Paper 16
`
`Trials@uspto.gov
`Entered: December 6, 2017
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`T-MOBILE US, INC. AND T-MOBILE USA, INC.,
`Petitioner,
`v.
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`
`Case IPR2017-01098 (Patent 8,559,369 B2)
`Case IPR2017-01099 (Patent 9,042,306 B2)1
`
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 This decision addresses issues pertaining to both 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.
`
`
`
`Trials@uspto.gov
`Entered: December 6, 2017
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`T-MOBILE US, INC. AND T-MOBILE USA, INC.,
`Petitioner,
`v.
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`
`Case IPR2017-01098 (Patent 8,559,369 B2)
`Case IPR2017-01099 (Patent 9,042,306 B2)1
`
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 This decision addresses issues pertaining to both 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.
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`In each of the instant proceedings, T-Mobile US, Inc. and T-Mobile
`
`USA, Inc. (collectively, “Petitioner”) filed a Request for Rehearing of our
`Decision not to institute inter partes review for certain claims challenged in
`the petition.2 Petitioner’s arguments in the Request for Rehearing filed in
`the IPR2017-01098 proceeding relate to our denial of institution of inter
`partes review of claims 1 and 3–15 of the ’306 patent, and in the IPR2017-
`01099 proceeding relate to our denial of institution of inter partes review of
`claims 1 and 4–7 of the ’369 patent. The arguments made by the parties and
`the factual circumstances of each case are similar. For the purposes of this
`Decision, we treat the Request for Rehearing in Case IPR2017-01099 as
`representative, and specifically discuss the circumstances of that request.
`The present Decision, however, applies equally to both Requests for
`Rehearing. For the reasons below, Petitioner’s Requests for Rehearing are
`denied.
`
`Standard of Review
`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
`
`
`2 See IPR2017-01098, Papers 12, 14; IPR2017-01099, Papers 11
`(“Institution Decision” or “Dec.”), 14 (“Req. Reh’g”). Unless otherwise
`specified, we refer to papers filed in IPR2017-01099 and, with respect to the
`specification of the patents, to U.S. Pat. No. 9,042,306 (Ex. 1002) (“the
`’306 patent”). The written description of U.S. Pat. No. 8,559,369 (the “’369
`patent”) is substantively identical.
`
`2
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`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
`all matters the party believes the Board misapprehended or overlooked.”
`37 C.F.R. § 42.71(d).
`
`Petitioner’s Requests for Rehearing specifically assert that we erred in
`adopting a construction of a claim term which is narrower than that applied
`by a district court in a related case. Because the district court’s construction
`applied the Phillips standard, Petitioner argues that adopting a narrower
`construction is improper and contrary to the public interest and injects
`uncertainty and ambiguity into the claims. Req. Reh’g. 6–7. Petitioner
`notes that Petitioner and Patent Owner supported adopting the district court
`construction. Id. at 9–10. Petitioner argues that we “did not properly
`consider how a person of ordinary skill in the art would read” certain
`portions of the specification. Id. at 11–12.
`
`For the reasons discussed below, Petitioner’s Requests for Rehearing
`are denied.
`
`Background
`In the Institution Decision, we addressed the construction of
`
`“communication module adapted to: (1) wirelessly connect said computing
`device to an IP based network via a first wireless access point (AP) having a
`first AP Identification (APID); and (2) wirelessly communicate with other
`wireless enabled computing devices” (the “communication module
`limitation”) Dec. 8–14.
`
`3
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`
`The United States District Court for the Eastern District of Texas
`issued a Claim Construction Memorandum and Order in a case involving the
`same patents (Barkan Wireless Access Technologies, LP v. Cellco
`Partnership d/b/a Verizon Wireless et al., 2:16-cv-00293 (E.D. Tex.) (filed
`Mar. 29, 2016)), determining that the communication module limitation is in
`means-plus-function format and that the corresponding structure is “a
`wireless network card, and equivalents thereof.” Ex. 2001, 33–35.
`We agreed with the parties, for the purposes of institution, that the
`communication module limitation should be construed as a means-plus-
`function term under 35 U.S.C. § 112 ¶ 6. Id. at 8–9.
`Petitioner argued that we should find “software in a computing
`device” to be the corresponding structure. Paper 2 (“Pet.”) 16–17. In
`supplemental briefing, Petitioner indicated that we should adopt the
`corresponding structure identified by the district court. Paper 9, Petitioner’s
`Supplemental Brief Regarding “Communication Module” (“Pet. Supp. Br.”),
`2 nn.3, 4. Petitioner argued that the disclosed structure could be met by
`prior art having “either one, two, or more network cards, or equivalents
`thereof.” Pet. Supp. Br. 2–3.
`Patent Owner also argued that we should adopt the district court’s
`corresponding structure. Paper 7 (“Prelim. Resp.”), 8–10 (citing Ex. 2001,
`33–34); Paper 10, Patent Owner’s Supplemental Brief Addressing the
`Construction of the “Communication Module” Limitation (hereinafter “Pat.
`Own. Supp. Br.”) 2–3.
`We determined in our preliminary construction that the disclosed
`structure only supports the use of a single wireless network card. Dec. 12–
`14. Although the district court cited column 31, lines 22–24 of the
`
`4
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`’306 Patent in its analysis of the disclosed structure for the communication
`module limitation (Ex. 2001, 34), we determined that that portion of the
`’306 Patent specification is not related to the identified function for the
`communication module limitation. Dec. 12–13.
`Analysis
`In the Institution Decision, we interpreted the claims using the
`broadest reasonable construction in light of the Specification. Dec. 7–13.
`Contrary to Petitioner’s contentions, our interpretation was not inconsistent
`with the broadest reasonable interpretation and its purpose.
`Petitioner argues that the Board’s preliminary construction of the
`communication module limitation is erroneous in light of the district court’s
`interpretation according to the Phillips standard. Req. Reh’g 4–8; see
`generally Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Petitioner
`contends that it is error for a claim interpretation under the broadest
`reasonable interpretation standard to be narrower than one reached under the
`Phillips standard, and that we have done so in this case, which is improper
`and contrary to the public interest. Req. Reh’g. 4–7 (citing Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016)). Petitioner argues that
`“[t]he district court’s construction of ‘communication module’ is
`reasonable.” Req. Reh’g 9–11. Because of this, Petitioner contends, it must
`be included within the scope of the construction under the broadest
`reasonable interpretation standard. Id. at 10.
`Initially, we note that, because “a wireless network card” is not
`necessarily broader than “a single wireless network card,” the question of
`whether the district court’s construction of the disclosed structure (“a
`wireless network card, and equivalents thereof”) is narrower than the
`
`5
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`preliminary construction of the Institution Decision (“a single wireless
`network card, and equivalents thereof”) depends on a determination of the
`scope of the “equivalents thereof” in view of the Specification and
`prosecution history. Polaroid Corp. v. Eastman Kodak. Co., 789 F.2d 1556,
`1570 (Fed. Cir. 1986).
`Petitioner contends that “the district court’s construction . . .
`encompasses structures with one or two network cards” and that “the district
`court’s construction correctly appreciated that both the one-network-card
`and the two-network-card embodiments in the patents correspond to the
`claimed ‘communication module.’” Req. Reh’g. 8, 10; see also id. at 9 n.6.
`However, the district court neither addressed the equivalents of “a wireless
`network card” nor expressly included two network cards among the
`equivalents. We acknowledged in our Institution Decision (Dec. 10, 12–13)
`that the district court cited a portion of the specification in which a device
`includes two wireless network cards. Ex. 2001, 34 (citing the ’306 Patent at
`31:22–24). Nevertheless, as we found in our Institution Decision, the
`citation is “is unrelated to the identified function of the communication
`module limitation” (Dec. 12), so it is not clear whether the district court
`intended this citation to be a disclosed structure for the claimed
`functionality. Indeed, other aspects of the district court’s claim construction
`order suggest that the equivalents only include a single network card. In
`particular, the order expressly stated that “[a]s to the corresponding
`structure, the specification discloses that [the functionality] is carried out by
`“a wireless network card” and then cites the portion of the specification
`(’306 Patent at 11:30–50) disclosing “a novel method . . . using only a
`single wireless network card.” Id. (emphasis added). In light of this
`
`6
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`evidence, we are not persuaded that we made an unreasonable judgment in
`our consideration of the district court’s claim construction analysis.
`In addition, we are “not generally bound by a prior judicial
`construction of a claim term.” Power Integrations, Inc. v. Lee, 797 F.3d
`1318, 1326 (Fed. Cir. 2015). Even if our claim interpretation were narrower
`than that of the district court, the Supreme Court specifically recognized that
`“inconsistent results” may occur between district court and USPTO
`determinations and that such inconsistencies are “inherent to Congress’
`regulatory design.” Cuozzo, 136 S. Ct. at 2146. Our reviewing court has
`likewise found that it is not fundamental legal error for us to reach a
`different conclusion than a district court, or even the Federal Circuit itself.
`Novartis AG v. Noven Pharms. Inc., 853 F.3d 1289, 1294 (Fed. Cir. 2017)
`(“Novartis alleges that a fundamental legal error pervades the PTAB’s Final
`Written Decisions: the PTAB unlawfully reached different conclusions than
`our court and the [district court], which addressed the ‘same’ arguments and
`the ‘same’ evidence and found the Asserted Claims nonobvious in two prior
`opinions . . . . [E]ven if the record were the same, Novartis’s argument
`would fail as a matter of law.”).
`Thus, to the extent our construction might differ from that of the
`district court, we are not persuaded by these arguments that our preliminary
`construction was based on an erroneous conclusion of law, a factual finding
`was not supported by substantial evidence, or there was an unreasonable
`judgment in weighing relevant factors.
`Petitioner also argues that we erred in “not properly consider[ing] how
`a person of ordinary skill in the art (POSITA)” would read the Specification,
`as “[t]he institution decision neither defines a POSITA nor analyzes how a
`
`7
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`POSITA would have read the specification.” Req. Reh’g 11–13. One of
`ordinary skill, Petitioner argues, would have understood that “one or two of
`the network cards described at column 31, lines 22–24 [of the ’306 Patent]
`could act as an AP.” Id. at 12. “As recognized by the Board, and as
`described in column 11, lines 30–50, a purpose of the invention was to
`provide at least one network card with the ability to connect to an AP and act
`as an AP.” Id. (citing Dec. 12.)3 Petitioner argues that a person of ordinary
`skill would have concluded the disclosure of two network cards was a
`disclosed structure corresponding to the function of the communication
`module limitation. Req. Reh’g 12–13.
`“[T]he absence of specific findings on the level of skill in the art does
`not give rise to reversible error where the prior art itself reflects an
`appropriate level and a need for testimony is not shown.” Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation
`omitted). Consistent with Okajima, the level of ordinary skill in this case is
`reflected not only by the information presented by the parties, but also by the
`prior art of record. Although both parties proposed definitions for the
`applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36;
`Prelim. Resp. 12), neither party specifically explained how any proposed
`level of ordinary skill in the art would impact the analysis presented. See
`Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d
`1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with
`
`
`3 We dispute Petitioner’s characterization of what was “recognized” in our
`Institution Decision, which clearly notes that the functionality is disclosed in
`the ’306 Patent as being performed “using only a single wireless network
`card” and “using a single Wireless NIC.” Dec. 12, quoting ’306 Patent at
`11:47-48, 24:28 (emphases in Dec.).
`
`8
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`respect to the level of ordinary skill, we do not find them persuasive that our
`preliminary construction was based on an erroneous conclusion of law, a
`factual finding was not supported by substantial evidence, or there was an
`unreasonable judgment in weighing relevant factors.
`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 Decisions.
`
`
`ORDER
`
`For the reasons given, it is
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`
`
`For PETITIONER:
`
`Chun M. Ng
`Miguel Bombach
`John Esterhay
`PERKINS COIE LLP
`cng@perkinscoie.com
`mbombach@perkinscoie.com
`jesterhay@perkinscoie.com
`
`For PATENT OWNER:
`
`Robert D. Katz
`KATZ, PLLC
`rkatz@katzfirm.com
`
`9
`
`
`
`IPR2017-01098 (Patent 8,559,369 B2)
`IPR2017-01099 (Patent 9,042,306 B2)
`
`
`Spencer C. Patterson
`spatterson@gchub.com
`
`10
`
`
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