Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper No. 19
` Entered: July 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC., and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00058
`Patent 7,804,948 B2
`____________
`
`
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and
`JEFFREY S. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper No. 19
` Entered: July 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC., and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00058
`Patent 7,804,948 B2
`____________
`
`
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and
`JEFFREY S. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`DECISION
`On Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`
`I. INTRODUCTION
`Patent Owner, Uniloc Luxembourg S.A., filed a Request for
`Rehearing (Paper 18, “Req. Reh’g”) of our Final Written Decision (“FWD”)
`dated April 6, 2018, which held that claims 1, 2, 5–10, 12, 18–26, 29, 30, 36,
`37, 49–53, 65, and 66 of US Patent No. 7,804,948 B2 (Ex. 1001, “the ’948
`patent”) are unpatentable.
`In its Request, Patent Owner argues that the FWD misapprehends the
`significance of the prosecution history when considering the teachings of
`Haims. Req. Reh’g 3–5 (citing Ex. 1002, 80–81).
`For the reasons set forth below, Patent Owner’s Request for
`Rehearing is denied.
`
`II. STANDARD OF REVIEW
`Section 37 C.F.R. § 42.71(d) states the following:
`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.
`III. DISCUSSION
`Patent Owner, citing to the prosecution history of the ’948 patent (Ex.
`1002), contends that the FWD misapprehended that Patent Owner
`unambiguously disclaimed a selection process disclosed by Haims during
`prosecution, and that Hamberg (Ex. 1005) uses the exact same selection
`process disclosed by Haims. Req. Reh’g 3. Patent Owner’s challenge does
`not meet the standard set forth for a Request for Rehearing, which requires a
`party to “identify . . . the place where each matter was previously addressed
`
`
`
`2
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). As Patent
`Owner did not address this issue in a motion, an opposition, or a reply, the
`Board could not have misapprehended Patent Owner’s argument.
`Even if we consider Patent Owner’s contention that Patent Owner
`disclaimed the selection process disclosed by Haims, we find this contention
`unpersuasive. “[T]he PTO is under no obligation to accept a claim
`construction proffered as a prosecution history disclaimer, which generally
`only binds the patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d
`973, 978 (Fed. Cir. 2014). Assuming arguendo that the doctrine of
`prosecution history disclaimer applies to this inter partes review, the
`purported disavowal of claim scope must be unambiguous, clear, and
`unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v.
`Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations
`omitted). On the record before us, we conclude that the prosecution history
`does not evidence such an unambiguous, clear, and unmistakable disavowal.
`We read the cited portion of the prosecution history as presenting
`arguments to the Examiner to distinguish the claim from Haims based on the
`claim’s recited limitations. At most, the applicant’s arguments in the
`prosecution history merely shed light on the claim limitations that applicant
`thought were not taught by Haims. We determine that one of ordinary skill
`in the art would not have understand the applicant to have made a clear and
`unmistakable disavowal of any subject matter beyond that already reflected
`in the language of the claim, which we considered in evaluating Petitioner’s
`challenges. In light of this, we are not persuaded that we misapprehended or
`overlooked the significance of the prosecution history.
`
`
`
`3
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`
`As Patent Owner recognizes, Petitioner relies on a combination of
`Hamberg and Lamb. See Reh’g Req. 3–4.1 Therefore, Patent Owner’s
`allegation that Haims teaches the same selection process as Hamberg, even
`if true, improperly shifts focus from the combination of Hamberg and Lamb.
`Patent Owner alleges Petitioner does not provide proper motivation to
`combine Hamberg and Lamb. Reh’g Req. 3–4 (arguing “Petitioner parsed”
`and “Petitioner argued”). These allegations fail to address what the FWD
`overlooks or misapprehends. In any event, the FWD addresses motivation
`and the combination. See, e.g., FWD 23–34.
`Contrary to Patent Owner’s related arguments (id.at 2), Hamberg does
`not teach away from the claims. The FWD also address this argument.
`FWD 27–30. Patent Owner’s rehearing request fails to allege what the FWD
`overlooks with respect to teaching away.
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner did not show that the Board
`misapprehended or overlooked any arguments or evidence presented by
`Patent Owner in determining that claims 1, 3–6, 8–11, and 13–15 of US
`Patent No. 7,804,948 B2 (Ex. 1001, “the ’948 patent”) are unpatentable.
`V. ORDER
`
`Accordingly, it is
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`1 We refer to pages starting after the header page. The Rehearing Request
`improperly numbers the first page “2” and all the other pages “1.”
`
`
`
`4
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`
`
`
`PETITIONER:
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`Theodore Foster
`ipr.theo.foster@haynesboone.com
`
`Dina Blikshteyn
`dina.blikshteyn.ipr@haynesboone.com
`
`Jamie McDole
`jamie.mcdole@haynesboone.com
`
`
`PATENT OWNER:
`Sean Burdick
`sean.burdick@unilocusa.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`
`
`5
`
`
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