Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Entered: March 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS SYS.,
`INC., RUCKUS WIRELESS, INC., HEWLETT PACKARD ENTERPRISE
`COMPANY, HP INC., ARUBA NETWORKS, INC., AND ARRIS
`GROUP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`____________
`
`Case IPR2017-00642
`Patent 5,590,403
`
`
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`

`

`IPR2017-00642
`Patent 5,590,403
`
`
`Petitioner, as captioned above, filed a Petition to institute inter partes
`
`review of claims 1 and 10 of Patent No. 5,590,403 (“the ’403 patent”)
`
`pursuant to 35 U.S.C. § 311319. Paper 1 (“Pet.”). Mobile
`
`Telecommunications Technologies, LLC. (“Patent Owner”) filed a
`
`Corrected Preliminary Response. Paper 22 (“Prelim. Resp.”).1 We denied
`
`institution of inter partes review because, in part, we determined that prior
`
`art Petitioner asserted was presented previously to the Office and was
`
`considered substantively by the Examiner during examination. Thus, we
`
`exercised our discretion under 35 U.S.C. § 325(d). Paper 24 (“Decision on
`
`Institution” or “Dec.”). Petitioner requests partial rehearing of our Decision
`
`on Institution. Ex. 1023 (“Req. Reh’g”); see Paper 30.
`
`For the reasons that follow, we deny Petitioner’s Request for
`
`Rehearing.
`
`I.
`
`BACKGROUND
`
`A. PROSECUTION HISTORY OF THE ’403 PATENT
`
`The ’403 patent describes a mobile communication system “providing
`
`two-way communication capability between a central network and a mobile
`
`unit over a relatively large area” to allow for rapid communication of large
`
`messages and efficient use of system resources. Ex. 1001, 1:10−14. The
`
`’403 patent issued from application number 07/973,918, filed on November
`
`12, 1992. Ex. 1002, 1 (“Prosecution File”).2 Claims 1 and 4 in the filed
`
`application issued as claims 1 and 10 of the ’403 patent. Id. at 3 (index of
`
`1 We refer to the Corrected Preliminary Response (Paper 22) when citing to
`Patent Owner’s brief.
`2 Cites to the Prosecution File refer to the continuous pagination Petitioner
`provides in the footer of Exhibit 1002.
`
`
`
`2
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`

`

`IPR2017-00642
`Patent 5,590,403
`
`claims showing where original claim1 issued as final claim 1 and original
`
`claim 4 issued as final claim 10). In discussing the prosecution history, we
`
`refer to the numbering of the issued claims.
`
`After issuing a restriction requirement grouping claims 1 and 10
`
`together, the Office mailed a First Office Action that made two statements
`
`relevant to our discussion. First, the Examiner stated that claim 1 would be
`
`allowable if rewritten to overcome the rejection made under 35 U.S.C.
`
`§ 112, second paragraph. Id. at 178. Second, the Examiner rejected claim
`
`10 under 35 U.S.C. § 103 as being unpatentable over Jasinski (U.S. Patent
`
`No. 4,968,966 (Exhibit 1004)). Id. at 182.
`
`The applicant argued against both rejections. With regard to claim 1,
`
`the applicant argued, in part, that a § 112 rejection is not proper given the
`
`definiteness of the claims, and that “[s]ince, as recognized by the Examiner,
`
`the prior art in this case does not affect the scope of claim 1, neither can
`
`35 U.S.C. § 112.” Id. at 197198. With regard to claim 10, the applicant
`
`argued that Jasinski did not disclose two limitations: (1) “dynamically
`
`reassigning one or more of the base transmitters in the first set of base
`
`transmitters assigned to the first zone to the second set of base transmitters
`
`assigned to the second zone as a function of the messages to be
`
`communicated in an area, thereby creating an updated first set of base
`
`transmitted and an updated second set of base transmitters”; and
`
`(2) “transmitting substantially simultaneously in simulcast a third
`
`information signal and a fourth information signal by the updated first and
`
`second sets of transmitters, respectively.” Id. at 201202.
`
`The arguments proved persuasive, because, although other pending
`
`claims were rejected anew in the next Office Action, claims 1 and 10 were
`
`
`
`3
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`

`

`IPR2017-00642
`Patent 5,590,403
`
`deemed allowable over the prior art of record. Id. at 210, 221. After further
`
`prosecution, the applicant cancelled the remaining rejected claims, and the
`
`Office issued a Notice of Allowability. Id. at 225226. In that Notice, the
`
`Examiner provided an Examiner’s Statement of Reasons for Allowance as
`
`follows:
`
`As to claim 1, the prior art of record fails to show a
`simulcast system for transmitting from the first and second
`sets of transmitters a first blocks of information over a first
`time period and respectively transmitting the second and
`third blocks of information over a second time period from
`the first and second sets of transmitters.
`As to claim [10], the prior art of record fails to show a
`simulcast system for transmitting from the first and second
`blocks of information, dynamically reassigning one or more
`base transmitters and transmitting the third and fourth blocks
`of information to the mobile receivers.
`
`Id. at 227. The patent issued with claims 1 and 10 after the issue fee was
`
`paid. Id. at 260263.
`
`B. ASSERTED PRIOR ART AND GROUNDS
`
`Petitioner identified the following prior art in its challenge of
`
`unpatentability:
`
`1) Jasinski: U.S. Patent No. 4,968,966 (Exhibit 1004); and
`
`2) Thro: U.S. Patent No. 4,670,906 (Exhibit 1005).
`
`The grounds of unpatentability presented in the Petition relied upon
`
`the above prior art as follows (Pet. 12):
`
`Reference[s]
`
`Jasinski
`
`Thro
`
`
`
`Basis
`
`§ 103
`
`§ 103
`
`4
`
`Claim challenged
`
`1
`
`10
`
`

`

`IPR2017-00642
`Patent 5,590,403
`
`
`Reference[s]
`
`Thro and Jasinski
`
`Basis
`
`§ 103
`
`Claim challenged
`
`10
`
`C. CHALLENGED CLAIMS
`
`The challenged claims are reproduced below.
`
`1. A method for information transmission by a plurality of
`transmitters to provide broad communication capability over a region
`of space, the information transmission occurring during at least both a
`first time period and a second time period and the plurality of
`transmitters being divided into at least a first and second set of
`transmitters, the method comprising the steps of:
`
`(a) generating a system information signal which includes a
`plurality of blocks of information;
`
`(b) transmitting the system information signal to the plurality
`of transmitters;
`
`(c) transmitting by the first and second sets of transmitters a
`first block of information in simulcast during the first
`time period;
`
`(d) transmitting by the first set of transmitters a second block
`of information during the second time period; and
`
`(e) transmitting by the second set of transmitters a third
`block of information during the second time period.
`
`
`10. A method of communicating messages between a plurality
`of base transmitters and mobile receivers within a region of
`space divided into a plurality of zones with each zone having at
`least one base transmitter assigned thereto, the communication
`method comprising the steps of:
`
`first
`simultaneously a
`substantially
`transmitting
`(a)
`information signal and a second information signal to
`communicate messages to the mobile receivers, the first
`information signal being transmitted in simulcast by a first
`
`
`
`5
`
`

`

`IPR2017-00642
`Patent 5,590,403
`
`
`set of base transmitters assigned to a first zone, and the
`second information signal being transmitted in simulcast by
`a second set of base transmitters assigned to a second zone;
`
`(b) dynamically reassigning one or more of the base
`transmitters in the first set of base transmitter assigned to the
`first zone to the second set of base transmitters assigned to
`the second zone as a function of the messages to be
`communicated in an area, thereby creating an updated first
`set of base transmitters and an updated second set of base
`transmitters; and
`
`third
`transmitting substantially simultaneously a
`(c)
`information signal and a fourth information signal, the third
`information signal being transmitted in simulcast by the
`updated first set of base transmitters, and the fourth
`information signal being transmitted in simulcast by the
`updated second set of base transmitters to communicate
`additional messages to said mobile receivers.
`
`
`D. DECISION DENYING INSTITUTION
`
`In our Decision on Institution, we denied the Petition. Dec. 15. With
`
`regard to the Jasinski grounds,3 we evaluated Patent Owner’s arguments that
`
`Jasinski had been presented previously to the Office during prosecution and
`
`that the panel should deny those grounds under 35 U.S.C. § 325(d). We
`
`found Patent Owner’s arguments persuasive. In particular, we noted, after
`
`considering a variety of factors, that “Jasinski was the subject of substantive
`
`discussion and studied evaluation in the rejection of claims of the
`
`’403 patent.” Dec. 12. We also found unpersuasive Petitioner’s arguments
`
`
`3 When referring to the Jasinski grounds, we include the ground where
`Jasinski is asserted alone (for claim 1) and the ground where Jasinski is
`asserted in combination with Thro (for claim 10).
`
`
`
`6
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`

`

`IPR2017-00642
`Patent 5,590,403
`
`that the Examiner did not consider certain teachings in Jasinski with regard
`
`to claim 1. Id. at 1011. We also determined that there is substantial
`
`overlap in the arguments presented in the Petition and those presented during
`
`examination with regard to the limitation of “dynamically reassigning,”
`
`recited in claim 10. Id. at 11. We concluded: “[w]e find that the Examiner
`
`was aware of the contents of Jasinski in material respects applicable to both
`
`claim 1 and claim 10, and that we have been shown no reason sufficient to
`
`reevaluate Jasinski with respect to any of the challenged claims.” Id. at 13.4
`
`II. ANALYSIS
`
`A. REQUEST FOR REHEARING
`
`A party requesting rehearing has the burden to show a decision should
`
`be modified by specifically identifying all matters the party believes were
`
`misapprehended or overlooked, and the place where each matter was
`
`addressed previously in a motion, opposition, or a reply. 37 C.F.R.
`
`§ 42.71(d). When rehearing a decision on institution, we review the decision
`
`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
`
`may arise 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. 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
`
`
`4 With regard to the ground based solely on Thro, we determined that the
`Petition failed to show that Thro discloses the “dynamically reassigning”
`limitation. Dec. 1315. That determination is not part of the request for
`rehearing, and, therefore, we do not discuss it further.
`
`
`
`7
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`

`

`IPR2017-00642
`Patent 5,590,403
`
`F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`Petitioner challenges our exercise of discretion to deny institution as
`
`to claim 1. Req. Reh’g 13. In particular, Petitioner argues that “[b]ecause
`
`the Examiner did not articulate a specific basis for concluding that Jasinski
`
`fails to disclose these elements of claim 1, Petitioner could not point to
`
`specific errors in the Examiner’s application of Jasinski to claim 1.” Id. at
`
`13.
`
`Concerning claim 10, Petitioner argues that we misapprehended the
`
`ground presented. In particular, Petitioner points out that it asserted a
`
`combination of Thro with Jasinski, and that our determination that Jasinski
`
`was considered for claim 10 during examination overlooks or misapprehends
`
`that (1) the Examiner did not consider Thro in combination with Jasinski as
`
`Petitioner has; (2) there is no evidence that the Examiner considered the
`
`specific embodiment of Jasinski that Petitioner cited at column 12, lines
`
`4148; and (3) the Examiner’s Statement of Reasons for Allowance does not
`
`indicate that the withdrawal of the Jasinski rejection was based on the
`
`portion of the “dynamically reassigning” limitation for which Petitioner
`
`relies on Jasinski. Req. Reh’g 411.
`
`At the heart of Petitioner’s arguments is a disagreement with our
`
`finding that the evidence of record supported our conclusion that the
`
`Examiner fully considered Jasinski for both claim 1 and claim 10. More
`
`importantly, Petitioner argues the inequities of applying our discretion under
`
`§ 325(d) when prior art was before the Examiner, but not analyzed in detail
`
`or applied to the pertinent claim. Req. Reh’g 14. According to Petitioner:
`
`“If the Board is to refuse to consider whether the prior art discloses the
`
`limitation the Examiner alleged were missing, the Board would effectively
`
`
`
`8
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`

`

`IPR2017-00642
`Patent 5,590,403
`
`create an irrebuttable presumption that the Examiner’s inaction was correct
`
`and deprives the petitioner of the best way to show Examiner error.” Id.
`
`In view of these arguments, we explain below in more detail the
`
`factors that the panel considered in exercising discretion under § 325(d)
`
`when the same or substantially the same prior art or arguments have been
`
`presented previously during examination. We also reiterate below our
`
`findings in connection with the Office’s evaluation of Jasinski during
`
`examination. Finally, we determine, as discussed further below, that, as a
`
`matter of procedural fairness and in consideration of agency resources, the
`
`extent to which the Examiner evaluated the prior art on the merits and
`
`applied it to at least one issued claim warrants exercising discretion under
`
`§ 325(d) on grounds based in whole or in part on the prior art previously
`
`presented during examination.
`
`B. DISCRETIONARY NON-INSTITUTION UNDER SECTION 325(D)
`
`1.
`
`Evaluation by the Board
`
`
`
`Section 325(d) states that “[i]n determining whether to institute . . .
`
`the Director may take into account whether, and reject the petition . . .
`
`because, the same or substantially the same prior art or arguments previously
`
`were presented to the Office.” In evaluating under § 325(d) whether to
`
`exercise our discretion regarding institution when the petition asserts prior
`
`art or arguments alleged to have been presented previously during
`
`examination, panels have considered several non-exclusive factors:
`
`1) The similarities and material differences between the asserted art
`
`and the prior art involved during examination;
`
`
`
`9
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`

`

`IPR2017-00642
`Patent 5,590,403
`
`
`2) The cumulative nature of the asserted art and the prior art
`
`evaluated during examination;
`
`3) The extent to which the asserted art was evaluated during
`
`examination, including whether the prior art was the basis for
`
`rejection;
`
`4) The extent of the overlap between the arguments made during
`
`examination and the manner in which Petitioner relies on the prior
`
`art or Patent Owner distinguishes the prior art;
`
`5) Whether Petitioner has shown that the Examiner erred in
`
`evaluating the asserted prior art; and
`
`6) The extent to which additional evidence and facts presented in the
`
`Petition warrant reconsideration of the prior art or arguments.
`
`Each case is evaluated on its own facts, and each case may include
`
`some or all of the above-identified factors. Further, additional
`
`circumstances, not fitting within any of the listed factors, may be relevant to
`
`our exercise of discretion under § 325(d) in the context of examination.5
`
`The Board has articulated these factors in various cases involving the
`
`applicability of § 325(d) in the context of examination.6 We are also
`
`
`5 See, e.g., Kayak Software Corp. v. IBM, Case CBM2016-00075, slip op. at
`78 (PTAB Dec. 15, 2016) (Paper 16) (evaluating, among other factors, the
`11 years of prosecution history, which included multiple appeals to the
`Board where some of the references were at issue).
`6 See, e.g., Palo Alto Networks v. Finjan, Case IPR2015-01999, slip op. at
`68 (PTAB Mar. 29, 2016) (Paper 7) (evaluating the similarities between the
`asserted art and the references relied on during examination and determining
`the extent arguments considered during examination); Agrinomix v. Mitchell
`Ellis Prods., Case IPR2017-00525, slip op. at 11 (PTAB June 14, 2017)
`(Paper 8) (determining whether asserted prior art was before the Examiner
`
`
`
`
`10
`
`

`

`IPR2017-00642
`Patent 5,590,403
`
`mindful that our discretion under § 325(d) involves a balance between
`
`several competing interests. “On the one hand, there are the interests in
`
`conserving the resources of the Office and granting patent owners repose on
`
`issues and prior art that have been considered previously.” Fox Factory, Inc.
`
`v. SRAM, LLC, Case IPR2016-01876, slip op. 7 (PTAB Apr. 3, 2017) (Paper
`
`8). “On the other hand, there are the interests of giving petitioners the
`
`opportunity to be heard and correcting any errors by the Office in allowing a
`
`
`
`during prosecution); Inogen v. Separation Design Grp. IP Holdings, Case
`IPR2017-00300, slip op. at 3133 (PTAB May 19, 2017) (Paper 8)
`(considering whether the asserted art is cumulative of any reference that
`previously was before the Office during examination); Hengdian Grp.
`DMEGC Magnetics Co., Ltd., v. Hitachi Metals, Ltd., Case IPR2017-01313,
`slip op. at 45 (PTAB Dec. 21, 2017) (Paper 9) (“Where, as here, a prior art
`reference presented in a petition was already considered substantively by the
`Examiner, the petitioner has the initial burden to identify any errors made by
`the Examiner with respect to that reference.”); Dorco Co. v. The Gillette Co.,
`Case IPR2017-00500, slip op. at 1819 (PTAB June 21, 2017) (Paper 7)
`(considering whether Petitioner identifies errors by the Office or explains
`why the Office should revisit the patentability issues the Examiner
`considered, and also considering the overlap of arguments); Neil Ziegmann,
`N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. 910 (PTAB Sept. 6,
`2017) (Paper 13) (“when a prior art reference presented in a petition was
`already considered substantively by the Examiner, the petitioner has the
`initial burden to identify [] errors made by the Examiner with respect to that
`prior art reference”); Hyundai Mobis Co. et al. v. Autoliv ASP, Case
`IPR2014-01005, slip op. at 4445 (PTAB Jan. 14, 2015) (Paper 10) (stating
`that Petitioner’s challenge includes new arguments and new supporting
`evidence, such as expert testimony, shedding a different light on the prior
`art); Prism Pharma v. Choongwae Pharma Corp., Case IPR2014-00315, slip
`op. at 1213 (PTAB July 8, 2014) (Paper 14) (informative) (evaluating the
`overlap of the arguments in examination and the contentions presented by
`Petitioner).
`
`
`
`11
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`

`IPR2017-00642
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`patent—in the case of an inter partes review—over prior art patents and
`
`printed publications.” Id.
`
`2.
`
`Discussion of Factors
`
`In the Decision on Institution, we considered certain factors pertaining
`
`to the exercise of discretion under § 325(d), and denied institution on the
`
`grounds based on Jasinski. Dec. 713. By way of summary, the Decision
`
`provides that Jasinski, and arguments concerning its disclosure, were
`
`previously presented during examination, and that Petitioner proffered no
`
`compelling reason for reconsidering Jasinski, despite Petitioner’s efforts to
`
`cast Jasinski as including subject matter that the Examiner overlooked. Id.
`
`A discussion of the listed factors follows.
`
`a. Factors One and Two: Similarities and Cumulativeness
`
`
`
`The first two factors focus on how much of Petitioner’s asserted prior
`
`art the Office previously evaluated. The focus is on discerning the overlap
`
`and differences between the prior art asserted in the Petition and the prior art
`
`previously considered during examination. There may be circumstances in
`
`which, for example, the asserted prior art is not the same art previously
`
`considered, but its content is cumulative to what the Examiner previously
`
`considered. Here, as stated in our Decision on Institution, it is undisputed
`
`that Jasinski is the same prior art that was considered during examination
`
`and was the basis for rejection of examined claims of the ’403 patent. Dec.
`
`910. In this case, therefore, there is no difference between the asserted
`
`
`
`12
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`

`IPR2017-00642
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`prior art in the Petition and the prior art Patent Owner alleges the Office
`
`evaluated during examination.7
`
`b. Factor Three: Previous Evaluation
`
`
`
`With respect to factor three, we look at the asserted grounds and the
`
`manner, if any, in which the prior art was applied previously. In the present
`
`case, claims 1 and 10 underwent different rejections. In the same Office
`
`Action, although claim 10 was rejected over Jasinski, claim 1 was not. See
`
`Section II.A., supra. Notwithstanding this difference, we determined that, in
`
`rejecting claim 10 over Jasinski, the Examiner also had evaluated Jasinski
`
`sufficiently to determine Jasinski’s relevance to claim 1. More specifically,
`
`the Decision on Institution states that
`
`even though the Examiner did not reject now-claim 1
`over Jasinski, we are persuaded that the Examiner
`substantively considered Jasinski’s disclosure of a
`simulcast system and was aware of Jasinski’s timing
`diagram and the various transmissions of the addresses
`and messages. Thus, we do not agree with Petitioner’s
`contention that the Examiner did not consider “the
`second interval messages” sent in “simulcast/pseudo-
`simulcast by multiple transmitters.” See Pet. 35.
`
`Dec. 11. Petitioner takes issue with this determination, arguing that “[o]f
`
`course, an IPR may use prior art that was cited during the original
`
`prosecution.” Req. Reh’g 12. According to Petitioner, “the mere fact that
`
`Ground 1 is based on Jasinski is not enough to deny institution.” Id. at 13.
`
`
`7 In our Decision on Institution, we did not apply the cumulativeness factor
`because Patent Owner’s argument focused on the fact that Jasinski was the
`same prior art previously presented to the Office.
`
`
`
`13
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`IPR2017-00642
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`
`With regard to claim 10, Petitioner also takes issue with the original
`
`panel’s determination regarding consideration of Jasinski during
`
`examination. Specifically, Petitioner contends that the panel overlooked that
`
`a portion of Jasinski cited in the Petition was not cited with particularity
`
`anywhere in the Office Action. Req. Reh’g 810. For instance, Petitioner
`
`argues that there is no evidence that the Examiner considered column 12,
`
`lines 4148 of Jasinski during prosecution or how that disclosure would
`
`render the claims obvious when considered as presented in the Petition. Id.
`
`at 910.
`
`Petitioner’s arguments miss the point and conflict with the plain
`
`reading of § 325(d). Although a petition for inter partes review may assert
`
`grounds of unpatentability based on prior art patents or printed publications
`
`cited during examination, the Board is not compelled to institute on any
`
`ground relying on previously presented prior art or arguments.8 For
`
`instance, § 325(d) provides that we may take into account whether, and
`
`“reject the petition” because, the same or substantially the same prior art was
`
`previously presented to the Office. Therefore, applying the discretionary
`
`authority regarding institution appropriately may result in a denial of all
`
`grounds based in whole or in-part on prior art that was previously evaluated
`
`during examination. Petitioner does not direct us to any statutory language
`
`or other binding legal authority that curtails the Director’s authority to deny
`
`
`8 Although we address here the applicability of § 325(d), not § 314(a),
`Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016), is
`instructive: “the PTO is permitted, but never compelled, to institute an IPR
`proceeding.”
`
`
`
`
`14
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`IPR2017-00642
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`review only in the circumstances where an Examiner’s rejection and the
`
`petition’s ground of unpatentability are identical.9 Accordingly, it is within
`
`our statutory authority to exercise discretion and deny the Petition on all
`
`grounds based on Jasinski once we deem Jasinski to have been presented to
`
`the Office during examination.
`
`
`
`With regard to this factor, we deemed important that: (1) the
`
`Examiner rejected at least one claim, claim 10, over Jasinski; and (2) the
`
`portions of the prior art the Examiner cited showed awareness of the
`
`reference’s contents. See Dec. 10 (evaluating the rejection of claim 10 and
`
`the cited portions of Jasinski to determine that the Examiner was aware of
`
`Jasinski’s disclosure of simulcast communications). Further, we determined
`
`that, even though the Examiner did not cite the specific embodiment on
`
`which Petitioner now relies with regard to claim 1, the Examiner
`
`substantively addressed Jasinski’s simulcast system and timing diagrams.
`
`Id. at 11 (expressing our disagreement with Petitioner’s contention that the
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`Examiner did not consider certain portions of Jasinski alleged to render
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`obvious claim 1 in the Petition at page 35).
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`None of Petitioner’s arguments on rehearing persuade us that we
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`misapprehended or overlooked the contention that certain portions of
`
`Jasinski were not cited in prosecution for either of the challenged claims.
`
`See Req. Reh’g 410, 1214. We have stated above that our analysis in the
`
`Decision on Institution focused on whether the Examiner substantively
`
`
`9 See Req. Reh’g 78 (arguing that decline of exercise of discretion under
`§ 325(d) is warranted when the petition relies on a combination of
`previously presented prior art with additional reference(s) not involved in
`the prior proceeding).
`
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`IPR2017-00642
`Patent 5,590,403
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`addressed Jasinski, thus evincing awareness of its contents during the
`
`examination of the pending claims of the ’403 patent. See Dec. 1011. In
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`essence, we have drawn an inference from the substantive discussion and
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`rejections made during examination that the Examiner considered Jasinski
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`fully and for all the limitations of the claims, regardless of the specificity
`
`with which the Examiner articulated the findings and conclusions drawn
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`from Jasinski for any particular claim limitation.
`
`This inference is consistent with how other panels have evaluated the
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`Examiner’s actions during examination. For example, in Hyperbranch
`
`Medical Technologies v. Incept LLC, Case IPR2016-01836, slip op. at 13
`
`(PTAB Apr. 4, 2017) (Paper 14), although the Examiner did not cite a
`
`specific embodiment of the prior art reference, the panel concluded that the
`
`Examiner’s discussion of the prior art in general was sufficient to infer that
`
`the Examiner found that the specific embodiment did not satisfy the disputed
`
`claim limitation. As another example, in Agrinomix, LLC, v. Mitchell Ellis
`
`Products, Inc., Case IPR2017-00525, slip op. at 1012 (PTAB June 14,
`
`2017) (Paper 8), the panel concluded that although the Examiner may have
`
`relied upon the prior art reference only to address the limitation of a
`
`dependent claim, that does not obviate the fact that the prior art reference
`
`was before the Examiner and the Examiner relied on it to reject certain
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`claims during examination.
`
`
`
`The inference we have drawn is further supported by the Office’s
`
`examination procedures, where an Examiner is charged with applying the
`
`best references to the pending claims and to cite complex prior art as
`
`particularly as possible. See 37 C.F.R. § 1.104(c)(2) (stating, for example,
`
`that “the Examiner must cite the best references at his or her command” and
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`
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`IPR2017-00642
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`that when “a reference is complex . . . the particular part relied on must be
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`designated as nearly as practicable”);10 see also MPEP § 707.07(g) (stating
`
`that “the Examiner should reject each claim on all valid grounds available,
`
`avoiding, however, undue multiplication of references”). In essence, an
`
`Examiner is tasked with applying the prior art he considers the best to all the
`
`pending claims in order to avoid multiplicity of rejections and to produce as
`
`streamlined an Office Action as possible. This Office procedure persuades
`
`us that when reviewing an Examiner’s rejection, it is proper to infer that all
`
`prior art discussed substantively in the rejection has been considered for its
`
`applicability to all the pending claims. Further, we may infer that although
`
`the Office Action cites specific portions of a reference in a rejection, the
`
`entirety of that reference has been evaluated.
`
`
`
`Here, we reiterate, the Examiner dealt with Jasinski substantively in
`
`the Office Action that rejected both claims 1 and 10. In addressing Jasinski
`
`substantively and citing to portions of Jasinski, we determine that the
`
`Examiner was aware of the entire reference and that he or she evaluated
`
`Jasinski’s applicability to the pending claims, notwithstanding the citation to
`
`only certain portions of the reference. This determination was important in
`
`deciding whether to exercise our discretion and reject the petition on all
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`grounds based on Jasinski.
`
`
`10 Codified also in Manual of Patent Examining Procedure (“MPEP”) § 707.
`This provision appears in all MPEP versions since, at least, August 1983
`(Version 5, §706,
`https://www.uspto.gov/web/offices/pac/mpep/old/E5R0_700.pdf).
`
`
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`
`c. Fourth Factor: Argument Overlap
`
`This factor focuses on the overlap between the presented arguments.
`
`The Decision on Institution notes that the arguments presented in the
`
`Petition sufficiently overlap the arguments presented during examination
`
`with regard to the limitation of “dynamically reassigning,” recited in claim
`
`10. Dec. 1112. We noted that the applicant argued the “dynamically
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`reassigning” limitation during prosecution, and the claim was allowed
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`subsequently. Id. Petitioner argues that we misapprehended that Petitioner
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`relies on Thro in combination with Jasinski, not Jasinski alone, to teach the
`
`limitation. Req. Reh’g 48. This argument is not persuasive. We did not
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`misapprehend Petitioner’s ground. As stated in the Decision:
`
`The instant Petition relies on Jasinski as teaching this
`[“dynamically reassigning”] limitation in combination
`with Thro. The argument presented is premised on
`Jasinski’s teaching of “accounting for message length” to
`implement Thro’s “prioritization algorithm.” But the
`disclosure of the longer message transmission in Jasinski
`was already considered as this is precisely what Jasinski
`sought to solve with its method of transmitting at higher
`speeds in zones, with one or more transmitters, where the
`transceiver is found.
`
`Dec. 1112 (internal citations and emphases in original omitted). That is,
`
`we found, and we reiterate here, that the Examiner evaluated Jasinski’s
`
`teachings for the entirety of the “dynamically reassigning” limitation, which
`
`includes the requirement that the assigning occurs “as a function of the
`
`messages to be communicated in the area.” Id. Petitioner has submitted
`
`Jasinski for the same limitation with the caveat that Jasinski provides a
`
`teaching of “a function of the message to be communicated in an area.” See
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`Pet. 86 (“To the extent it is argued that further disclosure is required,
`
`
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`IPR2017-00642
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`Jasinski teaches dynamically reassigning one or more base station
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`transmitters as a function of the messages to be communicated in an area.”).
`
`Adding Thro and expert testimony to the ground concerning claim 10 does
`
`not overcome these facts.
`
`
`
`We find that the limitation for which Petitioner relies on Jasinski was
`
`expressly addressed during prosec