`
`Case IPR2016-01828
`Patent 6,690,400 B1
`____________
`
`
`Before KARL D. EASTHOM, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
` DECISION
`Granting-in-Part Patent Owner’s Motion for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2016-01828
`Patent 6,690,400 B1
`
`
`
`
`
`
`Patent Owner filed a Motion for Rehearing (Paper 65) of our Final
`Written Decision (Paper 64), arguing that the Supreme Court’s subsequent
`ruling in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), made it improper
`for us to grant inter partes review as to claims 1 and 2, but deny review as to
`claims 16 and 28. Paper 65, 1–2 (“While institution was denied on
`independent claims 16 and 28 due to § 112 issues, it is respectfully
`submitted that, in light of the decision in SAS, such failure to institute was
`improper.”). Thus, according to Patent Owner, “the prior art should have
`been applied to independent claims 16 and 28, especially in light of the SAS
`decision which specifically strikes down partial review of a petitioner’s
`request.” Id. at 2.
`For the reasons explained below, we grant Patent Owner’s request for
`rehearing to the extent we (1) modify our Institution Decision to institute on
`all of the challenged claims, including claims 16 and 28, and all of the
`grounds presented in the Petition, including Ground 2; and (2) modify our
`Final Written Decision to include a determination with respect to claims 16
`and 28. We deny, however, Patent Owner’s request for rehearing to the
`extent we decline to read claims 16 and 28 on the prior art.
`
`I. PROCEDURAL HISTORY
`Petitioner filed the Petition on September 22, 2016, requesting review
`of claims 1, 2, 16 and 28 of U.S. Patent No. 6,690,400 (“the ’400 patent”) as
`obvious under 35 U.S.C. § 103 in view of PartitionMagic 3.0 User Guide
`(Ground 1) and PartitionMagic 4.0 User Guide (Ground 2). Paper 1, 18. On
`April 21, 2017, we instituted a review of claims 1 and 2 based on Ground 1,
`but did not institute as to claims 16 and 28, or as to Ground 2. Paper 14
`(“Inst. Dec.”). We declined to institute with respect to claims 16 and 28
`
`2
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`IPR2016-01828
`Patent 6,690,400 B1
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`because we determined that the scope and meaning of certain limitations in
`those claims could not be determined. Id. at 10–12.
`On January 22, 2018, a hearing was held, a transcript of which has
`been made part of the record. Paper 60 (“Tr.”). On April 17, 2018, we
`issued a Final Written Decision holding claims 1 and 2 unpatentable based
`on Ground 1. Paper 64. On April 24, 2018, the Supreme Court issued its
`decision in SAS. On May 17, 2018, Patent Owner filed its Motion for
`Rehearing.1
`
`II. STANDARD OF REVIEW
`When reconsidering a decision on institution, the Board reviews the
`decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.
`See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir.
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of
`showing a decision should be modified lies with the party challenging the
`decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`In a request for rehearing, in general, including for final written
`decisions, the dissatisfied party must, in relevant part, “specifically identify
`all matters the party believes the Board misapprehended or overlooked.”
`
`1 Pursuant to the Board’s April 26, 2018, “Guidance on the impact of SAS on
`AIA Trial Proceedings,” the parties filed a joint motion to withdraw Ground
`2 from the Petition. Paper 67. We granted that motion. Paper 68.
`
`3
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`IPR2016-01828
`Patent 6,690,400 B1
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`37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at
`48,768. We address Patent Owner’s arguments with these principles in
`mind.
`
`
`
`
`
`III. ANALYSIS
`A. Whether We Must Address Claims 16 and 28
`Patent Owner argues that the Supreme Court’s ruling in SAS, which
`issued after our Final Written Decision, made it improper for us to deny
`review as to claims 16 and 28, but grant review as to claims 1 and 2. Paper
`65, 1–2.
`In SAS, the Supreme Court held that a decision to institute under 35
`U.S.C. § 314 may not institute on less than all claims challenged in the
`petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we
`determined that Petitioner demonstrated a reasonable likelihood that it would
`establish that at least one of the challenged claims of the U.S. Patent No.
`8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme
`Court’s ruling in SAS, we now modify our Institution Decision to institute on
`all of the challenged claims, including claims 16 and 28, and on all of the
`grounds presented in the Petition, including Ground 2, and we determine, in
`this Decision on Patent Owner’s Motion for Rehearing, whether claims 16
`and 28 have been shown, by a preponderance of the evidence, to be
`unpatentable.
`
`B. Whether We Must Apply
`Claims 16 and 28 to the Prior Art
`Patent Owner argues that “the prior art should have been applied to
`independent claims 16 and 28, especially in light of the SAS decision which
`specifically strikes down partial review of a petitioner’s request” (Paper 65,
`
`4
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`IPR2016-01828
`Patent 6,690,400 B1
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`2) because “it is not within [the Board’s] jurisdiction to address § 112 issues
`in an IPR” (id. (citing Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2141-42 (2016)).
`Patent Owner misreads Cuozzo, which states, “our interpretation [does
`not] enable the agency to act outside its statutory limits by, for example,
`cancelling a patent claim for ‘indefiniteness under § 112’ in inter partes
`review.” Cuozzo Speed Techs. 136 S. Ct. at 2141–42 (emphasis added).
`Thus, while Cuozzo held that in an IPR proceeding the Board may not
`cancel a claim under § 112, Cuozzo does not require the Board to ignore
`issues arising under § 112 when determining whether a challenged claim is
`unpatentable under § 102 or § 103.
`Moreover, Patent Owner’s argument is predicated on the false premise
`that, if we cannot determine the scope of a claim for § 112 reasons, then we
`must find it unpatentable under § 112. Patent Owner ignores the possibility
`that we may determine that Petitioner has not met its burden with respect to
`such claims.
`Claim 16 of the ’400 patent recites “means for configuring said at
`least one partition of said at least one secondary storage device through said
`secondary storage partitions window,” “means for manipulating said at least
`one cabinet record through said cabinet visible partition window,” and
`“means for modifying said at least one cabinet record through said cabinet
`visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the
`district court found in its claim construction opinion that the ’400 patent
`does not provide structure corresponding clearly to the functions of these
`limitations. Ex. 1010, 49–61. We have reviewed and considered the district
`court’s analysis and findings and we concur with the district court’s
`
`5
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`IPR2016-01828
`Patent 6,690,400 B1
`
`conclusion. We are unable to discern structure in the ’400 patent that
`corresponds clearly to the functions recited in the “means for” limitations of
`claim 16.
`Claim 28 recites similarly “program code for configuring said at least
`one partition of said at least one secondary storage device through a
`secondary storage partitions window,” “program code for manipulating said
`virtual cabinet record through said cabinet visible partition window,” and
`“program code for means for modifying said at least one cabinet record
`through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The
`district court also found that the ’400 patent did not provide structure
`corresponding clearly to the function of these limitations. Ex. 1010, 49–61.
`We have reviewed and considered the district court’s analysis and findings
`and we concur with the district court’s conclusion. We are unable to discern
`structure in the ’400 patent that corresponds clearly to the functions recited
`in the “program code for” limitations of claim 28.
`If our unpatentability analysis requires “considerable speculation as to
`the meaning and assumptions as to the scope” of the claims, In re Steele, 305
`F.2d 859, 862 (CCPA 1962), the differences between the claimed invention
`and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v.
`MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB
`Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the
`proposition that “the prior art grounds of unpatentability must fall, pro
`forma, because they are based on speculative assumption[s] as to the
`meaning of the claims” and reasoning that “an obviousness determination
`based on less than all of the claimed elements is speculative as to the
`meaning or scope of the claims”). In other words, “[w]ithout ascertaining
`
`6
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`IPR2016-01828
`Patent 6,690,400 B1
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`the proper claim scope, we cannot conduct a necessary factual inquiry for
`determining obviousness—ascertaining differences between the claimed
`subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966)).
`In this case, the scope and meaning of the terms “means for
`configuring said at least one partition of said at least one secondary storage
`device through said secondary storage partitions window,” “means for
`manipulating said at least one cabinet record through said cabinet visible
`partition window,” and “means for modifying said at least one cabinet
`record through said cabinet visible partition window,” as recited in claim 16,
`and the terms “program code for configuring said at least one partition of
`said at least one secondary storage device through a secondary storage
`partitions window,” “program code for manipulating said virtual cabinet
`record through said cabinet visible partition window,” and “program code
`for means for modifying said at least one cabinet record through said cabinet
`visible partition window,” as recited in claim 28, cannot be determined
`without “considerable speculation . . . and assumptions,” which, in turn,
`would lead to an obviousness determination “based on such speculations and
`assumptions.” See Steele, 305 F.2d 859, 862–63 (“[W]e do not think a
`rejection under 35 U.S.C. § 103 should be based on such speculations and
`assumptions . . .”).
`We are unable to discern structure in the ’400 patent that corresponds
`clearly to the functions recited in the limitations of claim 16 and claim 28.
`Moreover, Patent Owner fails to point to any such structure in its Motion for
`Rehearing.
`
`7
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`IPR2016-01828
`Patent 6,690,400 B1
`
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`
`
`Because the scope and meaning of these limitations cannot be
`determined, we cannot ascertain the differences between the claimed
`invention and the prior art for purposes of an obviousness analysis. Because
`we cannot ascertain the differences between the claimed invention and the
`prior art, Petitioner has not met its burden of showing, by a preponderance of
`the evidence that claims 16 and 28 are unpatentable.
`C. Ground 2
`Because we granted previously the parties’ joint motion to withdraw
`Ground 2 (Paper 68; see n.1 supra), we do not reach Ground 2 here.
`
`IV. CONCLUSION
`For the foregoing reasons, we modify our Institution Decision to
`institute on all of the challenged claims, including claims 16 and 28, and on
`all of the grounds presented in the Petition, including Ground 2, and we
`modify our Final Written Decision to include a determination that claims 16
`and 28 have not been shown, by a preponderance of the evidence, to be
`unpatentable.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion for Rehearing is granted-in-
`part to the extent our Institution Decision is modified to include review of
`all challenged claims and all grounds presented in the Petition; and
`FURTHER ORDERED that claims 16 and 28 have not been shown to
`be unpatentable.
`
`
`
`
`
`8
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`IPR2016-01828
`Patent 6,690,400 B1
`
`
`PATENT OWNER:
`
`Benjamin Weed
`Jackson Ho
`K&L GATES LLP
`benjamin.weed.ptab@klgates.com
`jackson.ho@klgates.com
`
`Todd Siegel
`Andrew Mason
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`
`Brett Watkins
`Lance Yang
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`brettwatkins@quinnemanuel.com
`lanceyang@quinnemanuel.com
`
`
`PATENT OWNER:
`
`Mark Cantor
`Richard J. Cantor
`Isaac T. Slutsky
`BROOKS KUSHMAN P.C.
`mcantor@brookskushman.com
`rjcantor@brookskushman.com
`islutsky@brookskushman.com
`
`
`9
`
`
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