Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 18
`Entered: February 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EXPEDIA, INC.; HOMEAWAY.COM, INC.; HOTELS.COM L.P.;
`HOTWIRE, INC.; AND ORBITZ, LLC,
`Petitioner,
`
`v.
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-01134
`Patent 5,961,601
`____________
`
`
`Before HUBERT C. LORIN, DAVID C. MCKONE, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 18
`Entered: February 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EXPEDIA, INC.; HOMEAWAY.COM, INC.; HOTELS.COM L.P.;
`HOTWIRE, INC.; AND ORBITZ, LLC,
`Petitioner,
`
`v.
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-01134
`Patent 5,961,601
`____________
`
`
`Before HUBERT C. LORIN, DAVID C. MCKONE, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2018-01134
`Patent 5,961,601
`
`
`I. INTRODUCTION
`Expedia, Inc., Homeaway.com, Inc., Hotels.com L.P., Hotwire, Inc.,
`and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`to institute an inter partes review of claims 1–3, 6–10, 12, 14–16, 19–23, 25,
`27–29, 32–36, 38, 40–42, 45, 47, 49, 51–53, 56–59, 60–62, and 65–68 of
`U.S. Patent No. 5,961,601 (Ex. 1001, “the ’601 patent”). International
`Business Machines Corp. (“Patent Owner”) filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”). Upon consideration of the Petition and
`Preliminary Response, we concluded, under 35 U.S.C. § 314(a), that
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to at least one challenged claim as obvious over John December and
`Mark Ginsburg, HTML AND CGI UNLEASHED (1st ed. 1995) (Ex. 1006,
`“Unleashed”). Paper 9 (Institution Decision (“Dec.”)) 43–44. Patent Owner
`requests that we reconsider that decision. Request for Rehearing (Paper 11,
`“Req.”).
`A panel of the Board previously considered Unleashed as part of an
`obviousness combination asserted against the ’601 patent by a different
`petitioner and denied institution of a trial in IPR2016-00605 (“the ’605
`IPR”).1 See Kayak Software Corp. v. Int’l Business Machines Corp., Case
`IPR2016-00605 (PTAB July 27, 2016) (Paper 13) (Decision Denying
`Institution, “’605 DDI”). In the Preliminary Response, Patent Owner argued
`that we should deny the Petition under 35 U.S.C. §§ 314(a) and 325(d) and
`the Board’s precedential decision in General Plastic Industrial Co., Ltd. v.
`Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017)
`
`
`1 Judges McKone and Bunting served on the ’605 IPR panel.
`
`2
`
`
`
`IPR2018-01134
`Patent 5,961,601
`
`(Paper 19), in light of Unleashed having been raised in the ’605 IPR.
`Prelim. Resp. 14–29. We fully considered Patent Owner’s arguments,
`weighed them according to the guidance set forth in General Plastic and
`Becton, Dickinson and Co. v. B. Braun Melsungen AG, Case IPR2017-01586
`(PTAB Dec. 15, 2017) (Paper 8) (informative), and explained in detail why
`various factors, considered together, weighed against denial of the Petition.
`Dec. 37–43.
`Patent Owner asserts in the Request for Rehearing that we abused our
`discretion in refusing to deny the Petition.
`
`
`II. ANALYSIS
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be indicated if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed.
`Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004);
`In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of
`showing that the Decision should be modified is on Patent Owner, the party
`challenging the Institution Decision. See 37 C.F.R. § 42.71(d). In addition,
`“[t]he 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.” Id.
`Patent Owner identifies two arguments that it contends we
`misapprehended or overlooked. First, according to Patent Owner, “the
`
`3
`
`
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`IPR2018-01134
`Patent 5,961,601
`
`Board misapprehended or overlooked Expedia’s use of IBM’s preliminary
`response and the Board’s decision denying institution in Case IPR2016-
`00605 as a guide for its petition in this proceeding.” Req. 4. Second, “[t]he
`Board also misapprehended or overlooked its own prior consideration of
`Unleashed’s shopping cart and catalog examples.” Id. Patent Owner
`contends that these alleged misapprehensions translated into two abuses of
`discretion:
`The Board made a clearly erroneous finding that Expedia did
`not benefit from IBM’s preliminary response and the Board’s
`decision denying Priceline’s petition in Case IPR2016-00605.
`That clearly erroneous finding then led the Board to
`unreasonably discount a factor that favors denying institution: a
`petitioner’s use of a preliminary response and decision denying
`institution in an earlier proceeding as a guide for preparing its
`own later petition.
`Id. at 9.
`Patent Owner’s arguments largely track those presented in the
`Preliminary Response. Specifically, Patent Owner argues that the ’605 IPR
`petitioner presented Unleashed’s catalog and shopping cart examples,
`including the source code on which Petitioner now relies most heavily, that
`Patent Owner responded to that evidence, and that the ’605 IPR panel gave
`that evidence consideration and rejected it. Id. at 9–11. Important to Patent
`Owner’s argument is that, in the ’605 DDI, the panel purportedly “stated—
`without qualification—that it considered Unleashed’s catalog and shopping
`cart examples on pages 525–531 of Unleashed,” both generally and for the
`specific “identifying all continuations” and “recursively embedding”
`limitations of claim 1 of the ’601 patent. Id. at 10–11 (citing ’605 DDI 23,
`24 n.4). Patent Owner then argues that Petitioner used the ’605 DDI as a
`
`4
`
`
`
`IPR2018-01134
`Patent 5,961,601
`
`roadmap for preparing a petition that corrected the deficiencies of the ’605
`IPR petition. Id. at 11–12.
`In the Preliminary Response, Patent Owner made substantially the
`same arguments. Prelim. Resp. 15–26. We fully considered those
`arguments and explained that “although the ’605 Petition identified the
`catalog and shopping cart example of Unleashed as relevant to the
`identifying and embedding limitations, it did not present meaningful
`argument or evidence to allow the panel to understand how the reference
`was being applied to those limitations.” Dec. 38–39. As to the ’605 IPR
`panel’s consideration of Unleashed’s source code at pages 525–31 of
`Exhibit 1006, the panel “considered Petitioner’s arguments at pages 20–21
`of the Petition providing a general discussion of Unleashed, including the
`example at pages 525–31.” ’605 DDI 24 n.4. The ’605 DDI did not,
`however, state that the panel did an independent examination of the source
`code to conclude that it did not support obviousness. Rather, the panel
`determined that “[the ’605 IPR petitioner’s] general discussion of Unleashed
`does not explain how Unleashed teaches specific limitations of claim 1.” Id.
`Indeed, the ’605 IPR panel repeatedly pointed to the deficiencies in the
`presentation of evidence, including unspecific argument and conclusory,
`unhelpful expert testimony, rather than deficiencies with Unleashed itself.
`Id. at 22–23. Thus, Patent Owner’s arguments (Req. 10–11) regarding the
`depth of the ’605 IPR panel’s consideration of Unleashed is incorrect. In
`any case, we fully considered these arguments, and fully apprehended them,
`in the Institution Decision. Dec. 38–39, 41–42.
`Patent Owner argues that our Institution Decision “gave no weight to
`a factor that strongly favored denying institution: the third General Plastic
`
`5
`
`
`
`IPR2018-01134
`Patent 5,961,601
`
`factor, where the petitioner had the benefit of materials from a previous
`proceeding.” Req. 12. The third General Plastic factor asks us to consider
`“whether at the time of filing of the second petition the petitioner already
`received the patent owner’s preliminary response to the first petition or
`received the Board’s decision on whether to institute review in the first
`petition.” General Plastic, Case IPR2016-01357, slip op. at 16. The
`General Plastic panel was “concerned here by the shifts in the prior art
`asserted and the related arguments in follow-on petitions.” Id. at 17. We
`fully considered the third General Plastic factor in our Institution Decision.
`Dec. 41–42. There, we explained that the extent of the guidance provided
`by the ’605 DDI was that the ’605 IPR petitioner failed to introduce
`meaningful argument or expert testimony to explain adequately (and allow
`the panel to evaluate) the relevance of Unleashed. Id. Thus, the extent of
`any roadmap given to Petitioner was that it ought to provide meaningful
`explanation and expert testimony in the petition itself to allow us to evaluate
`the relevance of Unleashed. Id. We found this to be entitled to less weight
`than a situation in which a petitioner changes its argument in response to the
`Board rejecting its argument in a previous case, or supplements its
`presentation of evidence in response to the Board finding a deficiency with a
`reference it presented in the previous case. Id. at 42.
`We did not ignore, misapprehend, or fail to give weight to this factor.
`Rather, we did not find it persuasive in light of our consideration of all the
`factors. Id. at 40–43. Patent Owner would have factor 3 be our only
`consideration. Nevertheless, “[t]he General Plastic factors, alone or in
`combination, are not dispositive, but part of a balanced assessment of all
`relevant circumstances in the case, including the merits. [General Plastic,
`
`6
`
`
`
`IPR2018-01134
`Patent 5,961,601
`
`slip op.] at 15 (‘There is no per se rule precluding the filing of follow-on
`petitions.’).” Trial Practice Guide Update 10 (Aug. 2018)
`<https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_
`Practice_Guide.pdf>. Indeed, as explained in the Institution Decision,
`Petitioner presented a strong case as to the merits. Dec. 24–35. This is an
`additional factor weighing against denial. Trial Practice Guide Update 10.
`We also weighed Patent Owner’s arguments in the context of the factors set
`forth in Becton, Dickenson, and concluded that, when considered together,
`those factors weighed against exercising our discretion under § 325(d).
`Dec. 37–40.
`In sum, we understood and fully considered Patent Owner’s
`arguments regarding General Plastic’s third factor, gave those arguments
`the weight they were due, and weighed the third factor along with the
`remaining factors outlined in General Plastic. We concluded that, when
`considered together, the factors weighed against exercising our discretion
`under § 314(a). We reached a similar conclusion upon considering factors
`relevant to our discretion under § 325(d). Patent Owner might disagree with
`our weighting of its arguments, but Patent Owner has not shown that we
`misapprehended or overlooked them, or that we were unreasonable in
`weighing those arguments in the context of all the factors.
`
`
`
`
`7
`
`
`
`IPR2018-01134
`Patent 5,961,601
`
`
`II. CONCLUSION
`We did not misapprehend or overlook Patent Owner’s arguments or
`abuse our discretion in instituting a trial over Patent Owner’s objections
`based on those arguments.
`
`
`III. ORDER
`Petitioner’s Request for Rehearing is denied.
`
`
`
`PETITIONER:
`
`Brian W. Oaks
`brian.oaks@bakerbotts.com
`
`Chris V. Ryan
`chris.ryan@bakerbotts.com
`
`
`PATENT OWNER:
`
`Kevin K. McNish
`kkm-ptab@desmaraisllp.com
`
`
`
`
`8
`
`
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