Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`
`
` Entered: October 23, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00688 (Patent 9,124,717 B2)
`Case IPR2017-00689 (Patent 9,124,718 B2)
`Case IPR2017-00690 (Patent 9,118,693 B2)
`Case IPR2017-00691 (Patent 8,892,465 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Requests for Rehearing
`37 C.F.R. § 42.71
`
`
`1 This Decision addresses issues pertaining to all four cases. Therefore, we
`exercise our discretion to issue a single Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`Paper 11
`
`
` Entered: October 23, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00688 (Patent 9,124,717 B2)
`Case IPR2017-00689 (Patent 9,124,718 B2)
`Case IPR2017-00690 (Patent 9,118,693 B2)
`Case IPR2017-00691 (Patent 8,892,465 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Requests for Rehearing
`37 C.F.R. § 42.71
`
`
`1 This Decision addresses issues pertaining to all four cases. Therefore, we
`exercise our discretion to issue a single Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2017-00688 (Patent 9,124,717 B2)
`IPR2017-00689 (Patent 9,124,718 B2)
`IPR2017-00690 (Patent 9,118,693 B2)
`IPR2017-00691 (Patent 8,892,465 B2)
`
`
`Introduction
`In each of the instant proceedings, Petitioner filed a Request for
`Rehearing of our Decision denying institution of an inter partes review.2
`The arguments made by the parties and the factual circumstances of each
`case are similar. For purposes of this Decision, we treat the Request for
`Rehearing in Case IPR2017-00690 as representative, and specifically discuss
`the circumstances of that request. The present Decision, however, applies
`equally to all four Requests for Rehearing. For the reasons stated below,
`Petitioner’s Requests for Rehearing are denied.
`
`
`Analysis
`In determining whether to institute an inter partes review, the Board
`may “deny some or all grounds for unpatentability for some or all of the
`challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on
`petition, the Board will review the decision for an abuse of discretion.
`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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004). The party requesting rehearing bears the burden of
`showing an abuse of discretion, and “[t]he request must specifically identify
`
`
`2 See IPR2017-00688, Papers 11, 12; IPR2017-00689, Papers 9, 10;
`IPR2017-00690, Papers 11 (“Decision” or “Dec.”), 12 (“Req. Reh’g”);
`IPR2017-00691, Papers 9, 10. Unless otherwise specified, we refer to
`papers filed in Case IPR2017-00690.
`
`
`
`2
`
`
`
`
`
`IPR2017-00688 (Patent 9,124,717 B2)
`IPR2017-00689 (Patent 9,124,718 B2)
`IPR2017-00690 (Patent 9,118,693 B2)
`IPR2017-00691 (Patent 8,892,465 B2)
`
`all matters the party believes the Board misapprehended or overlooked.”
`37 C.F.R. § 42.71(d).
`Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” Petitioner argues
`that we abused our discretion by rejecting the Petition under 35 U.S.C.
`§ 325(d) for two reasons.
`First, Petitioner contends that the Petition (Paper 2, “Pet.”) does not
`present the same or substantially the same prior art or arguments as the
`petition it filed in Case IPR2017-00089 (“the -89 Case”). Req. Reh’g 5–8;
`see IPR2017-00089, Paper 2 (“-89 Petition” or “-89 Pet.”). As explained in
`the Decision, Petitioner relied on the Rolf, Forta, Gatherer, and Frodigh
`references in the -89 Petition, and now relies on Rolf, Forta, Gatherer,
`O’Hara, and Tagg in the instant Petition. Dec. 5. Specifically, Petitioner
`relied on Frodigh for the limitations of the independent claims requiring
`“orthogonal frequency-division multiplex modulation” (OFDM modulation),
`but now relies on O’Hara and Tagg for those same limitations.3 Id. at 5–6.
`Petitioner argues that the Frodigh-based ground (relying on disclosure of a
`“cellular telephone network”) involves “different references and a
`fundamentally different obviousness theory” than the O’Hara/Tagg-based
`ground (relying on disclosure of “Wi-Fi”), and we failed to “articulate any
`
`
`3 In some of the above-listed cases, Petitioner also relies on Pinard for the
`OFDM limitations. See IPR2017-00689, Paper 2, 39–41.
`
`
`3
`
`
`
`
`IPR2017-00688 (Patent 9,124,717 B2)
`IPR2017-00689 (Patent 9,124,718 B2)
`IPR2017-00690 (Patent 9,118,693 B2)
`IPR2017-00691 (Patent 8,892,465 B2)
`
`finding” that the instant Petition presents “the same or substantially the same
`prior art or arguments” as the -89 Petition. Req. Reh’g 5–8.
`We are not persuaded. As pointed out in the Decision, other than
`Petitioner’s analysis of the OFDM limitations of independent claims 1, 3,
`and 5, the petitions and supporting evidence appear to be identical. Dec.
`5–6. Petitioner’s analysis of all other limitations of the independent claims
`and dependent claims 2, 4, and 6, as well as the corresponding portions of
`the declaration testimony of Tal Lavian, Ph.D., are the same. Id. As such,
`three of the four references (Rolf, Forta, and Gatherer) in the -89 Petition,
`roughly 25 out of 34 pages of substantive analysis of the claims in the
`-89 Petition, and roughly 55 out of 71 paragraphs of substantive analysis in
`Dr. Lavian’s declaration in the -89 Case are identical to what Petitioner
`presents in this proceeding. Again, the only difference is the analysis of one
`limitation of each independent claim. We are not persuaded that we abused
`our discretion in concluding that the instant Petition presents substantially
`the same prior art and arguments as what was presented previously in the
`-89 Case and that the Petition should be rejected under § 325(d).
`Petitioner also contends that our Decision conflicts with
`(1) “longstanding precedent on § 325(d) issues,” in particular four previous
`cases where follow-on petitions were not rejected under § 325(d), and
`(2) four decisions of another panel in cases involving patents related to the
`patent at issue. Req. Reh’g 3, 6–7. We are not persuaded. None of the
`cases cited by Petitioner are precedential. Moreover, the factual
`circumstances of every case (e.g., the prior art and arguments presented) are
`different, such that every determination of whether a petition should be
`
`
`
`
`4
`
`
`
`
`
`IPR2017-00688 (Patent 9,124,717 B2)
`IPR2017-00689 (Patent 9,124,718 B2)
`IPR2017-00690 (Patent 9,118,693 B2)
`IPR2017-00691 (Patent 8,892,465 B2)
`
`rejected under § 325(d) will depend on the particular facts of the case. As
`explained above and in the Decision, the petitions and supporting evidence
`here are identical but for the analysis as to one limitation of the independent
`claims.
`Petitioner also misrepresents the cases involving related patents by
`stating that the panel “rejected Patent Owner’s arguments under § 325(d)
`and appreciated that each of the two OFDM grounds presents a different
`meritorious basis for IPR.” See id. at 3. Unlike the instant situation, where
`Petitioner asserted the Frodigh-based ground in one petition and then later
`filed its Petition asserting the O’Hara/Tagg-based ground, Petitioner in the
`cited cases asserted grounds based on both combinations in the same
`petition. See, e.g., IPR2017-00550, Paper 11, 4. Section 325(d), however,
`requires that “the same or substantially the same prior art or arguments
`previously were presented to the Office” (emphasis added). The cited cases
`are inapposite because there was no previous petition asserting a
`Frodigh-based ground. Rather, the § 325(d) argument made by Patent
`Owner was that the petition should be rejected because certain other
`references were considered during prosecution. See id. at 14–15.
`Second, Petitioner argues that by pointing out that Petitioner “should
`have” been aware of Tagg prior to filing the -89 Petition and “could have”
`presented its arguments regarding O’Hara and Tagg in the -89 Petition, we
`“exceeded [the Board’s] statutory authority by imposing a timeliness
`requirement contrary to the one-year statutory period for filing an IPR
`petition under 35 U.S.C. § 315(b).” Req. Reh’g 1, 8–12 (citing Dec. 6–7).
`We imposed no such requirement. The cited portion of the Decision
`
`
`
`
`5
`
`
`
`
`
`IPR2017-00688 (Patent 9,124,717 B2)
`IPR2017-00689 (Patent 9,124,718 B2)
`IPR2017-00690 (Patent 9,118,693 B2)
`IPR2017-00691 (Patent 8,892,465 B2)
`
`addressed what Petitioner argued in the Petition. Specifically, Petitioner
`asserted that the reason it filed a second petition was that it “could not have”
`presented its newly asserted ground earlier because it “did not locate” Tagg
`until after filing the -89 Petition “[d]espite diligent search efforts.” Pet. 6–7.
`We found this argument “not persuasive” because (1) Petitioner was aware
`of Patent Owner’s arguments at the time of filing the -89 Petition due to the
`similar arguments made in Case IPR2014-01236; (2) “contrary to
`Petitioner’s arguments, Petitioner should have been aware of the existence of
`Tagg prior to the filing of the -89 Petition, and could have presented its
`arguments regarding O’Hara and Tagg in the -89 Petition, but did not”; and
`(3) “Petitioner [did] not explain in any detail what search efforts it
`undertook.” Dec. 6–7 (emphasis omitted). We did not impose any
`requirement that Petitioner must have included all potential grounds in a
`single petition. Rather, the challenged portion of the Decision merely
`explained why Petitioner’s arguments in the Petition, as to why we should
`not exercise our discretion under § 325(d), were unpersuasive. Every case,
`and every determination under § 325(d), will depend on the particular facts
`presented.
`We have reviewed all of Petitioner’s arguments in the Requests for
`Rehearing, and conclude that Petitioner has not carried its burden of
`demonstrating that we misapprehended or overlooked any matters argued in
`the Petitions and has not shown an abuse of discretion in our Decision
`denying institution of an inter partes review in each of the instant
`proceedings.
`
`
`
`
`
`6
`
`
`
`
`
`IPR2017-00688 (Patent 9,124,717 B2)
`IPR2017-00689 (Patent 9,124,718 B2)
`IPR2017-00690 (Patent 9,118,693 B2)
`IPR2017-00691 (Patent 8,892,465 B2)
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Requests for Rehearing are denied.
`
`
`
`
`
`7
`
`
`
`
`
`IPR2017-00688 (Patent 9,124,717 B2)
`IPR2017-00689 (Patent 9,124,718 B2)
`IPR2017-00690 (Patent 9,118,693 B2)
`IPR2017-00691 (Patent 8,892,465 B2)
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`
`PATENT OWNER:
`
`Ryan M. Schultz
`Andrew J. Kabat
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`akabat@robinskaplan.com
`
`
`
`
`
`
`
`8
`
`
`
`
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