Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 47
`Entered: March 22, 2019
`
`
`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 IPR2017-01099
`Patent 9,042,306 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 47
`Entered: March 22, 2019
`
`
`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 IPR2017-01099
`Patent 9,042,306 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
`
`
`I.
`
`INTRODUCTION
`
`Barkan Wireless Access Technologies, L.P. (“Patent Owner”) filed a
`Request for Rehearing (Paper 44, “Request” or “Reh. Req.”) of our Final
`Written Decision (Paper 42, “Final Written Decision” or “Dec.”) in which
`we determined that claims 1, 3–17, 19, 21–46, 48–56, and 58–68 of U.S.
`Patent No. 9,042,306 B2 (Ex. 1002, “the ’306 patent”) are unpatentable. For
`the reasons that follow, Patent Owner’s Request for Rehearing is denied.
`
`II.
`
`THE REQUEST FOR REHEARING
`
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`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.
`Thus, a request for rehearing is not an opportunity merely to disagree
`with the Board’s assessment of the arguments or weighing of the evidence,
`or to present new arguments or evidence.
`Patent Owner’s arguments relate to three elements of the Final
`Written Decision. First, with respect to the claim construction used for the
`“communication module limitation” (see Dec. 11), Patent Owner argues that
`that construction constitutes an impermissible change of theories without
`providing Patent Owner the opportunity to present arguments under the new
`theory (Reh. Req. 1); that “the Board failed to analyze” Patent Owner’s
`arguments concerning support in the ’306 patent’s Specification for Patent
`Owner’s claim construction (Reh. Req. 2–3); and that in reaching our claim
`
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`IPR2017-01099
`Patent 9,042,306 B2
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`construction we “did not apply Federal Circuit precedent holding that ‘the
`fact that a patent asserts that an invention achieves certain objectives does
`not require that each of the claims be construed as limited to structures that
`are capable of achieving all of the objectives.’” Reh. Req. 2 (citing Paper 41
`(“Tr.”), 29:1–4). Second, Patent Owner argues that the Final Written
`Decision improperly considered and relied upon new arguments by
`Petitioner. Reh. Req. 2. Lastly, Patent Owner argues error in the finding
`“that certain network devices identified in the prior art satisfied the claims’
`requirements for the use of a proxy server.” Reh. Req. 2–4.
`We have reviewed Patent Owner’s Request and carefully considered
`all of the arguments presented. For the following reasons, we are not
`persuaded that we misapprehended or overlooked any arguments or
`evidence.
`
`III. REQUEST FOR EXPANDED PANEL
`
`In the Request, Patent Owner “respectfully requests that an expanded
`panel be designated to consider this request for rehearing and to decide the
`rehearing on its merits.” Reh. Req. 4–5. Our governing statutes and
`regulations do not provide for parties to request, or panels to authorize, an
`expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.408.
`However, the Chief Judge may consider panel expansions upon a
`“suggestion” from, inter alia, a patent owner or petitioner. PTAB SOP 1,
`15; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-
`00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel)
`(per curiam).
`
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`IPR2017-01099
`Patent 9,042,306 B2
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`The standard operating procedure describes some of the reasons for
`which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M)
`(Rev. 15). For example, an expanded panel may be appropriate “to secure
`and maintain uniformity of the Board’s decisions, e.g., in related cases
`ordinarily involving different three judge panels.” Id. (§ III.M.1).
`In this case, the Chief Judge has considered Patent Owner’s
`suggestion for an expanded panel, but has determined that an expanded
`panel is not warranted.
`
`IV. DISCUSSION
`
`Change in Claim Construction
`A.
`For the “communication module limitation” of claim 1, the Decision
`on Institution preliminarily construed the limitation as a means-plus-function
`limitation, finding that the corresponding structure is “a single wireless
`network card, and equivalents thereof” and determining that the scope of
`equivalents excludes multiple wireless network cards. Paper 11 (“Decision
`on Institution”) 9–14. In the Final Written Decision, we modified this
`construction to remove the exclusion of multiple wireless network cards
`from the scope of the equivalents. Final Written Decision 11–16.
`Patent Owner argues that this is a “midstream” change of theory,
`impermissibly adopted without providing Patent Owner an opportunity to
`respond. Reh. Req. 1 (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
`1080 (Fed. Cir. 2015)).
`However, the construction of the communication module limitation,
`including the scope of equivalents, was at issue throughout the proceeding,
`and thus Patent Owner has received sufficient “notice of and a fair
`
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`IPR2017-01099
`Patent 9,042,306 B2
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`opportunity” to address the issue of whether multiple wireless network cards
`would be within the scope of equivalents for the disclosed structure. Belden,
`805 F.3d at 1080.
`Before institution, we asked the parties to address the issue of the
`disclosed structure in an order requiring pre-institution briefing. Paper 8.
`Pursuant to this order, the parties filed such briefing. Paper 9; Paper 10.
`After institution, Patent Owner proposed in its response that the Board
`adopt the district court’s construction. Paper 19 (“PO Resp.”), 7–8. This
`construction, like our claim construction in the Final Written Decision,
`included no limitation on the scope of equivalents. Ex. 2001, 35. The issue
`was also discussed at the oral hearing. Tr. 5 (Judge Hudalla to Petitioner,
`“Our preliminary construction said a single network card or equivalents,
`right? Should the equivalents include more than one network card? I mean,
`that’s something we struggled with”), 28–30 (questions to Patent Owner
`regarding two cards as an equivalent to disclosed structure). Therefore, as in
`Belden, Patent Owner had notice of the issue and opportunity to respond.
`With respect to the argument that we failed to analyze Patent Owner’s
`arguments concerning support in the ’306 patent’s Specification for its claim
`construction and that we did not properly apply Federal Circuit precedent,
`Patent Owner’s mere disagreement with our analysis is not a proper basis for
`a rehearing request, and does not persuade us that we overlooked or
`misapprehended the above evidence and argument that Patent Owner
`provided.
`
`New Arguments
`B.
`Patent Owner contends that we violated the Administrative Procedure
`Act by considering and relying upon “new arguments, to which Patent
`
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`IPR2017-01099
`Patent 9,042,306 B2
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`Owner did not have any opportunity to respond.” Reh. Req. 2. Patent
`Owner specifically cites as exemplary our citation of Petitioner’s
`Supplemental Reply in the Final Written Decision. Id. (citing Dec. 13).
`Patent Owner references a prior request for rehearing (Paper 34) of our June
`8, 2018, Order (Paper 30, “the June 8 Order”) relating to Patent Owner’s
`request for a Motion to Strike or to file a paper identifying portions of
`Petitioner’s Reply and Supplemental Reply that Patent Owner asserted were
`new arguments. Reh. Req. 2. Patent Owner additionally references our
`denial of that prior rehearing request. Id. (citing Paper 40). However, the
`June 8 Order granted Patent Owner the relief it requested as it related to the
`Supplemental Reply. Paper 30, 3. In particular, we authorized Patent
`Owner to file a list of the alleged new arguments in the Supplemental Reply.
`Id. And the prior rehearing request sought relief only as to our disposition of
`issues related to the Reply. Paper 34. Thus, it is unclear why Patent Owner
`cites these papers to show that it had no opportunity to respond to arguments
`it contends are improperly found in the Supplemental Reply.
`Although 37 C.F.R. § 42.23(b) prohibits new issues presented for the
`first time in reply, the reply may respond to arguments made on an already
`contested issue with appropriate new evidence. Intelligent Bio-Systems v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (citing
`37 C.F.R. § 42.23(b)). As set forth in the Final Written Decision, we found
`that Petitioner’s arguments, including those listed in Paper 33 (Patent
`Owner’s List of Improper Supplemental Reply Arguments), related to
`arguments made in the Patent Owner Preliminary Response, which were
`incorporated by reference into Patent Owner’s Supplemental Response.
`Final Written Decision 61–62. Patent Owner does not present any reasoning
`
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`IPR2017-01099
`Patent 9,042,306 B2
`
`or argument that persuades us that in making this determination we
`misapprehended or overlooked any arguments or evidence.
`C.
`Proxy Server
`Patent Owner contends we erred in determining that the prior art
`included devices that satisfied the claims’ requirements relating to a proxy
`server. Reh. Req. 2–4. Patent Owner lists its contrary evidence and
`arguments relating to its contention that a virtual private network (“VPN”)
`gateway device (as in the prior art) could not be a proxy server or act as a
`proxy. Id. at 2–3.
`We adopted Patent Owner’s proposed construction for “proxy server”
`(“an intermediate server that accepts requests from the device and acts on
`behalf of the device”) and determined that no construction of the term “acts
`as proxy” was necessary in light of that construction. Dec. 16–18. Patent
`Owner argues, without further explanation, that we “overlooked or
`misapprehended the fact that Patent Owner explained in its proposed claim
`construction that a proxy server must actually service requests.” Reh.
`Req. 3. Nevertheless, we considered this argument as part of our treatment
`of Patent Owner’s “proxy server” construction argument, wherein we
`adopted Patent Owner’s claim construction of that term. PO Resp. 8–9; Dec.
`16–18. Patent Owner also argues that we “failed to apply the requirement
`that a proxy server accept a request on behalf of the issuer, and then, if
`necessary, re-issue the request.” Reh. Req. 3 (citing PO Resp. 8, 51).
`However, we did not adopt any such “requirement” in our construction of
`“proxy server.” Nor is this argument found in Patent Owner’s claim
`construction arguments or its arguments relating to whether a VPN gateway
`
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`IPR2017-01099
`Patent 9,042,306 B2
`
`is a proxy server. See PO Resp. 50–51 (discussing whether a “home agent”
`is a proxy server).
`Patent Owner argues that we “failed to differentiate Virtual Private
`Network (VPN) equipment and gateway devices from the requirement for a
`proxy server or the function of ‘acts as proxy.’” Reh. Req. 2–3. We
`specifically addressed the question of whether a VPN gateway device in the
`prior art would teach or suggest the proxy server limitations in the claim and
`Patent Owner’s arguments relating to this issue. Dec. 25–27. In particular,
`our Decision addressed Patent Owner’s contentions that a VPN gateway
`could not be the claimed “proxy server” and did not “act as a proxy,”
`including examining whether the VPN gateway of the prior art met the
`construction we applied, and an analysis of the specification of the
`challenged patent and its discussion of a trusted computer that effectively
`creates a VPN. Id. Patent Owner argues that we disregarded evidence it
`presented to make this distinction, but does not point out where this evidence
`was addressed, as required by 37 C.F.R. § 42.71. Reh. Req. 2–4. To the
`extent that Patent Owner argues that we disregarded such evidence presented
`in Patent Owner’s arguments relating to whether the prior art VPN gateway
`teaches or suggests a proxy server (PO Resp. 21–26 (citing Exs. 2002, 2004,
`2006, 2010)), we note again that these arguments were addressed, as
`described above.
`Patent Owner does not persuade us that we misapprehended or
`overlooked any arguments or evidence. Merely disagreeing with our
`analysis or conclusions does not serve as a proper basis for a request for
`rehearing.
`
` 8
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`IPR2017-01099
`Patent 9,042,306 B2
`
`Patent Owner additionally argues that the testimony of Petitioner’s
`declarant, Dr. Lavian, is flawed because it is conclusory and because it uses
`common sense to supply a missing claim limitation. Reh. Req. 3. Patent
`Owner argues that our reliance on Dr. Lavian’s testimony contravenes the
`Board’s Revised Trial Practice Guide, which cautions against using
`conclusory and unsupported expert testimony to supply a limitation. Id. at
`3–4 (citing August 2018 Revised Trial Practice Guide, 4–5). However, the
`question before us was not whether common sense should be used to supply
`a missing claim limitation, but whether the prior art teaches the proxy server.
`Final Written Decision 24–26; PO Resp. 21–26; PO Supp. Resp. 1–3. We
`found that it does, and Patent Owner’s arguments do not persuade us that we
`misapprehended or overlooked evidence or arguments relating to this claim
`limitation. We further note that the portion of Dr. Lavian’s declaration cited
`in the Final Written Decision contains “supporting evidence of record,” and
`thus is not a “conclusory assertion . . . about general knowledge in the art . . .
`without supporting evidence of record.” August 2018 Revised Trial Practice
`Guide, 5; see Ex. 1003 ¶¶ 263–264 (cited in Final Written Decision 24–25,
`27; cited in Reh. Req. 3). Patent Owner does not present any reasoning or
`argument that persuades us that, in making our determinations relating to the
`proxy server, we misapprehended or overlooked any arguments or evidence.
`
`V. CONCLUSION
`
`We have reviewed and considered the arguments in Patent Owner’s
`Rehearing Request and conclude that Patent Owner has not carried its
`burden of demonstrating that the Board misapprehended or overlooked any
`matters in rendering the Final Written Decision. 37 C.F.R. § 42.71(d).
`
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`IPR2017-01099
`Patent 9,042,306 B2
`
`Thus, Patent Owner’s challenge does not meet the standard set forth for a
`request for rehearing.
`The Request for Rehearing is denied.
`
`
`10
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`IPR2017-01099
`Patent 9,042,306 B2
`
`PETITIONER:
`
`Chun M. Ng
`Miguel Bombach
`John Esterhay
`PERKINS COIE LLP
`cng@perkinscoie.com
`mbombach@perkinscoie.com
`jesterhay@perkinscoie.com
`
`
`PATENT OWNER:
`
`Robert D. Katz
`KATZ, PLLC
`rkatz@katzfirm.com
`
`Spencer C. Patterson
`spatterson@gchub.com
`
`
`
`11
`
`
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