Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 17
`Entered: February 21, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROLAND CORPORATION,
`Petitioner,
`
`v.
`
`INMUSIC BRANDS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00396
`Patent 8,785,758 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, J. JOHN LEE, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 17
`Entered: February 21, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROLAND CORPORATION,
`Petitioner,
`
`v.
`
`INMUSIC BRANDS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00396
`Patent 8,785,758 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, J. JOHN LEE, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2018-00396
`Patent 8,785,758 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Roland Corporation1 filed a Request for Rehearing under
`37 C.F.R. § 42.71(d) (Paper 14 (“Req. Reh’g”) of our Decision Denying
`Institution of inter partes review of claims 1–21 (the “challenged claims”) of
`U.S. Patent No. 8,785,758 B2 (Ex. 1001, the “’758 patent”). Paper 13, 23
`(“Dec.”). Petitioner also filed fifty-eight (58) new exhibits (Exs. 1027–1085)
`after we entered our Decision Denying Institution and relies on these in
`support of its arguments requesting rehearing. Reh’g Req. 3–8.
`Having considered the Request for Rehearing, we determine that
`Petitioner has not shown that we abused our discretion in denying
`institution. We deny Petitioner’s request for the following reasons.
`
`II.
`
`STANDARD OF REVIEW
`
`37 C.F.R. § 42.71(d) provides that:
`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.
`See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)
`(emphasis added). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision
`on petition, a panel will review the decision for an abuse of discretion.” An
`abuse of discretion occurs when a “decision was based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`
`
`1 Petitioner identifies Roland US as a real party in interest. Pet. 1.
`
`2
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`IPR2018-00396
`Patent 8,785,758 B2
`
`judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d
`1565, 1567 (Fed. Cir. 1988) (citations omitted).
`
`III. ANALYSIS
`
`A. Petitioner’s Fifty-Eight New Exhibits
`As an initial matter, we address whether Petitioner followed the
`proper procedure for admitting Exhibits 1027–1084 into the record of this
`proceeding. Petitioner filed these fifty-eight new exhibits on July 30, 2018,
`the day after we entered our Decision Denying Institution. Consequently,
`these exhibits were not of record at the time of our Decision.
`The rule governing a rehearing request permits “[a] party dissatisfied
`with a decision . . . [to] file a single request for rehearing without prior
`authorization from the Board.” 37 C.F.R. § 42.71(d) (emphasis added).
`This rule does not address explicitly whether the requesting party also may
`file new evidence with its rehearing request. The Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Practice Guide”),
`however, is instructive on this matter. When discussing general procedures
`applicable to rehearing requests, the Practice Guide states that “[e]vidence
`not already of record at the time of the decision will not be admitted absent a
`showing of good cause.” Id. at 48,768 (emphasis added). Ideally, a party
`seeking to admit new evidence with a rehearing request would request a
`conference call with the Board prior to filing such a request so that it could
`argue good cause exists for admitting the new evidence. Alternatively, a
`party may argue good cause exists in the rehearing request itself.
`Here, Petitioner did not request a conference call with the Board prior
`to submitting Exhibits 1027–1085. Nor did Petitioner explain why these
`exhibits should be admitted in the Request for Rehearing itself. See
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`IPR2018-00396
`Patent 8,785,758 B2
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`generally Req. Reh’g 1–10. Absent a showing of good cause prior to filing
`of the exhibits or in the Request for Rehearing itself, these exhibits should
`not be admitted and, therefore, they are not entitled to consideration.
`Consequently, we exercise our authority under 37 C.F.R. §§ 42.5(a) and
`42.7(a) to expunge Exhibits 1027–1085.
`B. Petitioner’s Arguments
`In its Request for Rehearing, Petitioner argues that we erred in our
`Decision because: (i) “Exhibit 1016 shows a proportional relationship
`between the electrical signal generated by the foot pedal control module and
`the position of the control shaft;” and (ii) we “improperly relied on
`inappropriate dictionary definitions for [our] construction of ‘proportional.’”
`Req. Reh’g 3, 8 (emphasis omitted). We address each argument in turn.
`1. Petitioner’s Assertions Regarding the Claimed Proportional
`Relationship
`Petitioner contends, “[v]iewing Ex.1016, and specifically between the
`referenced time periods of 2:59 and 3:01, plainly shows the electrical signal
`generated by the foot pedal control module being in a constant relationship
`relative to the position of the control shaft.” Reh’g. Req. 4. Petitioner’s
`argument is an improper attempt to assert now arguments that it failed to
`make in its Petition. In its Petition, Petitioner asserts, “[s]creenshots taken at
`2:59 and 3:01 of Segment 2 [of YouTubePost] show electrical signals on an
`oscilloscope at two different values (upper screen and lower screen values)
`proportional to two different positions of the shaft (positions A and B)
`relative to the foot pedal control module (light beam generator).” Pet. 27.
`Petitioner’s annotated screenshots are reproduced below.
`
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`4
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`IPR2018-00396
`Patent 8,785,758 B2
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`
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`
`
`Id. The foregoing screenshots, as annotated by Petitioner, show merely a
`representation on a monitor of an electrical signal in two positions and a
`control shaft of the Hi-Hat symbols in two positions. The accompanying
`cited narration indicates that a user may toggle between these two positions
`using a foot pedal at varying speed. Pet. 26–27 (citing Ex. 1013, 6:21–7:1).
`Petitioner makes no further attempt in the Petition to explain how these two
`signal representations meet the claimed proportional relationship. See Pet.
`26–27, 32–33, 38–39, 43.
`Our Decision Denying Institution addressed Petitioner’s failure to
`explain how these two signal representations meet the claimed proportional
`relationship. Dec. 19. Specifically, we stated:
`Upon review of the arguments and evidence cited, we
`determine Petitioner has not addressed sufficiently how the
`YouTubePost discloses that the electrical signal proportional
`signal generated by YouTubePost’s foot pedal control module is
`proportional to the position of the control shaft relative to the
`foot pedal control module. . . . Here, the cited portions of
`YouTubePost and Petitioner’s corresponding argument, at best,
`show only that the electrical signal generated by YouTubePost’s
`foot pedal control module can be toggled between two positions,
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`5
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`IPR2018-00396
`Patent 8,785,758 B2
`
`
`either quickly or slowly. Pet. 26–27, 31–33. Dr. Paradiso’s
`testimony on this issue is unavailing because it merely repeats
`the statements of the Petition. Compare id., with Ex. 1002, 25,
`29–30.
`
`
`Id.
`
`In stark contrast to its earlier assertion, Petitioner now sets forth in its
`Request for Rehearing detailed arguments relying on fifty-eight new exhibits
`derived from Exhibit 1016 to show the claimed proportional relationship.
`Reh’g Req. 3–8. For example, Petitioner advances a new argument based on
`newly presented Exhibits 1027–1083 and X-Y-Z calculations based on the
`Pythagorean Theorem. Id. at 4. Petitioner argues that “simple X-Y-Z
`calculations based on Pythagorean Theorem further verify a constant,
`approximately linear relationship.” Id. As another example, Petitioner relies
`on newly presented Exhibit 1084, which is a chart plotting data extracted
`from YouTubePost and which features a newly presented “Trendline,” to
`argue that the data shows an approximately “linear relationship across the
`range of movement of the control shaft relative to the control module
`signal.” See id. at 6 (citing Ex. 1084).
`A Request for Rehearing is not an opportunity to present new
`arguments and evidence. 37 C.F.R. § 42.71(d) (A request for rehearing
`“must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed.”). “Because we do not consider an argument made in
`a request for rehearing unless the request [specifically identif[ies] . . . the
`place where [that argument] was previously addressed in a motion, an
`opposition, or a reply,” we do not consider Petitioner’s newly presented
`information here. Commvault Sys., Inc. v. Realtime Data LLC, IPR2017-
`
`6
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`IPR2018-00396
`Patent 8,785,758 B2
`
`02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R.
`§ 42.71(d)). Under our rules, the Petition must contain a “full statement of
`the reasons for the relief requested, including a detailed explanation of the
`significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition
`does not demonstrate that there is a reasonable likelihood of success, then
`the Board shall not institute an inter partes review. See 37 C.F.R.
`§ 42.108(c) (“Inter partes review shall not be instituted for a ground of
`unpatentability unless the Board decides that the petition supporting the
`ground would demonstrate that there is a reasonable likelihood that at least
`one of the claims challenged in the petition is unpatentable.”).
`Because Petitioner failed to set forth its analysis of the claimed
`proportional relationship in the Petition, we are not persuaded that we erred
`in finding Petitioner’s analysis insufficient to show a reasonable likelihood
`of success on this anticipation challenge.
`2. Petitioner’s Assertions Regarding Claim Construction
`Independent claims 1, 8, and 15 each recite an “electrical signal” that
`“is proportional to the position of the control shaft relative to the foot pedal
`control module.” Ex. 1001, 5:32–34, 6:4–6, 6:37–39 (emphasis added). We
`construed the term “proportional” as “requiring a constant relationship, such
`as, for example, a linear relationship.” Dec. 16. In so doing, we found that
`“the claims and Specification of the ’758 patent do not elaborate on [the]
`nature of the control signal generated by the foot pedal control module
`beyond describing one embodiment in which the signal is ‘proportional to
`the plunger 116 position to the drum synthesizer through the cables.’” Id.
`(citing Ex. 1001, 4:30–33). We further found that “[t]he prosecution history
`also does not explicitly define the term ‘proportional;’ however, the
`
`7
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`IPR2018-00396
`Patent 8,785,758 B2
`
`Examiner relies on the ‘position-proportional signal’ as a reason for
`allowance of the claims.” Id. (citing Ex. 1005, 6). Recognizing that
`“[a]lthough extrinsic evidence ‘is generally of less significance than the
`intrinsic record’ in matters of claim construction,” we turned to “certain
`extrinsic evidence [to] inform[] our construction in the absence of a more
`fulsome intrinsic record.” Id. at 16–17 (citing Wi-LAN, Inc. v. Apple Inc.,
`811 F.3d 455, 462 (Fed. Cir. 2016)). In particular, we relied upon “a
`relevant technical dictionary, namely The Authoritative Dictionary of IEEE
`Standards Terms,” to “show the common understanding that usage of term
`‘proportional’ when used to describe an electrical signal indicates the signal
`maintains a constant relationship, such as, for example, a linear
`relationship.” Id. at 17 (citing Ex. 3001, 690, 879–80). We also observed
`that the dictionary.com “definition Patent Owner proffers supports our
`construction of ‘proportional’ as requiring a constant relationship.” Id.
`(citing Ex. 2002).
`Petitioner takes issue with our reliance on The Authoritative
`Dictionary of IEE Standard Terms and recognition of Patent Owner’s
`proffered dictionary definition because “[t]he ordinary and customary
`meaning of a claim term is the meaning that the term would have to a person
`of ordinary skill in the art in question at the time of the invention, i.e., as of
`the effective filing date of the patent application.” Reh’g. Req. 9 (citing
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). According
`to Petitioner, “the proper dictionary to consult is one that was publicly
`available at the time of the invention, when the ordinary and customary
`meaning is determined.” Id. (citing Cornell Univ. v. Hewlett-Packard Co.,
`313 F. Supp. 2d 114, 126 (N.D.N.Y. 2004)). Petitioner suggests that the
`
`8
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`IPR2018-00396
`Patent 8,785,758 B2
`
`proper dictionary definition would be one from ‘“the time of the invention,’
`i.e., in the 2010–2011 time frame.” Id.
`Petitioner’s arguments is not persuasive. The Authoritative
`Dictionary of IEEE Standards Terms cited in our Decision was published in
`2000 and, therefore, was available in 2010. Ex. 3001. Petitioner does not
`argue and does not proffer evidence showing a change in the ordinary
`meaning of the term “proportional” from its definition by the IEEE in 2000
`and “the time of the invention” that Petitioner alleges. To the contrary,
`Patent Owner’s proffered dictionary.com definition, last accessed in 2018,
`shows the opposite—namely, that the plain and ordinary meaning of the
`term has not changed since 2000 because the dictionary.com definition
`“supports our construction of ‘proportional’ as requiring a constant
`relationship.” Dec. 17 (citing Ex. 2002).
`Petitioner includes in its argument, for the first time, a proposed
`construction of the claim term proportional. Reh’g. Req. 10. A Request for
`Rehearing is not an opportunity to present new arguments and evidence.
`37 C.F.R. § 42.71(d). Further, Petitioner fails to support to its proposed
`construction with any evidence. See Reh’g. Req. 10. Moreover, Petitioner
`fails to identify any evidence, either intrinsic or extrinsic, that refutes our
`construction of the term “proportional.” See generally Reh’g. Req. Indeed,
`despite Petitioner’s instance that we rely only upon a dictionary definition
`from “the time of the invention,” Petitioner fails to proffer any dictionary
`definitions supporting its new theory or refuting our construction. Id.
`For the foregoing reasons, we are not persuaded that we erred in
`construing the term “proportional,” as recited in independent claims 1, 8,
`and 15.
`
`9
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`IPR2018-00396
`Patent 8,785,758 B2
`
`
`IV. CONCLUSION
`
`Having considered Petitioner’s arguments and the evidence properly
`of record, Petitioner has failed to show that we misapprehended or
`overlooked arguments or evidence in our Decision Denying Institution.
`Petitioner, therefore, has not demonstrated that we abused our discretion in
`denying institution.
`
`V. ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Exhibits 1027–1085 are expunged from
`the record of this proceeding; and
`FURTHER ORDERED that Petitioner’s Request for Rehearing is
`denied.
`
`
`
`
`
`
`10
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`
`
`IPR2018-00396
`Patent 8,785,758 B2
`
`FOR PETITIONER:
`Victor de Gyarfas
`Michael R. Houston
`Ted R. Rittmaster
`FOLEY & LARDNER LLP
`vdegyarfas@foley.com
`mhouston@foley.com
`trittmaster@foley.com
`
`PATENT OWNER:
`Christopher S. Schultz
`Cory Bell
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
`christopher.shultz@finnegan.com
`cory.bell@finnegan.com
`
`
`11
`
`
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