Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 22
`Entered: August 16, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., LG ELECTRONICS, INC., HTC CORPORATION, and HTC
`AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-003891,2
`Patent 8,712,723 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`1 LG Electronics, Inc., HTC Corporation, and HTC America, Inc., who filed
`a Petition in IPR2018-01458, have been joined to petitioner in this
`proceeding.
`2 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
`
`
`
`

`

`Case IPR2018-00389
`Patent 8,712,723 B1
`
`
`I. INTRODUCTION
`
`
`
`On June 17, 2019, the Board issued a Final Written Decision in this
`
`proceeding. Paper 20 (“Decision” or “Final Dec.”). In the Decision, we
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`determined that Petitioner had shown by a preponderance of the evidence
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`that claims 1–3, 5–7, and 10–18 of U.S. Patent No. 8,712,723 B1 (Ex. 1001,
`
`“the ’723 patent”) were unpatentable. Id. at 45.
`
`
`
`On July 17, 2019, Patent Owner, Uniloc 2017 LLC, timely filed a
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`Request for Reconsideration of our Decision under 37 C.F.R. § 42.71(d).
`
`Paper 21 (“Request” or “Req. Reh’g”). For the reasons discussed below, we
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`are not persuaded that we erred in the Decision, and deny Patent Owner’s
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`Request for Rehearing.
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`II. LEGAL STANDARD
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`
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`A request for rehearing “must specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, an opposition, or a reply.”
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`37 C.F.R. § 42.71(d). The burden of showing a decision should be modified
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`on a request for rehearing lies with the party challenging the decision. Id.
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`III. ANALYSIS
`
`
`
`In the Decision, we addressed—at length—Patent Owner’s
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`“retrospective” argument asserting that Fabio3 validates the preceding step
`
`(K−1) rather than the current step (K) by explaining that, when considering
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`Fabio’s disclosure as a whole, Fabio discloses that the current step is the
`
`
`3 US 7,698,097 B2 (Ex. 1006, “Fabio”).
`
`2
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`

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`Case IPR2018-00389
`Patent 8,712,723 B1
`
`step being validated and counted. See Final Dec. 30–33. We stated, for
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`example:
`
`We understand Patent Owner’s [retrospective]
`
`interpretation to be based on Fabio’s reference to the “last step
`recognized”—interpreting the “last step recognized” as the last
`or preceding step. In fact, the relevant disclosure in Fabio
`refers to the “last step recognized,” the “current step,” and the
`“immediately preceding step”:
`More precisely, the last step recognized is validated if the
`instant of recognition of the current step T R(K) falls
`within a validation interval TV, defined with respect to
`the instant of recognition of the immediately preceding
`step T R(K−1), in the following way:
`
`TV=[T R(K−1)+ΔTK−1−TA, T R(K−1)+ΔTK−1+TB]
`where TA and TB are complementary portions of the
`validation interval TV.
`[Ex. 1006,] 4:35–43. Patent Owner contends that “last step
`recognized” refers to the immediately preceding step (K−1).
`We disagree. First, the language quoted above indicates that
`the current step has been recognized (“instant of recognition of
`the current step”), and the current step (K) necessarily occurred
`more recently than the immediately preceding step (K−1). See
`id. at Fig. 6 (illustrating a timeline of steps 1, 2, . . . , K−2, K−1,
`K). Second, only recognized steps are subjected to the
`validation test. Id. at 4:22–27 (“If . . . the step-recognition test
`is passed (output YES from block 225), the control unit 5
`executes a first validation test, corresponding to the regularity
`of the individual step (block 230).”), 6:27–32 (discussing the
`second counting procedure and stating “The second validation
`test is altogether similar to the first validation test carried out in
`block 230 of FIG. [4].”), Figs. 4, 7.
`
`Accordingly, we find that “last step recognized” refers to
`the current step (K) because both (K) and (K−1) are recognized
`steps, and between them, (K) was the last step that was
`recognized. This understanding is further supported by several
`of Fabio’s claims, which discuss validation of the “current
`detected step.” . . . We note that all of this claim language
`appeared in the Fabio application as originally filed on October
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`3
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`Case IPR2018-00389
`Patent 8,712,723 B1
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`2, 2006. See Fabio patent file history, Specification 16 (filed
`October 2, 2006) (Ex. 3001).
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`In addition to being consistent with Fabio’s disclosure,
`Petitioner’s contentions that the current detected step (K) is the
`step being validated are supported by reference to the testimony
`of its declarant. See Pet. 31–36 (citing, in relevant part, Ex.
`1003, 48–49). We credit this testimony as it is unrebutted,
`factually supported, and more consistent with Fabio’s
`disclosure as we have described above. Consequently, we view
`Petitioner’s evidence as more persuasive (and probative) than
`Patent Owner’s reading of Fabio.
`
`Id. at 31–33.
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`
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`In its Request, Patent Owner largely repeats its retrospective
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`argument. See, generally, Req. Reh’g. Patent Owner’s Request, therefore,
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`appears to be little more than a request to reconsider arguments already
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`made in Patent Owner’s Response. A Request for Rehearing, however, is
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`not an opportunity to represent arguments that have already been presented,
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`nor is it an opportunity to merely express disagreement with a decision. If
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`not raising a matter overlooked or misapprehended by the Board, the proper
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`course for a party dissatisfied with a Board decision is to seek judicial
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`review, not to file a request for rehearing to reargue issues that have already
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`been decided. See 35 U.S.C. § 141.
`
`
`
`In addition to reiterating its retrospective argument, Patent Owner
`
`argues that our interpretation of Fabio precludes the first and second steps
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`from being counted. Req. Reh’g 3–4. Patent Owner argues that, under its
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`retrospective interpretation, Fabio’s process would count the second step.
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`Id. at 5.
`
`
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`Patent Owner’s arguments fail to persuade us that we misapprehended
`
`or overlooked any matter. Initially, as Patent Owner presents these
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`4
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`Case IPR2018-00389
`Patent 8,712,723 B1
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`arguments for the first time in its Request, the arguments are not a proper
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`basis on which to base a request for rehearing. See 37 C.F.R. § 42.71(d).
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`Nonetheless, we consider the merits of Patent Owner’s arguments.
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`
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`Patent Owner argues that we erred by agreeing with Petitioner’s
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`interpretation of Fabio because, under that interpretation, Fabio fails to count
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`the first and second steps despite emphasizing the importance of accurately
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`counting the total number of steps. See Req. Reh’g 3–4. Patent Owner
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`further argues that its retrospective interpretation is better because, under
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`that interpretation, Fabio would count the second step. Id. at 4–5. Notably,
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`Patent Owner does not argue that Fabio would also count the first step under
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`its retrospective interpretation. Indeed, Patent Owner cannot make that
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`argument because even under its retrospective interpretation, the first step
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`cannot be validated by the second step because validation interval TV
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`requires the timing between the first step and a (non-existent) preceding
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`step. We further note that under Patent Owner’s retrospective interpretation,
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`the final step detected will not be counted because it cannot be validated.
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`
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`Consequently, under Petitioner’s interpretation Fabio does not count
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`the first and second steps, but under Patent Owner’s interpretation Fabio
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`does not count the first and last steps. Therefore, Fabio’s emphasis on
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`accurately counting steps favors neither interpretation. Nonetheless, for the
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`reasons explained above, we are persuaded that Petitioner’s interpretation is
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`the correct interpretation. As explained in our Decision, Fabio’s validation
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`of “the last step recognized” refers to validation of current step K because
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`current step K has an “instant of recognition” at T R(K) that occurs after the
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`“instant of recognition” of previous step K−1 at T R(K−1). See Final
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`5
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`Case IPR2018-00389
`Patent 8,712,723 B1
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`Dec. 31–32 (quoting Ex. 1006, 4:35–43). Thus, current step K is “the last
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`step recognized,” and the step that is validated by validation interval TV.
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`IV. CONCLUSION
`
`
`
`For the reasons discussed above, we deny Patent Owner’s Request for
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`Rehearing because we determine that Patent Owner has not met its burden to
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`show that in the Final Written Decision, the panel misapprehended or
`
`overlooked any matter.
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`
`
`It is ORDERED that Patent Owner’s Request for Rehearing is denied.
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`V. ORDER
`
`6
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`

`

`Case IPR2018-00389
`Patent 8,712,723 B1
`
`For PETITIONER:
`
`Andrew S. Ehmke
`Michael S. Parsons
`Haynes and Boone, LLP
`andy.ehmke.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`7
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`