Filed on behalf of Microsoft Corporation
`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`Case IPR2012-00026 (TLG)
`Patent 6,757,717 B1
`
`____________
`
`MOTION FOR REHEARING OF DECISION
`ON REQUEST FOR INTER PARTES REVIEW OF
`CLAIMS 1, 3, 10-12, 14 AND 22-24 OF U.S. PATENT NO. 6,757,717
`
`
`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`Case IPR2012-00026 (TLG)
`Patent 6,757,717 B1
`
`____________
`
`MOTION FOR REHEARING OF DECISION
`ON REQUEST FOR INTER PARTES REVIEW OF
`CLAIMS 1, 3, 10-12, 14 AND 22-24 OF U.S. PATENT NO. 6,757,717
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`Page
`
`
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STATEMENT OF RELIEF ............................................................................. 2
`
`III. ARGUMENT ................................................................................................... 2
`
`A.
`
`B.
`
`
`
`
`
`These Method Claims Do Not Require
`Receiving Partial Or Positive Indication Signals .................................. 2
`
`The Petition Shows That The Prior Art Discloses The
`Features Petitioner Argued Are Entitled To No Patentable Weight ...10
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`Page
`
`Ex Parte Harris,
`2011 WL 309487 (BPAI Jan. 27, 2011) ................................................................. 4
`
`Ex Parte Harris,
`2010 WL 3065978 (BPAI Aug. 4, 2010) ............................................................... 4
`
`Schumer v. Lab. Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002) .............................................................................. 9
`
`TiVo, Inc. v. EchoStar Commc’ns Corp.,
`516 F.3d 1290 (Fed. Cir. 2008) ..........................................................................3, 4
`
`Uniroyal, Inc. v. Rudkin-Wiley Corp.,
`837 F.2d 1044 (Fed. Cir. 1988) .............................................................................. 9
`
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`The “Decision on Request for Inter Partes Review” (Paper 17, December 21,
`
`2012) (“Decision”) denied the Petition as to claims 11, 12 and 14 of the ’717
`
`patent. This motion seeks reconsideration of that denial and an order including
`
`these claims in the trial.
`
`Claim 11 is a “method performed by a sender/computer.” The Board’s first
`
`basis for this denial was its interpretation of claim 11’s “receiving” step as
`
`requiring the following: “the receiver/computer described must issue a positive,
`
`negative and partial signal as required.” (Decision, pp. 21, 22). As explained in
`
`Sec. III. A. below, this is not the broadest reasonable interpretation. Rather, in
`
`light of the claims as a whole and the specification, this claim is anticipated by a
`
`prior art method in which the sender receives only a negative indication signal.
`
`The Board’s second basis for this denial was its understanding that the
`
`Petitioner relied, for some claim elements, entirely on its position that the claim
`
`language was not entitled to patentable weight. As explained in Sec. III. B. below,
`
`however, this understanding is not correct. The Petition argued and showed that
`
`these claim elements are disclosed in the prior art even if they were entitled to
`
`patentable weight.
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 1
`
`
`
`II.
`
`STATEMENT OF RELIEF
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`Petitioner moves for rehearing of the Decision’s denial of the Petition as to
`
`claims 11, 12, and 14 of the ’717 patent, including rehearing of all bases for that
`
`denial, and moves that the Board authorize as additional grounds for trial the
`
`following grounds set forth and supported in the Petition:
`
`• anticipation of these three claims by Perlman;
`
`• anticipation of claims 11 and 12 by each of Yohe and Santos; and
`
`• obviousness of these three claims over the combination of Perlman and
`
`Yohe.
`
`Patent Owner Proxyconn, Inc. objects to the relief requested herein and is
`
`prepared to file an opposition if requested by the Board to do so.
`
`III. ARGUMENT
`
`A. These Method Claims Do Not Require
`Receiving Partial Or Positive Indication Signals
`
`Claim 11 is not directed to a machine or article (e.g., computer readable
`
`medium) having recited capabilities. It is a “method” claim. It recites “a method
`
`performed by a sender/computer . . . .” (Decision, p. 20) (quoting claim 11). The
`
`first recited step of the sender is to create and transmit to the receiver/computer, “a
`
`digital digest” of data. The second recited step of the sender is “receiving a
`
`response signal from the receiver/computer,” “said response signal containing a
`
`positive, partial or negative indication signal for said digital digest.” (Emphasis
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 2
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`added.) The third recited step of the sender is to transmit “said data” to the
`
`receiver/computer, but that step is contingent on the following condition: “if a
`
`negative indication signal for said digital digest” is received.
`
`The Decision interprets the second, “receiving” step of the sender, as
`
`requiring that “the receiver/computer described must issue a positive, negative and
`
`partial signal as required.” (Decision, pp. 21, 22). For the following reasons, this
`
`is not the broadest reasonable interpretation of this claim step. (See also Petition,
`
`pp. 13-14).
`
`First, the three alternative signals recited in this “receiving” step are
`
`mutually exclusive. For a single item of data and single digest on that data, the
`
`sender receives either a negative signal, or a positive signal, or a partial signal, not
`
`all three or even two of the three. Fig. 9 of the patent illustrates this. The law is
`
`clear that such a method claim step reciting a number of mutually exclusive
`
`alternatives, covers a method that uses only one of those alternatives. This is so
`
`whether the claim is construed for purposes of infringement or anticipation. For
`
`example, in TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1295 (Fed.
`
`Cir. 2008), a claim recited “[1] accepting television (TV) broadcast signals,
`
`wherein said TV signals are based on a multitude of standards, including, but not
`
`limited to, National Television Standards Committee (NTSC) broadcast, PAL
`
`broadcast, satellite transmission, DSS, DBS, or ATSC.” (Emphasis added.) The
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 3
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`accused DVR product was not capable of accepting each type of signal recited in
`
`this claim step. Id. Nevertheless, use of the accused DVR infringed this process
`
`claim: “the use of the word ‘or’ in the list of standards makes it clear that the
`
`claim language does not require that the claimed device be capable of processing
`
`signals based on all of the listed standards.” Id. at 1297. Similarly, in Ex Parte
`
`Harris, Appeal 2009-007374, 2010 WL 3065978, at *2 (BPAI Aug. 4, 2010), the
`
`method claim recited a series of alternative steps preceded by “if” conditions,
`
`including “[b] if the storage medium is not assigned to the postage meter,
`
`determining if operational . . . .” Id. The Board held that a prior art reference
`
`anticipated this claim despite its method not performing three of the steps recited in
`
`the claim: “in a method claim, as long as the prior art meets one of the ‘if’
`
`conditions . . . , the other ‘if’ iterations are conditional and therefore ‘optional,’ and
`
`thus do not need to be met for art to read on the claim.” The Board confirmed this
`
`rejection and this rule of law on rehearing: “The subject matter of a method claim
`
`is the performance of the recited steps. Claim 1 recites two alternative step
`
`directions which are performed ‘if’ conditions precedent are met. . . . These two
`
`conditions are mutually exclusive.” Ex Parte Harris, Appeal 2009-007374, 2011
`
`WL 309487, at *1 (BPAI Jan. 27, 2011). Under this rule of law, an anticipatory
`
`reference need disclose receipt of one or more of the three alternatives recited in
`
`claim 11’s “receiving” step, not all three.
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 4
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`Second, claims 11 and 12 do not require that the sender/computer perform
`
`more than one run or operation of the recited method. Specifically, claims 11 and
`
`12 recite a series of three or four actions performed by a sender/computer—
`
`without requiring that the sender/computer repeat any of those actions. The first
`
`two actions are that the sender/computer must create and transmit “a digital
`
`digest.” Claims 11 and 12 do not require the sender/computer to perform these
`
`steps more than once. The third action is that the sender/computer must receive a
`
`“response signal.” Again, claims 11 and 12 do not require the sender/computer to
`
`perform this step more than once. Thus, these claims, under a broadest reasonable
`
`interpretation, do not require the sender to create or to transmit more than one
`
`“digital digest” or to receive more than one “response signal.” In other words, a
`
`prior art method could anticipate these claims even if it processed only a single
`
`“digital digest” and a single “response signal.”
`
`As recited in the claim, that “response signal” must be either a positive
`
`indication or a partial indication or a negative indication. As the final clause of the
`
`claim indicates (“if a negative indication signal is received, . . .”), that response
`
`signal may be a “negative” indication signal, but it need not be. Nor, as indicated
`
`by the disjunctive “or” in the receiving step, need it be a partial indication or
`
`positive indication signal. Rather, it merely needs to be one of those three.
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 5
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`Therefore, a prior art reference otherwise disclosing each step of the method,
`
`and which received only a single response signal (which was a negative signal),
`
`anticipates at least claims 11 and 12. And, for the same reasons, a prior art
`
`reference disclosing each step of the method, in which only two (negative) signals
`
`are received, anticipates claim 14.
`
`Third, had the Examiner or patent applicant intended the narrower
`
`interpretation put forth in the Decision, they could have recited a multi-run method
`
`requiring transmission of multiple digital digests and multiple response signals,
`
`and specified that those received response signals must over time include positive,
`
`partial “and” negative indication signals. But, the issued claims do not say that.
`
`Fourth, the Decision looks in part to Fig. 10. (Decision, pp. 21-22). But, the
`
`flowchart of Fig. 10 concerns the receiver, not the sender. As noted, claims 11, 12,
`
`and 14 purport to recite a method performed by a sender. Fig. 9, not Fig. 10,
`
`addresses the sender:
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 6
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`
`
`The flowchart of Fig. 9 does not require that the sender ever receive a partial
`
`or positive indication signal. Instead, the Fig. 9 flowchart may be satisfied by the
`
`sender calculating a digest on data, sending that digest to the receiver, receiving a
`
`“negative” signal, and sending data to the receiver, which then finishes a
`
`transaction. In other words, a method may comply with this flowchart and never
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 7
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`encounter a partial or positive signal. Excluding such a method from the scope of
`
`claims 11, 12 and 14 is not the reasonable, broadest interpretation.
`
`Fifth, although claims 11, 12 and 14 do recite a “receiver/computer,” the
`
`Board’s construction of that term properly does not limit it to a device capable of
`
`issuing a positive, negative and partial signal. (Decision, p. 14). Nor does the
`
`Decision interpret any other instrumentality recited in claims 11, 12 or 14 as
`
`requiring such a capability. Therefore, neither this “receiving” step of the claimed
`
`method, nor any instrumentality recited in this method claim, requires receipt of a
`
`positive or partial signal, or the capability of sending or receiving a positive or
`
`partial indication signal.
`
`Sixth, application of the doctrine of claim differentiation shows that the
`
`Decision’s interpretation is not the broadest reasonable interpretation. The
`
`Decision limits these claims with features of the flowcharts of Figs. 8 and 10.
`
`(Decision, pp. 21-22). But, other claims demonstrate that the methods of these
`
`three claims do not require everything shown in Figs. 8 and 10. For example,
`
`claim 25—but not these three claims—recites receiving both a principal digital
`
`digest and one or more auxiliary digital digests. Claim 17—but not these three
`
`claims—recites creating and transmitting digital digests of both principal and
`
`auxiliary data. Claims 17 and 32-34—but not claims 11, 12, and 14—recite steps
`
`including a “difference.” These differences in language among the different claims
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 8
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`are a strong indicator that claims 11, 12 and 14 do not require creating,
`
`transmitting or receiving digital digests of auxiliary data or transmitting a
`
`“difference.” This in turn demonstrates that not everything in the flowcharts of
`
`Figs. 8 and 10 is required to happen in the methods of claims 11, 12, and 14.
`
`“Where some claims are broad and others narrow, the narrow claim limitations
`
`cannot be read into the broad whether to avoid invalidity or to escape
`
`infringement.” Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1054-55
`
`(Fed. Cir. 1988).
`
`Seventh, the Decision distinguishes Schumer v. Lab. Computer Sys., Inc.,
`
`308 F.3d 1304, 1311 (Fed. Cir. 2002), cited by Petitioner, on the ground that “the
`
`method in Schumer did not depend on the capability of translating all three recited
`
`elements, for the accused infringers omitted one.” (Decision, p. 23). But, here
`
`nothing in the method of claims 11, 12 or 14 depends on a capability of processing
`
`a positive or a partial signal. Unlike other claims in this patent, these three claims
`
`say nothing about what happens if a positive or partial signal is received.
`
`Similarly, that the accused infringers in Schumer omitted one of three recited
`
`alternatives does not distinguish this case. As the Petition shows, the infringement
`
`allegation by the purported patent owner here, Proxyconn, did not initially allege
`
`that the accused method’s sender receives a “partial” indication signal. (Petition,
`
`Ex. 1012, p. 30).
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 9
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`Eighth, as nominal “method” claims, claims 11, 12 and 14 are directed to a
`
`series of actions. They are not directed to a machine or article (e.g., computer
`
`readable medium) having recited capabilities. Nor can these claims, consistent
`
`with Sec. 101, be directed to a protocol or algorithm or flowchart having multiple
`
`if-then branches of possible operations. A protocol, algorithm or flowchart may
`
`contemplate hundreds of different operations, any one of which may or may not be
`
`practiced depending on the data inputs it receives. For example, the rules of
`
`football or chess or golf contemplate myriad different actions (methods) that may
`
`be taken consistent with those rules. But that, of course, does not require that each
`
`actor in these games actually perform each contemplated move or even be capable
`
`of doing so.
`
`In sum, a prior art method performing the entirety of the method of claim 11,
`
`or claim 12, or claim 14 anticipates the claim, even if that prior art method’s sender
`
`does not receive a positive or partial response signal and even if its receiver is not
`
`capable of sending such a signal.
`
`B.
`
`The Petition Shows That The Prior Art Discloses The
`Features Petitioner Argued Are Entitled To No Patentable Weight
`
`The remaining grounds for the Decision’s denial as to claims 11, 12 and 14
`
`are based on a misunderstanding of the Petitioner’s position as stated in the
`
`Petition.
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 10
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`The Board understood Petitioner’s contention that Perlman, Yohe and
`
`Santos each discloses the “receiving” step of claim 11 to be “premised on
`
`Petitioner’s” position that this “receiving” step has no patentable weight.
`
`(Decision, p. 24). But, this is not correct. Petitioner did not rest on its “no
`
`patentable weight” position. Rather, as a fallback position, it argued and showed
`
`that this claim element is disclosed in the prior art even if it were given patentable
`
`weight.
`
`After setting forth its “no patentable weight” position, the Petition expressly
`
`states that each of these three prior art references “discloses the sender receiving a
`
`negative indication signal from the receiver, and the sender responding thereto by
`
`returning the data to the receiver. See App. A14:10.” (Petition, p. 24.) The cited
`
`portions of page 14 of Appendix A to the Petition cited specific portions of each
`
`reference disclosing this “receiving” step. Petitioner repeated the same point
`
`discussing the next, “transmitting,” step of claim 11; first stating its position about
`
`“no patentable weight” but then stating “in any event, each reference discloses this
`
`step. See immediately above.” (Id.). Petitioner therefore asks the Board to
`
`reconsider this portion of the Decision.
`
`Similarly, the Board understood that Petitioner’s contention that Perlman
`
`anticipates claim 14 was premised on Petitioner’s position that the language of
`
`claim 14 was entitled to no patentable weight. (Decision., p. 24). This
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 11
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`understanding also is incorrect. After setting forth its “no patentable weight”
`
`position, the Petition proceeded to show that in any event Perlman disclosed the
`
`feature recited in claim 14. (Petition, p. 25; Petition App. A15:15).
`
`
`
`Dated: January 3, 2013
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/John D. Vandenberg/
`John D. Vandenberg
`Registration No. 31312
`Stephen J. Joncus
`Registration No. 44809
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`Motion for Rehearing of Decision on Request for Inter Partes Review
`of Claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No. 6,757,717
`
`Page 12
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of this Motion for Rehearing
`
`of Decision for Inter Partes Review was served on the official correspondence
`
`address for the ’717 Patent shown in PAIR and the attorneys of record for Plaintiff
`
`in this proceeding and in the concurrent litigation matter:
`
`MATTHEW L. CUTLER
`BRYAN K. WHEELOCK
`DOUGLAS A. ROBINSON
`HARNESS, DICKEY & PIERCE, PLC
`7700 BONHOMME, SUITE 400
`ST. LOUIS, MO 63105
`
`GENE SCOTT
`PATENT LAW & VENTURE GROUP
`36 EXECUTIVE PARK
`SUITE #110
`IRVINE, CALIFORNIA 92614
`
`MARC A. FENSTER
`ANDREW D. WEISS
`RUSS AUGUST & KABAT
`12424 WILSHIRE BOULEVARD, 12TH FLOOR
`LOS ANGELES, CALIFORNIA 90025
`
`via EXPRESS MAIL, on January 3, 2013.
`
`
`
`
`
`
`
`By /John D. Vandenberg/
`
`John D. Vandenberg
`
`Registration No. 31312
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
