Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 14
`Entered: May 24, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`HTC CORPORATION and
`HTC AMERICA, INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01556
`Patent 7,206,587 B2
`_______________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 .F.R. § 42.71
`
`
`
`
`Tel: 571-272-7822
`
`Paper 14
`Entered: May 24, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`HTC CORPORATION and
`HTC AMERICA, INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01556
`Patent 7,206,587 B2
`_______________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 .F.R. § 42.71
`
`
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
`
`
`
`I.
`
`INTRODUCTION
`
`
`Petitioner filed a Request for Rehearing (Paper 12, “Req. Reh’g”) of
`our Decision (Paper 11, “Dec.”) denying institution of inter partes review of
`claim 4 of U.S. Patent No. 7,206,587 (Ex. 1001, “the ’587 patent”). In the
`Decision, we denied institution of a trial on Petitioner’s asserted ground that
`claim 4 is unpatentable under 35 U.S.C. § 103 as obvious over Padovani and
`Gils. Dec. 17. For the reasons stated below, Petitioner’s Request for
`Rehearing is denied.
`
`
`II. ANALYSIS
`
`When rehearing a decision on petition, the Board will review the
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party
`requesting rehearing bears the burden of showing an abuse of discretion, and
`“[t]he request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`Petitioner argues “the Decision misapprehended what the broadest
`reasonable interpretation (‘BRI’) of independent Claim 4 requires, by
`improperly reading in limitations found in Claim 3.” Req. Reh’g 1. Further,
`Petitioner argues that “the Board improperly disregarded part of Dr. Min’s
`testimony as allegedly ‘uncorroborated’ and ‘conclusory.’” Id. at 2.
`In particular, Petitioner contends “under the BRI the coding device of
`Claim 4 does not require and has not been construed to require the use of
`multiple coding schemes.” Id. at 11. According to Petitioner, “the Board
`confused the requirements of Claim 4 with the limitations of Claim 3.” Id.
`
`
`
`1
`
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`IPR2018-01556
`Patent 7,206,587 B2
`
`Thus, according to Petitioner, “Claim 4 is rendered obvious through the
`application of a single coding scheme,” wherein the Board erred “in
`overlooking HTC’s single coding scheme argument.” Id. at 12.
`Petitioner then contends that “the Decision was clearly erroneous
`because the relationship between a bit’s position and its significance was
`well known and is a matter of common sense,” wherein “no expert testimony
`is required.” Id. at 12–13. According to Petitioner, “[b]ecause Dr. Min’s
`testimony merely confirmed what was well known and common sense, it
`should not have been disregarded, and Patent Owner’s unsupported, un-
`conventional claim construction should not be given credence.” Id. at 13.
`Petitioner contends that “[t]here is no expert testimony in the record
`disputing Dr. Min’s testimony” (id.), and further, “no evidence exists in the
`’587 Patent, Padovani, or Gils that teaches against this common
`understanding of ‘the most significant bit.’” Id. at 14. Further, “[t]he
`Petition used Gil’s teaching of better protecting higher order bits to support
`the motivation to provide greater protection for the decimal integer portion
`of the 3-bit DRC message than the decimal fraction portion” (id. at 15
`(citing Pet. 32–33)), wherein “[t]he Board overlooked the Petition’s use of
`this teaching, focusing instead on Dr. Min’s alleged lack of corroborating
`evidence.” Id.
` We have considered all arguments Petitioner set forth in the Request
`but do not find an abuse of discretion. In the Request, Petitioner fails to
`show a matter the Board overlooked or misapprehended.
`Although Petitioner argues that “the Decision misapprehended what
`the broadest reasonable interpretation (‘BRI’) of independent Claim 4
`requires” (Req. Reh’g 1), in our Decision, we did not provide any claim
`
`
`
`2
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
`
`construction. See generally Dec. As we noted in the Decision, “[t]he
`Petition does not assert any term in claim 4 . . . requires construction,” and
`“Patent Owner ‘does not believe that any claim terms require express
`construction to deny the Petition.’” Dec. 6 (citing Prelim. Resp. 13).
`In our Decision, we addressed the arguments that Petitioner made in
`the Petition concerning the motivation to combine Padovani and Gils. Dec.
`12–14. In particular, we addressed Petitioner’s own contention that “‘a
`POSITA would have been motivated to provide greater protection for certain
`bits . . . ,’ and thus, use ‘different coding schemes for the different parts.’”
`Id. at 13 (citing Pet. 33 (citing Ex. 1017 ¶ 132) (emphasis added)). As set
`forth in the Decision, in response to Petitioner’s own contention that it
`would have been obvious to use different coding schemes, we found that
`“Petitioner does not identify any passage or combination of passages in
`Padovani that teaches or suggests providing, or even the need to provide,
`greater protection for one decimal portion than the other decimal portion, let
`alone by using ‘different coding schemes for the different parts.’” Id. at 14
`(citing Pet. 33).
`Based on the foregoing discussion, Petitioner fails to show an
`overlooked or misapprehended material matter amounting to an abuse of
`discretion in determining Petitioner fails to show sufficiently that “one of
`ordinary skill in the art would have used Gil’s techniques to encode
`Padovani’s DRC message in the manner required by the claims.” Dec. 16–
`17.
`
`As to Petitioner’s contention that “the Decision was clearly erroneous
`because the relationship between a bit’s position and its significance was
`well known and is a matter of common sense” (Req. Reh’g 12–13),
`
`
`
`3
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
`
`Petitioner is rehashing arguments previously presented without indicating a
`matter misapprehended or overlooked by the Board. Contrary to Petitioner’s
`contention that the Board overlooked the Petition’s use of “Gil’s teaching of
`better protect higher order bits to support the motivation to provide greater
`protection for the decimal integer portion of the 3-bit DRC message than the
`decimal fraction portion” (id. at 15), we did consider the sections of Gil
`relied on Petitioner (Dec. 12–13), but found Petitioner’s arguments
`unpersuasive.
`We are also unpersuaded by Petitioner’s contention that “the Board
`improperly disregarded part of Dr. Min’s testimony as allegedly
`‘uncorroborated’ and ‘conclusory.’” Req. Reh’g 2. As we noted in the
`Decision, and as pointed out by Patent Owner, Petitioner’s Declarant, Dr.
`Min’s testimony “merely repeats the allegations of the Petition without any
`explanation or citation to any supporting or corroborating evidence.” Dec.
`15 (citing Prelim. Resp. 20). That is, “[t]here is no proffered evidence that it
`was well understood by a POSITA at the time that the leftmost bit in binary
`numbers, and specifically in the DRC message of Padovani, is the ‘most
`significant bit.’” Id. 15–16 (emphasis added) (citing 37 C.F.R. § 42.65(a)
`(“Expert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight.”); In re Acad. of
`Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is
`entitled to weigh the declarations and conclude that the lack of factual
`corroboration warrants discounting the opinions expressed in the
`declarations[.]”)).
`
`
`
`4
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
`
`
`Here, Petitioner’s contention that such testimony of Dr. Min is
`“improperly disregarded” (Req. Reh’g. 2) is not persuasive of an abuse of
`discretion by the Board. 37 C.F.R. § 42.71(c).
`Based on the foregoing discussion, Petitioner fails to show an
`overlooked or misapprehended material matter amounting to an abuse of
`discretion in determining Petitioner fails to show sufficiently that “the
`leftmost bit in binary numbers, and specifically in the DRC message of
`Padovani, is the ‘most significant bit,’” as recited in claim 4. Dec. 15.
`
`
`III. CONCLUSION
`Petitioner has not carried its burden of demonstrating that we
`misapprehended or overlooked any material matters in the Decision, and has
`not shown an abuse of discretion in the Decision Denying Institution of an
`inter partes review of claim 4 of the ’587 patent.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01556
`Patent 7,206,587 B2
`
`PETITIONER:
`
`Stephen Korniczky
`Martin Bader
`Nam Kim
`Ericka Schulz
`Hector Agdeppa
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`nkim@sheppardmullin.com
`eschulz@sheppardmullin.com
`hagdeppa@sheppardmullin.com
`
`
`
`PATENT OWNER:
`
`Cyrus Morton
`Bryan Vogel
`Derrick Carman
`Li Zhu
`Shui Li
`Stephanie Diehl
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`lzhu@robinskaplan.com
`sli@robinskaplan.com
`sdiehl@robinskaplan.com
`
`
`
`6
`
`
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