`571-272-7822
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`Paper 15
`Entered: February 21, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SONITOR TECHNOLOGIES, INC.,
`Petitioner,
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`v.
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`CENTRAK, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00740
`Patent 9,622,030 B1
`____________
`
`Before JUSTIN T. ARBES, PATRICK M. BOUCHER, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
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`
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`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`
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`IPR2018-00740
`Patent 9,622,030 B1
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`I. INTRODUCTION
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`Petitioner Sonitor Technologies, Inc. (“Sonitor”) filed a Request for
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`Rehearing (Paper 9, “Req. Reh’g”) of the Decision Denying Institution of
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`Inter Partes Review of claims 1–14 and 21–33 of U.S. Patent No. 9,622,030
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`B1 (Ex. 1001, “the ’030 patent”) pursuant to 37 C.F.R. § 42.71(d). Paper 8
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`(“Dec.”). The Request for Rehearing contends that we (1) “improperly
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`credited [Patent Owner Centrak, Inc.’s (‘Centrak’)] uncorroborated attorney
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`argument over Sonitor’s arguments supported by expert testimony”; and (2)
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`“relie[d] on Patent Owner Centrak’s arguments in this proceeding that are
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`inconsistent with and contrary to Centrak’s arguments to the Federal Circuit
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`on a related patent.” Req. Reh’g 1.
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`As we explain below, we have considered the arguments presented by
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`Sonitor in its Request for Rehearing, but we discern no reason to modify the
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`Decision Denying Institution. As a result, we deny Sonitor’s Request for
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`Rehearing.1
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`II. STANDARD OF REVIEW
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`In relevant part, the rules regarding requests for rehearing in an inter
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`partes review provide:
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`(d) Rehearing. A party dissatisfied with a decision may file a
`single 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, an opposition, or a reply.
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`
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`1 Sonitor also filed a request for Precedential Opinion Panel (POP) review,
`which was denied. See Papers 10, 12; Ex. 3002. Accordingly, the Request
`for Rehearing has been decided by the original panel.
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`2
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`IPR2018-00740
`Patent 9,622,030 B1
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`37 C.F.R. § 42.71(d) (2018). To be entitled to relief, the party seeking
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`rehearing of a decision on institution must demonstrate that the Board
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`abused its discretion. 37 C.F.R. § 42.71(c) (2018). A decision based on an
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`erroneous interpretation of law, a factual finding that is not supported by
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`substantial evidence, or an unreasonable judgment in weighing relevant
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`factors may represent an abuse of discretion. Star Fruits S.N.C. v. United
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`States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); In re Gartside, 203 F.3d 1305,
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`1315–16 (Fed. Cir. 2000).
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`III. ANALYSIS
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`A. We did not improperly credit Centrak’s uncorroborated
`attorney argument
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`Sonitor contends that we misapprehended the teachings of Welles
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`(Ex. 1006) (Req. Reh’g 3–7) and improperly credited Centrak’s
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`uncorroborated attorney argument to resolve a factual dispute (id. at 7–9).
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`We do not agree.
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`To the contrary, Sonitor appears to misapprehend the Decision
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`because, rather than resolving a factual dispute in Centrak’s favor, the
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`Decision concludes Sonitor failed to show persuasively that there was a
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`reasonable likelihood it would prevail in establishing the facts necessary to
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`support an unpatentability determination of the challenged claims in view of
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`Corrado (Ex. 1005) and Welles. Although we agreed with Centrak’s
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`argument “that Sonitor’s basis for combining Corrado and Welles in the
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`manner claimed relies on a critical unfounded factual assertion about what
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`Welles teaches” (Dec. 14), we did not reach that conclusion by weighing
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`Centrak’s argument against Sonitor’s alleged facts. Instead, we carefully
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`evaluated Sonitor’s contentions, independent of any factual representations
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`Centrak may have made, and determined, based on the record before us, that
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`3
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`IPR2018-00740
`Patent 9,622,030 B1
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`Sonitor’s support for the facts alleged was deficient. See Dec. 14–19. Put
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`another way, we did not improperly credit Centrak’s uncorroborated
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`attorney argument over Sonitor’s allegedly supported arguments; we made a
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`determination that Sonitor did not establish a reasonable likelihood of
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`success because Sonitor’s arguments did not have persuasive evidentiary
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`support in the record before us.
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`In particular, a necessary factual underpinning to Sonitor’s
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`obviousness contention was that column 8, lines 5–9, of Welles taught
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`synchronizing the transmitters such that they transmit signals at different
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`times. Pet. 17 (citing Ex. 1006, 8:5–11; Ex. 1003 ¶ 51); see Req. Reh’g
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`3–7. We are mindful that, when evaluating claims for obviousness, “the
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`prior art as a whole must be considered.” In re Hedges, 783 F.2d 1038,
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`1041 (Fed. Cir. 1986); see also In re Merck & Co., Inc., 800 F.2d 1091,
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`1097 (Fed. Cir. 1986) (explaining that a reference “must be read, not in
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`isolation, but for what it fairly teaches in combination with the prior art as
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`a whole”). “It is impermissible within the framework of section 103 to
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`pick and choose [teachings] from any one reference . . . to the exclusion
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`of other parts necessary to the full appreciation of what such reference
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`fairly suggests to one of ordinary skill in the art.” Hedges, 783 F.2d at
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`1041 (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)). We
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`considered the above portion from Welles in context, as we must, and
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`determined it did not support Sonitor’s contention that Welles discloses
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`transmitting signals from the ultrasonic transmitters at different times. See
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`Dec. 15–18.
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`Although Sonitor may not agree with our determination, this is not
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`sufficient to demonstrate that we misapprehended the teachings of Welles.
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`4
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`IPR2018-00740
`Patent 9,622,030 B1
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`Sonitor argues that we erred by conflating two different embodiments. Req.
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`Reh’g 3–7. We disagree. The paragraph preceding column 8, lines 5–9,
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`teaches “[a]nother method of locating tags or telemetry devices” and
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`describes a triangulation method that sends signals simultaneously and
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`measures the differences in the arrival time to calculate the location of a tag.
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`Ex. 1006, 7:40–65 (emphasis added). Column 8, lines 5–9, relates to
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`“[o]ther location mechanisms” that may be used with this triangulation
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`method to improve the accuracy of the tag location calculations. See id. at
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`7:66–8:16. In addition to the reasons provided in the Decision (Dec. 15–18),
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`this understanding is further confirmed by the subsequent paragraph, which
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`states,
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`In order for the technique just described to provide optimal
`results it is necessary that the locating receiver 260 know the
`timing of the ultrasound pattern transmitted from each room
`transmitter. The accuracy with which this must be known is
`about 1 millisecond in order to calculate the tag position within
`one foot. While synchronization using radio transmissions from
`the locating receiver can be used to create timing assurance,
`several other methods of synchronization such as other wireless
`communication (infrared and other spectral frequencies) and
`wired communications can be used, including those discussed
`below.
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`Id. at 8:17–27 (emphasis added). Our understanding of “the technique just
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`described” relates to using the “other location mechanism” with the
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`triangulation method. Sonitor’s argument that column 8, lines 5–9, should
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`be understood more generally, therefore, is not persuasive because it is
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`inconsistent with the teachings of Welles.
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`Moreover, as noted in the Decision, Sonitor’s declarant, Gary Michael
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`Gaukler, Ph.D., does not provide additional information sufficient to explain
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`why the disputed passage would have been understood by a skilled artisan in
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`5
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`IPR2018-00740
`Patent 9,622,030 B1
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`the manner Sonitor alleges. Dec. 15 n. 5. Such conclusory testimony carries
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`little, if any, probative and/or evidentiary value. See, e.g., 37 C.F.R. §
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`42.65(a) (“Expert testimony that does not disclose the underlying facts . . .
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`on which the opinion is based is entitled to little or no weight.”). Dr.
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`Gaukler states the same thing that Sonitor argues in the Petition (compare
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`Pet. 17 with Ex. 1003 ¶¶ 51–52) and both fail to explain why a skilled
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`artisan would have understood column 8, lines 5–9, of Welles to teach
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`synchronizing the transmitters such that they transmit signals at different
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`times; both simply state this as a conclusion. Therefore, Sonitor’s reliance
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`on Dr. Gaulker’s declaration as proof of its argument on this point is
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`misplaced. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
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`1378 (Fed. Cir. 2017) (“we must disregard the testimony of an expert that is
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`plainly inconsistent with the record”).
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` In view of the foregoing, we discern no reason to modify the
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`Decision Denying Institution.
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`B. Centrak’s arguments to the Federal Circuit on a related
`patent are not properly before us
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`Sonitor argues that Centrak made admissions in Centrak, Inc. v.
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`Sonitor Technologies, Inc., Appeal No. 17-2510 (related to parent U.S.
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`Patent No. 8,604,909), that allegedly “cut to the heart of whether the same
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`features in the claims of the ’030 patent would have been obvious to a
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`[person of ordinary skill in the art] in view of the applied prior art.” Req.
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`Reh’g 10–11 (citing Centrak’s Reply Brief). However, the briefs
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`submitted in the above appeal, and, in particular, Centrak’s Reply Brief,
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`are not part of the record in this proceeding.
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`The regulation governing a rehearing request asserts: “The request
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`must specifically identify all matters the party believes the Board
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`6
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`IPR2018-00740
`Patent 9,622,030 B1
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`misapprehended or overlooked, and the place where each matter was
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`previously addressed in a motion, an opposition, or a reply.” Id. The
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012)
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`(“Practice Guide”) explains that “[e]vidence not already of record at the
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`time of the decision will not be admitted absent a showing of good
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`cause.” Id. at 48,768 (emphasis added).
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`Here, Sonitor has not established “good cause” for us to consider
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`Centrak’s Reply Brief. Sonitor does not contend Centrak’s Reply Brief
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`was not available before we issued our Decision in this matter. Sonitor
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`asserts instead that it “did not earlier present these contrary admissions by
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`Centrak because the ‘timing’ and ‘synchronization’ features of the claims
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`were not the focal point of the proceeding until the Board’s institution
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`decision adopted Centrak’s factually implausible interpretation of Welles.”
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`Req. Reh’g 12. Sonitor, however, could have sought to supplement the
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`record and provide additional briefing immediately after receiving Centrak’s
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`Preliminary Response, but it chose not to do so. See 37 C.F.R. § 42.108(c)
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`(“A petitioner may seek leave to file a reply to the preliminary response . . . .
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`Any such request must make a showing of good cause.”). Because Sonitor
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`fails to provide a reasonable explanation for why it did not present Centrak’s
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`Reply Brief sooner, and fails to otherwise justify persuasively why we
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`should consider the Reply Brief arguments made by Centrak in a different
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`case to address a different issue (i.e., written description and/or enablement),
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`we do not find “good cause” exists for us to allow it to become part of this
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`record now. Therefore, Sonitor’s arguments based on Centrak’s Reply
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`Brief are not entitled to consideration.
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`7
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`IPR2018-00740
`Patent 9,622,030 B1
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`IV. CONCLUSION
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`For the foregoing reasons, Sonitor has not demonstrated that we
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`abused our discretion by not instituting an inter partes review of the claims
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`challenged in the ’030 patent.
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`Accordingly, it is
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`V. ORDER
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`ORDERED that Sonitor’s Request for Rehearing is denied.
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`8
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`IPR2018-00740
`Patent 9,622,030 B1
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`PETITIONER:
`
`Nirav Desai
`Steven W. Peters
`Jason D. Eisenberg
`Peter H. Dykstra
`STERNE, KESSLER, GOLDSTEIN & FOX
`ndesai-PTAB@skgf.com
`speters-PTAB@skgf.com
`jasone-ptab@sternekessler.com
`pdykstra-ptab@sternekessler.co
`PTAB@skgf.com
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`PATENT OWNER:
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`Jeffrey I. Kaplan
`KAPLAN BREYER SCHWARTZ, LLP
`jkaplan@kbsiplaw.com
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`Joseph Bain
`SHUTTS & BOWEN LLP
`jbain@shutts.com
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`9
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