throbber
Paper 28
`Date: 25 February 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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
`____________
`
`
`Before SALLY C. MEDLEY, SCOTT R. BOALICK, and THOMAS L.
`GIANNETTI, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`Motion for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`

`

`
`
`
`IPR2012-00026
`Patent 6,757,717
`
`
`
`
`INTRODUCTION
`
`Petitioner Microsoft Corporation moves for rehearing and reconsideration of
`
`that portion of the Decision on Request for Inter Partes Review (“Decision”)
`denying Petitioner’s request for inter partes review of claims 11, 12, and 14 of
`United States Patent 6,757,717. Paper 17. For the reasons that follow, Petitioner’s
`motion is denied.
`
`The applicable standard for this motion is set forth in 37 C.F.R. § 42.71(d),
`which provides in relevant part:
`
`
`A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board. 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, opposition, or a reply.
`
`
`BACKGROUND
`
`Petitioner sought inter partes review of claims 1, 3, 10-12, 14, and 22-24 of
`
`the ʼ717 patent on September 18, 2012. Paper 6. The ʼ717 patent is directed to a
`system and method for data access in a packet switched network. For a fuller
`description of the technology of the ʼ717 patent, see Decision 2-6. The Petition
`challenged the enumerated claims as anticipated or obvious over several
`references, alone and in combination. See Petition 3.
`
`The Board granted the Petition in part and instituted an inter partes review as
`to claims 1, 3, 10, and 22-24. Decision 26. As to claims 11, 12, and 14, however,
`the Board determined that the Petitioner had failed to establish a reasonable
`
`2
`
`
`

`

`
`
`
`IPR2012-00026
`
`Patent 6,757,717
`
`
`likelihood of prevailing, and therefore denied the petition as to those claims. Id.
`Petitioner now seeks reconsideration of that denial.
`
`Claims 11, 12, and 14 are each directed to an embodiment of the invention
`of the ʼ717 patent that is illustrated in Figures 8, 9, and 10 and described, e.g., at
`col. 8, ll. 11-39, of the specification. In accordance with that embodiment, a
`receiver/computer receiving an auxiliary digest issues a “partial” signal to a
`sender/computer if the received auxiliary digest matches a digest stored in the
`receiver/computer’s cache memory. Col. 8, ll. 28-31. Upon receiving the “partial”
`signal the sender/computer sends the difference between the requested data object
`and the data object corresponding to the digest. Id. ll. 34-39. If a negative signal is
`received from the receiver/computer, the sender/computer sends the requested data
`object. Id. ll. 31-34. Receipt of a positive signal indicates that the data object was
`found in memory by the receiver/computer. Id. ll. 23-26.
`
`Consistent with this description, the claims involved in this motion each
`recite the following method step:
`
`…receiving a response signal from said receiver/computer at said sender/
`
`computer, said response signal containing a positive, partial or negative
`
`indication signal for said digital digest….
`
`The Board’s decision construed this language in light of the specification as
`requiring the receiving of three signals (partial, positive, and negative) as
`necessary, rejecting Petitioner’s contention that the “partial” and “positive” signals
`are optional and thus entitled to “no patentable weight.” See Decision at 22-24.
`Because the Perlman, Yohe, and Santos references relied on by Petitioner fail to
`disclose receiving all these signals the Board denied Petitioner’s request as to those
`claims. Decision 24.
`
`
`3
`
`
`

`

`IPR2012-00026
`Patent 6,757,717
`
`
`
`
`ANALYSIS
`
`
`
`
`
`
`
`
`
`
`1. Claim Construction
`Petitioner’s main argument is that in construing the above “receiving” step
`
`of claims 11-12 and 14, the Board failed to apply the “broadest reasonable
`interpretation.” Motion 3-4. Petitioner is incorrect. The broadest reasonable
`interpretation of a claim must be consistent with the specification. See In re Suitco
`Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Petitioner’s contention that
`the alternative signals in the receiving step are “optional” conflicts with Figures 8-
`10 of the ʼ717 patent and the accompanying written description in the specification
`discussed supra and at pages 4-6 and 21-22 of the Decision.
`
`Petitioner’s newly-cited authorities are unavailing. In TiVo, Inc. v. EchoStar
`Communications Corp., 516 F.3d 1290, 1298 (Fed. Cir 2008), the Court concluded
`that the claim term “multitude of standards” includes not only broadcast standards
`of the type set forth in the claim, but also data standards of the type set forth in the
`written description portion of the specification. EchoStar thus does not support
`Petitioner’s position; instead, it supports the view that claims must always be
`construed to be consistent with the specification. Petitioner’s reliance on Ex Parte
`Harris, 2010 WL 3065978 (BPAI August 4, 2010), on rehearing 2011 WL 309487
`(BPAI 2011), is likewise misplaced. This 2-1 decision is non-precedential and
`thus not binding on this panel. See PTAB Standard Operating Procedure (SOP) 2
`(Rev. 7). And even if it were precedential, Harris would not support Petitioner as
`the claims there followed an “if … then” format setting forth a series of conditional
`steps that led the majority to conclude that the conditions were “mutually
`exclusive.” 2011 WL 309487 at *1. Here, the claim format is different from that
`in Harris, as the method steps are not conditional.
`
`4
`
`
`

`

`
`
`
`IPR2012-00026
`
`Patent 6,757,717
`
`
`Alternatively, Petitioner contends that the broadest reasonable interpretation
`
`of the claims requires but a “single” response signal resulting from “one run or
`operation of the recited method.” Motion 5-6. We are not convinced by
`Petitioner’s argument. Petitioner cites nothing in the specification of the ʼ717
`patent that leads to the conclusion that the claims are limited to “one run” of the
`claimed method. The patent, in fact, is directed to improving the efficiency and
`speed of data access in packet switched networks, where high data volume (and
`therefore many messages and responses) would be expected. ʼ717 patent, col. 1,
`ll. 61-65. A method limited to a single response would not achieve the stated
`improvement. Neither the ʼ717 patent itself nor the cited authorities therefore
`support Petitioner’s alternative claim construction, based upon its “one run” or
`other theories.
`
`
`2. Figure 10
`
`Petitioner suggests that including Figure 10 (showing the receiver) in the
`Decision was an error. Motion 6-7. It was not. The Decision refers to the
`embodiment of Figures 8-10, not just Figure 10. See Decision 21. Figure 10 was
`selected because it shows the three separate signals. In any case, as Petitioner
`recognizes, claims 11, 12, and 14 recite the receiver in the receiving step
`reproduced supra. There is no inconsistency between the Board’s construction of
`the claim language and the patent figures, as Petitioner suggests (Motion 7-8), or
`any uncertainty from the written description that the receiver/computer shown in
`Figure 9 must receive the three types of signals as shown. Motion 8. The patent
`figures support the Board’s construction, not Petitioner’s. See Decision 21-22.
`Petitioner’s contentions based on the patent figures and the Board’s construction of
`the term “receiver/computer” are without merit. Motion 7-8.
`
`5
`
`
`

`

`
`
`
`
`
`
`IPR2012-00026
`Patent 6,757,717
`
`
`3. Claim Differentiation
`
`This argument (Motion 8-9) is new and thus does not comply with Rule
`42.71(d). In any event, it is without merit. “It is axiomatic that the claim
`construction process entails more than viewing the claim language in isolation.”
`Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, 1305
`(Fed. Cir. 2011). Moreover, “[c]laim language must always be read in view of the
`written description, … and any presumption created by the doctrine of claim
`differentiation will be overcome by a contrary construction dictated by the written
`description or prosecution history.” Id. (citations and internal quotation marks
`omitted). Petitioner’s claim differentiation argument is inconsistent with the
`specification and the figures showing three signals and is therefore unavailing.
`
`
`4. Schumer
`Petitioner revisits the Schumer decision (Schumer v. Lab. Computer Sys.,
`
`Inc., 308 F.3d 1304 (Fed. Cir. 2002)), first cited in the Petition at 13. Schumer is
`discussed at length and distinguished in the Decision at 22-23. Petitioner’s new
`analysis of claims 11, 12, and 14 in relation to Schumer (Motion 9) does not
`convince us that anything was misapprehended or overlooked there. It furthermore
`ignores the patent specification and is otherwise not persuasive. Also unavailing is
`Petitioner’s reference to Proxyconn’s infringement allegations (Ex. 1012) without
`further explanation or analysis. Id.
`
`
`6
`
`
`

`

`
`
`
`
`
`
`IPR2012-00026
`Patent 6,757,717
`
`5. Section 101 etc.
`
`We are not persuaded by Petitioner’s additional arguments based on 35
`U.S.C. § 101, the rules of football, or chess. Motion 10. To the extent they are
`relevant, they seem to be a restatement of contentions already discussed supra.
`
`6. Additional Grounds
`
`There was no “misunderstanding” of the Petitioner’s contentions regarding
`the receiving step. Motion 11. The Board did not accept Petitioner’s claim
`construction and therefore was not persuaded by Petitioner’s application of that
`step to Perlman, Yohe, and Santos (which Petitioner refers to as its “fallback
`position”). Id. Likewise, there was no “incorrect” understanding as to claim 14.
`As claim 14 depends from claim 11 it includes the receiving limitation not taught
`or suggested by the references. Decision 24. The Board also concluded that the
`additional “plurality of data items” limitation of claim 14 is entitled to patentable
`weight but made no finding as to whether that is met by Perlman. Id.
`
`
`CONCLUSION
`
`
`
`Petitioner has not carried its burden of demonstrating that the Board’s
`
`Decision misapprehended or overlooked any matters. 37 C.F.R. § 42.71d). For the
`foregoing reasons the Motion is DENIED.
`
`
`
`
`
`
`
`
`7
`
`
`

`

`
`
`
`IPR2012-00026
`Patent 6,757,717
`
`For Patent Owner
`Matthew L. Cutler
`Harness, Dickey & Pierce, PLC
`Email: mcutler@hdp.com
`
`Bryan K. Wheelock
`Harness, Dickey & Pierce, PLC
`Email: bwheelock@hdp.com
`
`For Petitioner
`
`John D. Vandenberg
`Klarquist Sparkman LLP
`john.vandenberg@klarquist.com
`
`Stephen J. Joncus
`Klarquist Sparkman LLP
`stephen.joncus@klarquist.com
`
`
`
`
`
`8
`
`
`

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