Trials@uspto.gov Paper 10
`571-272-7822
`
`Date Entered: July 6, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY
`Petitioner,
`v.
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`____________
`
`Case IPR2017-00144; Patent 7,200,582 B1
`Case IPR2017-00146; Patent 5,825,651
`Case IPR2017-00147; Patent 7,464,064 B1
`Case IPR2017-00148; Patent 6,405,308 B1
`Case IPR2017-00149; Patent 6,675,294 B1
`Case IPR2017-00150; Patent 7,882,057 B1
` Case IPR2017-00151; Patent 7,882,057 B11
`____________
`
`Before KEVIN F. TURNER, JAMES B. ARPIN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`1 This Decision applies to each of the captioned cases. Because the same
`arguments and dispositive issues are present in each case, we exercise our
`discretion to issue one Decision to be entered in each case. The parties are
`not authorized to use such a multiple case caption.
`
`
`
`

`

`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`
`A. INTRODUCTION
`
`
`
`Ford Motor Company (“Petitioner”) filed Requests for Rehearing
`(e.g., IPR2017-00146, Paper 8, “Req.”)2 of our decisions (e.g., IPR2017-
`00146, Paper 7, “Dec.”) in each of the captioned cases, which denied
`institution of inter partes review of the challenged claims of each of the
`patents at issue (e.g., U.S. Patent No. 5,825,651 (IPR2017-00146, Ex. 1101,
`“the ’651 patent”)). Petitioner argues that (1) we misapplied the binding
`precedent of the U.S. Court of Appeals for the Federal Circuit (“the Federal
`Circuit”) and the Patent Trial and Appeal Board (“the PTAB”) by refusing to
`hold that the dismissal “without prejudice” of the Versata action has no legal
`effect under 35 U.S.C. § 315(b) and must be treated as if the action had
`never been filed, and (2) we misapplied the law in holding that there is a
`“continuous chain of assertion” exception to the precedential rule that a
`complaint dismissed “without prejudice” has no legal effect under 35 U.S.C.
`§ 315(b). Req. 1.
`We have considered Petitioner’s Requests for Rehearing, and, for the
`reasons set forth below, Petitioner’s Requests are denied.
`
`
`2 Because each of the Requests for Rehearing presents substantially identical
`arguments, we refer herein to the arguments and evidence cited in the
`Request for Rehearing in IPR2017-00146 and to the papers and exhibits
`filed in that case. However, these citations correspond to substantially
`similar portions of corresponding papers and exhibits filed in the other
`captioned cases.
`
`2
`
`
`

`

`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`
`B. STANDARD OF REVIEW
`
`
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” An abuse of
`discretion occurs when a “decision was 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. Inc., 840 F.2d 1565,
`1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with
`specificity, all matters that the moving party believes the Board
`misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`C. DISCUSSION
`1. Failure to Follow Binding Precedent
`
`Petitioner argues that we misapplied binding precedent to the
`undisputed facts. In particular, Petitioner argues that “the Federal Circuit
`has held that the effect of a dismissal without prejudice is that it leaves the
`parties as if the underlying complaint had never been filed.” Req. 1 (citing
`Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville Assoc.,
`Ltd. P’ship v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999)). Further,
`Petitioner argues that “[t]he PTAB has recognized, quoted, and adopted this
`law as precedent, reiterating that the effect of a dismissal without prejudice
`is to leave the parties as if the case had never been filed.” Id. at 1–2 (citing
`Oracle Corp. v. Click-To-Call Tech’s LP, IPR2013-00312, slip op. at 17
`(Oct. 30, 2013) (Paper 26) (“The Federal Circuit consistently has interpreted
`the effect of such dismissals [without prejudice] as leaving the parties as
`though the action had never been brought.”) (precedential as to quoted
`3
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`section) (citations omitted)).
`Petitioner acknowledges that “[a]n exception [to these precedential
`decisions] arises in cases consolidated under Rule 42 because the defendant
`remains answerable to the original complaint.” Id. at 2. Nevertheless,
`Petitioner argues that this exception is not applicable here.
`As set forth in our decisions denying institution, the relevant facts
`regarding the timing of the related actions between Petitioner and Patent
`Owner are largely undisputed. See Dec. 2–3; Req. 3–4. Petitioner filed a
`first action (i.e., “the Ford action”) in the Eastern District of Michigan (“the
`Michigan court”) on February 19, 2015, seeking a declaratory judgment of
`non-infringement of three Versata patents, including patents challenged
`(e.g., the ’651 patent) in the captioned cases. Paper 2 (“Pet.”), vii; see Ex.
`1129. In a later-filed Eastern District of Texas (“the Texas court”) case (i.e.,
`“the Versata action”), filed on May 7, 2015, Patent Owner asserted
`infringement by Petitioner of patents challenged (e.g., the ’651 patent) in the
`captioned cases. Pet. vii; Ex. 2001. Petitioner requested an extension of
`time to file an answer and acknowledged the service date of the complaint in
`the Versata action as May 7, 2015. Paper 6 (“Prelim. Resp.”), 5; Ex. 2007
`(“Unopposed Application for Extension of Time to Answer Complaint”).
`On October 14, 2015, the Michigan court denied Patent Owner’s motion to
`dismiss or alternatively transfer the Ford action to the Eastern District of
`Texas. Ex. 1132, 2; Pet. 2; Prelim. Resp. 5–6. On October 28, 2015 (i.e.,
`one year before Petitioner filed the petitions for inter partes review in the
`captioned cases), Patent Owner answered Petitioner’s declaratory judgment
`
`4
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`complaint in Michigan and asserted challenged patents, including the ’651
`patent, by filing infringement counterclaims in the Ford action. Pet. 2;
`Ex. 1130 (“Defendant’s Answer . . . [and] Counterclaims”). On November
`5, 2015, the Texas court “ordered the parties to file notice of any good faith
`reasons that [the Versata lawsuit] should not be dismissed, without
`prejudice, so that the issues may [be] dealt with in the Michigan court.” Pet.
`2 (emphasis added; quoting Ex. 1132 (additional text added by Petitioner)).
`On December 3, 2015, noting that “neither party has provided arguments
`against dismissing the case,” the Texas court “ORDERED that this case is
`DISMISSED without prejudice to Plaintiff’s ability to assert its claims in the
`Michigan court.” Ex. 1134 (emphasis added); Pet. 2; see Ex. 1133, 1.
`The doctrine of stare decisis or the binding effect of precedent
`requires a tribunal to recognize a rule of law (i.e., a precedential decision) in
`one case enunciated in an earlier case by that tribunal or by a higher tribunal,
`if the facts and issues involved in both cases are sufficiently similar.3 As
`Chief Justice Rehnquist explained:
`[w]hile most often invoked to justify a court’s refusal to
`reconsider its own decisions, [stare decisis] applies a fortiori to
`enjoin lower courts to follow the decision of a higher court. This
`principle is so firmly established in our jurisprudence that no
`lower court would deliberately refuse to follow the decision of a
`higher court. But cases come in all shapes and varieties, and it
`is not always clear whether a precedent applies to a situation in
`
`
`3 “[I]n the large, precedent consists in an official doing over again under
`similar circumstances what has been done by him or his predecessor
`before.” K.N. LLEWELLYN, THE BRAMBLE BUSH: ON OUR LAW AND ITS
`STUDY, 70 (8th prtg. 1985) (emphasis added).
`5
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`
`which some of the facts are different from those in the decided
`case. Here lower courts must necessarily make judgments as to
`how far beyond its particular facts the higher court precedent
`extends.
`Hubbard v. U.S., 514 U.S. 695, 720 (1995) (emphasis added; Rehnquist,
`C.J., dissenting). Thus,
`“[t]he doctrine of stare decisis rests on the underlying philosophy
`that any judicial statement, however broad, must be understood
`in its context, and as applying to the facts of the case. It is not to
`be expanded to embrace, as well, a factual situation other than,
`different from, and contrary to, the facts of the case to which the
`language applies and is used.”
`U.S. v. R.J. Saunders & Co., 42 CCPA 128, 136 (1955) (emphasis added;
`quoting the Government’s brief with approval; not reported in the Federal
`Reporter); see Deckers Corp. v. U.S., 752 F.3d 949, 962 (Fed. Cir. 2014)
`(quoting Saunders, 42 CCPA at 136, with approval).
`
`In our decisions denying institution, we considered the factual
`situations presented in Oracle, Bonneville, and Graves and compared them
`to the factual situations presented in the instant proceedings. We determined
`that “[h]ere, unlike in Oracle, Bonneville, and Graves, the dismissal without
`prejudice was not pursuant to Rule 41(a), was not ‘voluntary,’ and, most
`importantly, did not leave the parties as though the action had never been
`brought.” Dec. 7; see Req. 4. Petitioner argues, however, that “it is
`irrelevant why a court dismissed the action if it was dismissed without
`prejudice.” Req. 5. We disagree because the doctrine of stare decisis
`demands that we consider the similarities in and differences between both
`the issues presented and the factual situations of the instant proceedings and
`
`6
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`those of the precedential decisions in order to determine whether the same
`results are required here.
`Petitioner would have us apply the words “without prejudice” to
`talismanic effect, by which the consequence of the service of an
`infringement complaint that occurred more than one year prior to the filing
`of a petition is magically erased from every case in which those words
`appear and the bar of Section 315(b) disappears. This is simply not how
`precedent is applied. Rather, as we noted in our decisions denying
`institution, the Board consistently has looked to the underlying facts to
`determine what effect should be given to a dismissal without prejudice.
`Dec. 10–11; see Apple, Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-
`00319, slip op. 6–7 (PTAB June 12, 2014) (Paper 12) (“Apple I”), reh’g
`denied (Paper 14) (“Apple II”)4 (collectively, “Apple”); Gordon Howard
`Assocs., Inc. v. Lunareye, Inc., Case IPR2014-01213, slip op. at 13–15
`(PTAB Feb. 3, 2015) (Paper 11) (“Lunareye”); Nautique Boats Co. v.
`Malibu Boats, LLC, Case IPR2014-01045, slip op. at 10 (PTAB Nov. 26,
`2014) (Paper 13); Histologics, LLC v. CDx Diagnostics, Inc., Case IPR2014-
`00779, slip op. at 5 (PTAB Sept. 12, 2014) (Paper 6); eBay, Inc. v. Adv.
`Auctions LLC, Case IPR2014-00806, slip op. at 6–8 (PTAB Sept. 25, 2014)
`(Paper 14). The Board, however, has not made the decisions in any of these
`cases precedential. Therefore, although we considered the reasoning of the
`
`
`4 Dec. 11 (citing Apple II, slip op. at 3 (denying request for rehearing;
`“[W]hether or not the dismissal could occur under Fed. R. Civ. P. 42 would
`not change the result of the Decision.”)).
`7
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`various panels in reaching their decisions, we are bound only by the Board
`decision in Oracle and then only to the extent that we find the issues and
`facts involved in Oracle and in the instant proceedings are sufficiently
`similar. In our decisions denying institution, we specifically found that
`“[b]ecause the circumstances here align with Apple and differ in critical
`respects from Oracle and related cases, we determine the exception [to the
`Section 315(b) for dismissals without prejudice] is not applicable.” Dec. 5.
`In particular, Petitioner relies on the Board’s decision in Atlanta Gas
`
`Light v. Bennet Regulator Guards, Inc., to argue that it is somehow improper
`to consider the effect of the dismissal in determining whether it removes the
`Section 315(b) bar to a petitioner’s petition. Req. 7–8. Nevertheless, the
`panel in Atlanta Gas carefully considered the factual context of the dismissal
`when determining that the dismissal by the Ohio court resulted in the lifting
`of the Section 315(b) bar. Atlanta Gas, Case IPR2015-00826, slip op. at 14
`(PTAB Sept. 1, 2015) (Paper 12). As the panel went on to explain:
`[t]he narrow preclusion associated with personal jurisdiction in
`Ohio does not justify treating the dismissal without prejudice in
`the Ohio lawsuit any differently than other dismissals without
`prejudice. See [Lunareye], slip op. at 12. The impact of the
`“litigation events” identified by Patent Owner are similarly
`limited and also do not justify different treatment.
`Id. (emphasis added). Thus, the panel in Atlanta Gas only found the Section
`315(b) bar lifted after it had considered the dismissal “without prejudice” in
`the context of the relevant facts.
`Further, the panel in Atlanta Gas explained that “the Federal Circuit’s
`
`statement is understood properly as referring to the restored ability of parties
`
`8
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`to pursue courses of action available to them before the action had been
`brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta
`Gas and the other cases cited by Petitioner, we are persuaded that, after the
`dismissal of the Versata action, the parties in the instant proceedings did not
`enjoy the restored ability to pursue courses of action available to them
`before the Versata action had been brought. The Ford action would remain
`the first action filed, so that a new action by Patent Owner filed in the U.S.
`District Court for the Eastern District of Texas would remain subject to the
`Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner &
`Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence
`of compelling circumstances, the court initially seized of a controversy
`should be the one to decide the case.” (Emphasis added.)). Further, although
`the U.S. District Court for the Eastern District of Texas had asked the parties
`to provide any “good faith reasons” for maintaining the Versata action,
`Patent Owner responded that it did not oppose dismissal, and Petitioner
`chose not to respond. Dec. 7–8. Thus, on this record, we understand that
`either party could have argued to retain the Versata action, but that, after the
`dismissal, the parties no longer enjoyed the ability to bring this action in the
`U.S. District Court for the Eastern District of Texas.
`
`Finally, Petitioner argues that our reliance on the involuntary nature of
`the dismissal was improper. Req. 9–10. In particular, Petitioner notes that
`the dismissals, without prejudice, for lack of personal jurisdiction in Graves,
`as well as Atlanta Gas and LunarEye, also were involuntary – at least with
`respect to the plaintiff. See id. at 9. Petitioner however misunderstands our
`
`9
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`use of the word “involuntary.” Unlike those cases, the U.S. District Court
`for the Eastern District of Texas determined to dismiss the Versata action
`absent compelling arguments by the parties to the contrary. See Dec. 7–8
`(citing Ex. 2011, 3:16–21 (“[O]ne of the issues that’s going to come up is
`this first-to-file rule.”), 11:5–8 (“I’m also faced with the practical problem of
`in the Fifth Circuit under the first-to-file rule, I’m supposed to give
`deference to [Eastern District of Michigan] Judge Leitman and what he
`decides.”)). Thus, unlike a dismissal pursuant to Fed. R. Civ. P. 41(a), such
`as the dismissals in Oracle and Bonneville, neither Petitioner nor Patent
`Owner requested the dismissal (Dec. 5–6)5; and the dismissal of the Versata
`action was “involuntary” to the extent that the court acted in the absence of
`requests from either party. See Fed. R. Civ. P. 41(a)(2) (stating that “an
`action may be dismissed at the plaintiff’s request only by court order, on
`terms the court considers proper” (emphasis added))
`For these reasons, we were persuaded that, because the facts of the
`instant proceedings, namely, that the dismissal “was not pursuant to Rule
`41(a), was not ‘voluntary,’ and, most importantly, did not leave the parties
`as though the action had never been brought,” are not sufficiently similar to
`the facts present in the precedential decisions, we are not bound to find that
`
`
`5 As we noted in our decisions denying institution, in holding that the
`dismissal put the appellant in the position in which it would have been, had
`it never filed a notice of appeal, the Federal Circuit in Graves compared
`those circumstances with the voluntary dismissal in Bonneville, in which the
`“nullifying effect of a voluntary dismissal in accordance with Fed. R. Civ. P.
`41(a)(1) was applied.” Dec. 6 (quoting Graves, 294 F.3d at 1356).
`10
`
`
`

`

`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`the dismissal of the Versata action “without prejudice” necessarily lifted the
`Section 315(b) bar.
`
`
`
`2. Creation of “Continuous Chain of Assertion” Exception
`
`Petitioner further argues that we misapplied the law in holding that
`there is a “continuous chain of assertion” exception to the precedential rule
`that a complaint dismissed without prejudice has no legal effect under
`35 U.S.C. § 315(b). Req. 1. Petitioner, however, misunderstands our
`decisions.
`First, Petitioner argues that we improperly focused on the patents,
`rather than on the actions filed. Id. at 10–11 (“the Board in the instant IPR
`looked not at the Versata action, but incorrectly at a specific infringement
`allegation in that action, and asserted that the allegation (not the action) was
`asserted continuously.” (Petitioner’s emphases)). Specifically, Petitioner
`argues that:
`The Board did not address the undisputed fact that the Versata
`action did not continue in Michigan. Versata asserted 16 patents
`in the Versata action, but only 8 patents in Michigan. (Ex. 1130;
`see also IPR2017-00150, Ex. 1323.) Also, the Versata parties in
`the Texas action are different than the Versata parties in the
`Michigan action. (Id.)
`Req. 11. As an initial matter, Section 315(b) requires us to look at both the
`action, as well as the asserted patent (i.e., “a complaint alleging infringement
`of the patent”). Petitioner does not contend, for example, that challenged
`patents (e.g., the ’651 patent) were not asserted in “a complaint alleging
`infringement” in the Versata action. Regardless, we disagree with
`Petitioner’s characterization of the Board’s decisions.
`11
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`In discussing the significance of the Versata and Ford actions, our
`
`focus clearly was on the actions as well. Dec. 11–12. In particular, we
`noted that
`in resolving the forum dispute in favor of the Michigan court, the
`respective courts treated the cases as if they were a single
`proceeding at least in terms of ability to assert claims and
`recognition of timing. Consequently, we agree that the relevant
`factor in determining whether the earlier complaint in the
`Versata action is operative for purposes of § 315(b) is the
`continuous assertion of the patent against Ford, not whether the
`case was formally consolidated.
`Id. at 12; see also Ex. 1131 (instructing the parties to provide good faith
`reasons why the Versata action should not be dismissed, “so that the issues
`may [be] dealt with in the Michigan court”). Further, regarding Petitioner’s
`arguments concerning the relative numbers of patents raised in the Versata
`action as compared to the Ford action and the allegedly differing “Versata
`parties” in Texas and Michigan, Petitioner did not raise these arguments
`during the Preliminary Proceedings, and we cannot have overlooked or
`misapprehended arguments not raised.
`Second, Petitioner argues that the Board’s decisions in Histologics,
`
`Apple, and eBay, which we cite as analogous, are readily distinguishable
`from the instant proceedings. Req. 11–12 (citing Dec. 11–12). In particular,
`Petitioner argues that, “[i]n each instance, an action was consolidated such
`that the alleged infringer remained answerable to the original complaint.”
`Id. at 11. However, we specifically acknowledged that the Versata and Ford
`actions had not been consolidated:
`We are not persuaded the outcome here should turn on whether
`
`12
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`
`the cases were consolidated under Rule 42(a). See Apple II, slip
`op. at 3 (denying request for rehearing; “[W]hether or not the
`dismissal could occur under Fed. R. Civ. P. 42 would not change
`the result of the Decision.”).
`Dec. 11 (emphasis added). Instead, we found that the effect of the rulings by
`the Michigan and Texas courts was to maintain continuous actions between
`the parties. A fact different from those present in the precedential decisions
`cited by Petitioner. Both courts stated as much; the Texas court in its
`decision dismissing the Versata action and the Michigan court in its decision
`to adopt the schedule that would have been in effect in the Texas court. See
`Ex. 1134 (The Texas court dismissed the Versata action “without prejudice
`to [Versata’s] ability to assert its claims in the Michigan court.” (Emphasis
`added.)); Ex. 2010, 40:8–10 (“Why isn’t it fair for Versata to say Ford
`wanted it here, we were concerned about timing, at least try to keep it like
`the Eastern District of Texas would?”).
`We understand that Petitioner would weigh the relevant facts
`differently than we do. Nevertheless,
`[a] request for rehearing is not an opportunity merely to disagree
`with the panel’s assessment of the arguments or weighing of the
`evidence, or to present new arguments or evidence. It is not an
`abuse of discretion to have performed an analysis or reached a
`conclusion with which Petitioner disagrees, and mere
`disagreement with the Board’s analysis or conclusion is not a
`proper basis for rehearing.
`Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB
`Jan. 28, 2016) (Paper 9).
`Contrary to Petitioner’s contention, we do not create a further
`exception to the precedential exception created by Oracle in view of
`13
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`Bonneville and Graves, but, instead, merely find that the facts of the instant
`proceedings are sufficiently different from those present in the precedential
`decisions that we are not bound to expand the exception to Section 315(b)
`that they created regarding the effects of a dismissal “without prejudice” to
`the facts of the instant proceedings. Therefore, as stated in the decisions
`denying institution, we maintain that “the circumstances here do not warrant
`a departure from the statutory language of § 315(b) in favor of extending the
`exception for voluntary dismissals without prejudice to a case where the
`dismissal without prejudice was not voluntary and did not leave the parties
`in the position they were in had the action never been filed.” Dec. 12.
`
`IV. ORDER
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Requests for Rehearing in IPR2017-
`00144 and IPR2017-00146 through IPR2017-00151 are denied.
`
`
`
`14
`
`
`

`

`
`
`IPR2017-00144 (Patent 7,200,582 B1); IPR2017-00146 (Patent 5,825,651);
`IPR2017-00147 (Patent 7,464,064 B1); IPR2017-00148 (Patent
`6,405,308 B1); IPR2017-00149 (Patent 6,675,294 B1); IPR2017-00150
`(Patent 7,882,057 B1); IPR2017-00151 (Patent 7,882,057 B1)
`
`FOR PETITIONER:
`John S. LeRoy
`Thomas A. Lewry
`Frank A. Angileri
`John P. Rondini
`Christopher C. Smith
`Jonathan D. Nikkila
`BROOKS KUSHMAN P.C.
`jleroy@brookskushman.com
`tlewry@brooksskushman.com
`fangileri@brookskushman.com
`jrondini@brookskushman.com
`cssmith@brookskushman.com
`jnikkila@brookskushman.com
`FOR PATENT OWNER:
`Robert Greene Sterne
`Salvador M. Bezos
`Jonathan Tuminaro
`Joseph E. Mutschelknaus
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`jmustche-PTAB@skgf.com
`
`Kent B. Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
`kchambers@tcchlaw.com
`
`Sharoon Saleem
`JONES & SPROSS, P.L.L.C.
`sharoon.saleem@jonesspross.com
`
`15
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`
`